A very interesting article last week from the Intellectual Property team at Osborne Clark.

On 29 April 2020, the English High Court handed down its eagerly awaited judgement in Sky plc v SkyKick UK Ltd, holding that Sky has succeeded in its claim of infringement by SkyKick of its SKY trade marks.

Why does that matter to me, I hear you ask. Read on.

The UK High Court’s judgment is of immense significance to marketers and brand owners in fact, because:

  • The court has partially cancelled some of Sky’s trade marks on the grounds that they had applied for them partly in bad faith. This follows the CJEU decision, which ruled that trade marks could be partially cancelled for those goods and services covered by the mark where the applicant had no intention to use the mark in relation to some of the goods and services covered.
  • However, this decision goes further than that of the CJEU because the UK court has ruled that broad terms in trade mark specifications can be cut down to specific goods and services for which there was intent to use. Sky’s coverage of “computer software” has accordingly been cut down to a more limited range of software.
  • It has been common practice to use very broad terms in trade mark specifications and many trade marks are probably now vulnerable to a claim that they have been partially filed in bad faith.

Brand owners should not lose trade mark protection for the goods and services for which they use their mark, but this decision will make it harder for them to enforce their rights against those using similar marks for other goods and services. We can expect claims of bad faith to become a common feature of trade mark disputes in the future.