The Supreme Court has ruled that media giant Sky registered various trademarks in bad faith, without the intention of commercial use, and declared them partially invalid. This reversed the decision of the Court of Appeal in a case spanning 8 years, against software company, SkyKick.
Sky had applied for a number of trademarks seemingly with the intent to then be able to challenge similar trademarks owned by SkyKick. In 2016, Sky initially commenced a claim against SkyKick for infringement of its registered trademarks relating to software products and services. SkyKick denied any wrongdoing and counterclaimed on the basis that Sky’s trademarks were invalid as they were registered in bad faith, with Sky never having had the intention of selling the goods/services covered by the marks.
The parties settled the matter before judgment was due to be handed down and asked the Supreme Court not to give the judgment, but, quite incredibly, the Supreme Court refused as a matter of public importance.
It ruled that Sky had indeed acted in bad faith (in part) when applying for its trademarks. This was on the basis that Sky’s class specifications of goods and services relating to the mark were so broad that it could never have intended to use the marks for all items listed.
The UK’s highest Court also helpfully shed some light on what constitutes “bad faith”, including:
- That it should be interpreted in accordance with its meaning in everyday language, supposing “a dishonest state of mind or intention”, as understood in the context of trademark law and the context in which it occurs.
- Where the application has been made “without any intention to use the trademark in relation to the goods and services covered”.
- Where the applicant “had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties”.
- That the bad faith may only apply to part of the mark specification where “the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services” referred to in the application.
The burden of proving the mark was applied for in bad faith lies with the party making the allegation.
It must be assumed that as a result of this landmark ruling, trademarks with broad and lengthy specifications are now at greater risk of attack for non-use and of being invalidated. We recommend that trademark applicants and existing right owners attempt to narrow the scope of their class specifications as far as possible to those goods and services that are actually relevant to their brand, to best protect their marks.
Madeleine Rhodes email: mrhodes@redfernlegal.com
