header-logo header-logo

‘Bad faith’ trademarks in peril

20 November 2024
Issue: 8095 / Categories: Legal News , Intellectual property
printer mail-detail
The Supreme Court has clarified the role of ‘bad faith’ in invalidating trademarks, in a dispute between a broadcaster and IT company over the word ‘Sky’.

In a unanimous decision, SkyKick UK & anor v Sky Ltd & anor [2024] UKSC 36, the court held Sky, the broadcaster, did not have a genuine intention to use the trademark for all the goods and services for which it sought protection, and therefore acted in bad faith.

Delivering judgment, Lord Kitchin said bad faith may occur where an application is made not with the aim of engaging fairly in competition but in order to undermine the interests of third parties or to obtain an exclusive right.

Prior to the decision, it was uncertain what type of behaviour constituted ‘bad faith’.

Jim Dennis, partner at Simkins, said: ‘This decision will curtail the ability of businesses to prevent others from using trademarks in respect of goods and services that they themselves cannot justify having registered.

‘As such it will support competition in the marketplace and be broadly welcomed by smaller businesses. Trademark owners and practitioners, on the other hand, will certainly need to think harder about whether their applied-for list of goods and services is justifiable, and adopt greater caution in how they present infringement cases to the court, for fear of losing their trademark protection.’

The decision has ‘sent shockwaves’ through trademark law, said Kerry Russell, partner at Shakespeare Martineau.

However, she cautioned that ‘businesses should remember that in order to invalidate a trade mark, there is a robust and often costly procedure to follow’. Businesses wishing to attack a trademark for being too broad must show the application was intended to undermine the rights of a third party or sought to obtain a right beyond the trademark’s essential function, she said.

‘The Supreme Court has said that this argument is only applicable where there are “objective, relevant and consistent” indications that the mark was applied for in bad faith.’

Fladgate partner Mark Buckley said ‘lessons to be taken away’ included the need to document why the applicant for a putative use trademark intends to use that trademark.

Issue: 8095 / Categories: Legal News , Intellectual property
printer mail-details

MOVERS & SHAKERS

Slater Heelis—Oliver Banks

Slater Heelis—Oliver Banks

Manchester firm strengthens Court of Protection expertise with partner hire

Talbots Law—Sara Pickerin & Nicholas Playford

Talbots Law—Sara Pickerin & Nicholas Playford

Agricultural law team expands with senior director appointments

Kingsley Napley—Claire Green

Kingsley Napley—Claire Green

Firm announces appointment of chief legal officer

NEWS
The London Legal Support Trust (LLST) is calling on the legal community to don aprons and sharpen their pencils for two of its most popular fundraising events—the Great Legal Bake and the Great Legal Quiz. The events, which take place in November, raise vital funds for free legal advice charities across London and the South East
The Ministry of Justice (MoJ) has launched a review of its whiplash policies, including fixed tariffs, statutory definition of the injury, ban on settling cases without medical evidence and small claims limit
Family lawyers have welcomed government plans to repeal the presumption of parental involvement from the Children Act 1989, but emphasised the need for each case to be determined on its facts
Transferring anti-money laundering (AML) and counter-terrorism financing supervision to the Financial Conduct Authority (FCA) could create extra paperwork and increase costs for clients, lawyers have warned 
Defendant lawyers are ‘routinely dangling’ the prospect of a fundamental dishonesty argument ‘as a tactic to instil fear and to discourage’ claimants, the Association of Personal Injury Lawyers (APIL) has warned.
back-to-top-scroll