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.
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