Think Carefully Before Filing Far-reaching Trade Marks

• Published date: 04 June 2020
• Author: Mr Daniel Bailey
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Taylor Vinters

The High Court has issued its decision in the long-running high-profile case between SkyKick, a software provider, and Sky, the broadcaster and television company.

SkyKick had argued (amongst other things) that Sky had acted in bad faith by protecting its marks for an overly broad list of goods and services, which limited what other companies could do in terms of their own brands in these areas (see our previous article here).

Although the concept of acting in bad faith is not defined in legislation, over the years it's been developed by case law to cover "dealings which fall short of the standard of acceptable commercial behaviour".

In its earlier decision, the court found that "Sky could not, and did not, intend to use the Trade Marks across the breadth of the category [goods and services]" and some of its applications were filed "pursuant to a deliberate strategy of seeking very broad protection of the Trade Marks regardless of whether it was commercially justified".

In other words, Sky was deliberately filing trade marks in areas in which they had no plans of using them, with the aim of preventing third party use of brands incorporating the word SKY.

Following a Court of Justice of the European Union decision on the case in January this year, it fell for the High Court to decide the extent to which Sky's trade marks had been filed in bad faith.

Sky was found to have applied for some of its trade marks "purely as a legal weapon against third parties" as it had not intended to use the trade marks for all of the goods and services covered. As these actions are inconsistent with honest practices (having been filed, at least in part, in bad faith), the court ruled that some of Sky's trade mark registrations were to be partially invalidated.

This...