‘Don’t weaponise your trade marks’ is the overarching message following the eagerly awaited High Court ruling in Sky plc v SkyKick UK Ltd on 29th April 2020.
This case began when Sky plc, the media and telecommunications conglomerate, alleged that SkyKick, a cloud automation and management software company, had infringed its trade marks.
Responding in kind, SkyKick countered that Sky plc had registered its trade marks in overly broad terms, covering areas such as computer software, as well as on products that it had no intention of supplying. This, SkyKick argued, amounted to bad faith.
The High Court held that Sky plc had included terms in its trade mark registrations relating to areas which it had no intention of using them in. It was the Court’s view that this practice had been intentionally adopted by Sky plc so it could use its trade marks as a ‘legal weapon’ against third parties and, therefore, constituted bad faith.
Certain parts of Sky plc’s specifications are to be re-written or caveated so as to confer much narrower protection than they have to date or to confer a scope of protection that is commercially justifiable.
While this may not assist SkyKick who was still found to have infringed, the decision does appear to be a significant development for trade mark practice, brand owners and could be interpreted as an early divergence from EU trade mark law.
The consequences of this decision are extensive. For starters, utilising broad terms for defensive purposes appears to be no longer permissible in the UK, such broad terms are likely to be held to be filed in bad faith and will be narrowed down in future cases but the trade marks themselves should remain valid. Further, litigants or would be litigants will now be reviewing their cases to understand if there is the possibility of infringement counterclaims on the basis of bad faith and broad specifications.
There have been many twists and turns in the Sky v SkyKick journey and this article only touches upon some of the key points and takeaways. A more detailed article will follow soon.