Changes to Bad Faith Trade Mark Filings After Sky v Skykick

At the end of last year the UK Supreme Court issued its decision in the Sky v Skykick trade mark case which concerned the question of bad faith filing practices in respect of trade mark registrations.

The case was interesting in its own right as an example of the dubious filing strategies of many major corporations. However, its impact is now also being felt for businesses, due to the change in approach it heralded at the UK Intellectual Property Office (IPO) in respect of how it examines trade mark applications.

What Are Bad Faith Trade Mark Filings?

A bad faith filing occurs when an applicant seeks to register a trade mark without any genuine intention to utilise it for the goods or services listed, or simply to block competitors from gaining a competitive advantage.

This can come in various forms, but commonly include:

• The filing of overly broad specifications in the trade mark to ‘mop up’ goods or services beyond the applicant’s actual commercial activities.
• Registering trade marks with the intent of preventing other players entering the mark or using a similar name.
• Using a trade mark registration to defend a monopoly rather than protect real world use.

Bad faith filings are governed by section 3(6) of the UK Trade Marks Act 1994. Under this law, a trade mark application can be refused or invalidated if made in bad faith.

Prior to Sky v Skykick, the interpretation of this law was narrower. Class headings and broad specifications were more commonplace provided a general declaration of intent to use the mark existed.

Sky v Skykick changed the landscape of what could bring about bad faith as we explore below.

The Sky v Skykick Case

Background

Sky has a history of filing very broad trade mark applications that cover many goods and services beyond those you might expect Sky to seek to protect. It also has a reputation for vigorously enforcing those trade marks in court even against businesses that do not seem close to what Sky do.

Trade marks provide monopoly rights in respect of the goods or services they protect, and Sky’s trade mark strategy has been to seek to extend that to an almost total monopoly.

Similarly, easyGroup, the owner of the Easyjet family of trade marks, pursues the same strategy and regularly takes action against businesses who seek to register a mark featuring the word “easy”.

Trade mark infringement case

Against this background, Sky brought a trade mark infringement case against Skykick, a provider of software and cloud based computing services. Sky alleged infringement in respect of one of its trade marks which had a very wide specification in class 9, which relates to software.

In response, Skykick alleged that the trade mark Sky sought to rely on was filed in bad faith as Sky did not have any intention to use the mark for the goods and services it was registering the mark against. An applicant is required to confirm, when filing an application, that they intend to use the mark as registered.

Supreme Court verdict

The case went on for a long time and ultimately ended up in the Supreme Court where the actual result of the case was a bit of a score draw, with parts of Sky’s trade mark being ruled invalid due to bad faith, but with Skykick found to infringe other elements.

The important takeaway from the case for trade mark applicants however was that the Supreme Court did find that the use of general terminology in specifications could amount to bad faith in certain circumstances.

The Implications of Sky v Skykick on UKIPO Guidance

As a result of the ruling of the Supreme Court, new guidance was issued by the IPO. Now, any wide specification in a trade mark application could potentially be considered to be in bad faith, as there would not be a realistic intention to use the trade mark for everything contained within the specification.

We are now starting to see the IPO examiners push back consistently against these types of specifications and requiring applicants to amend specifications to limit their breadth.

This means that applicants cannot simply rely on class headings, and more consideration is now required to ensure that you get the protection you need without falling foul of the new guidance.

It is more important than ever that applications are properly drafted from the outset to avoid these issues.

Our expert trade mark solicitors can guide you through the process to ensure that your application proceeds smoothly to registration.