Sky Flies too Close to the Sun

In a recent dispute between SkyKick and the broadcaster Sky, the UK Supreme Court, found that the broadcaster applied for its well-known SKY trade marks in bad faith.

In trade mark law bad faith relates to the motive of a trade mark applicant. Normally a court is asked to consider whether the applicant had any intention to use the mark in relation to the goods and services it has applied for. This ground is normally relied upon during invalidation proceedings, when a third party is seeking to cancel a trade mark.

In Ireland, this is notoriously a difficult ground to prove, which has allowed trade mark applicants to take a broad strokes approach to what goods and services their trade marks cover. However, the recent Skykick judgement may indicate courts are seeking to bring an end to this practice.

The case was brought to court by Sky, which claimed SkyKick’s use of the Skykick mark infringed its SKY word and logo trade marks. In its defence, Skykick stated that the range of goods and services for which the SKY marks were registered is enormous. As such, Sky could not have to intended to use the marks for each and every good or service covered, making the trade mark applied for in bad faith.

On appeal, the Supreme Court found fault with the fact that Sky had applied for and were prepared to enforce its trade marks in respect of goods and services of such a range and breadth that it was implausible that Sky would ever provide them, or that Sky ever had any genuine intention (whether provisional or conditional) to provide under the SKY marks.

However, the Court did clarify that an applicant does not have to have a commercial strategy to use a mark for every possible species of goods or services falling within the specification. Nor is it objectionable that the applicant has applied for a wide range of goods and services using class headings or other general terms.

This judgment shows that courts are unafraid to scrutinise each and every goods and/or service included in a trade mark’s specification. Therefore, it is vital that brand owners closely consider which goods and services they use or intend to use their trade mark in relation to and make sure their trade mark applications do not include broad categories of goods and services.

Brand owners should always seek professional legal advice when considering trade mark filing strategies.

For further information contact Clare Snaddon csnaddon@reddycharlton.ie or 01 6619500.