Supreme Court hands down judgment in long running trade mark dispute

Since 2016, media and telecommunications giant, Sky Ltd, and a provider of cloud management software, SkyKick, have been involved in a dispute over the validity and use of the word “Sky”.

Sky Ltd claimed that SkyKick were infringing their trademarks of the word “Sky” and SkyKick counterclaimed that those trademarks were both invalid and obtained in bad faith.

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. A sign can be a symbol, phrase, word or even colour in certain circumstances. Well known trademarks would include McDonald’s golden arches and the Nike name and swoosh.

Sky Ltd asserted that SkyKick’s use of “Sky” amounted to ‘passing off’ which is when a party misrepresents their goods or services as being those of another trader. Essentially, Sky Ltd claimed that customers would believe that SkyKick was owned by or associated with Sky Ltd because of the use of “Sky” in their name. SkyKick disputed that there would be any confusion and went on the counterattack.

In order for a trade mark to be considered valid, it must be clear and precise about the ‘specifications’ which are essentially the goods or services the trade mark will be used for. The “Sky” trademark had the specification for use in “computer software”. SkyKick argued that this was far too wide and broad.

SkyKick further argued that the “Sky” trademark had been obtained in bad faith. There is no strict definition of bad faith but it is generally understood to be when a party applies for a trade mark for an improper or illegitimate reason. The most common example of bad faith is applying for a trade mark without any intention of using it, simply to prevent others from being able to use it in their business.

SkyKick argued that Sky Ltd had acted in bad faith as the deliberate wide specification of the “Sky” trade mark meant there was no intention to use it.

Within the 145 page judgment the Supreme Court concluded that the trade mark had been obtained by Sky Ltd in bad faith, because of unnecessarily wide specification that had been used.

If you have tried and failed to register a trademark, if someone is using your trademark without your permission, or if you have any other issues with your intellectual property, contact us to see how we can help. You will be able speak to one of our expert solicitors for a free initial discussion.