Brands are alive and (Sky)Kicking

The Supreme Court has released the long-awaited judgment in Sky v SkyKick [2024] UKSC 36.

The court found that a number of Sky’s trade marks were partially registered in bad faith, because their specifications were too long or too broad. But, things are not as bad as they seem. It is still possible to file trade marks for goods and services that cover broad categories provided there is an intention to use the marks for such categories.

Key takeaways for brands

1. File trade marks in all jurisdictions where you have a commercial presence, or may wish to have a commercial presence in the next five years.
   
2. Trade marks have significant uses in brand strategy even if they are not enforced in court (and very few claims go to trial, even those for which formal proceedings are issued). This includes use as both a shield and a sword – they can be used to persuade other undertakings to rebrand if they are too close to your branding (though bear in mind that you should never make a threat of trade mark infringement for rights you do not properly own – as this can be an unjustified threat, for which the recipient could bring a claim against you), and also act as a deterrent from other undertakings going close to your branding in the first place, as sensible businesses will run trade mark clearance checks before starting the use of branding.
   
3. When you file a trade mark, it should be in all classes and covering all goods and services that you have the intention to use (note that this does not mean you have to be currently using the mark for those goods or services). Where possible, you should have documented evidence of the intention to use the mark for the applied for goods and services.
   
4. If you get to trial in the UK and the court finds that the you did not intend to use the mark for the some of the goods and services in your trade mark in the UK, then your UK trade mark specification will be narrowed to just those goods and services that you did have an intention to use, on the basis that those wider parts of the trade mark were applied for in bad faith. However, even in this situation, the bad faith does not taint the parts of the trade mark specification that you did intend to use, and so the trade mark is just narrowed to those parts, it is not revoked entirely.

Understanding the changes in trade mark class specifications post-SkyKick

Trade marks are divided into classes; and when filing a trade mark the applicant must specify the goods and services upon which the owner intends to use a given mark. Provided the applicant uses the mark within five years of filing the mark, the mark will be validly registered.

In the past, it was common to use class headings to claim protection over everything in a class. For example, a luxury handbag designer might have a trade mark in Class 18 to cover all types of bags and leather goods, but which could also cover horse collars, clothing for pets, walking sticks and whips.

The law on this changed in 2020 when it was held that where a trade mark specification was overly broad, the core of the specification (i.e. those parts that the applicant used or had a genuine in intention to use) would be made in good faith, but the wider parts of the specification (i.e. those parts of the specification that the applicant had no genuine intent to use) would be made in bad faith. In the example of the EU trade mark for the entirety of Class 18 above, this would mean that the application for the parts of the specification that the designer had no intention to use (e.g. horse collars) would be made in bad faith.

The Supreme Court judgment in SkyKick has revisited this issue, but the decision should not have as much of an impact on filing strategies as it might appear. The finding that Sky had filed parts of its trade marks in bad faith did not taint the remainder of the specification. The trade mark specifications were pruned but were not struck off in their entirety.

So, instead of the broad term “computer software”, Sky’s trade made specification was narrowed to

“computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service; computer software supplied as part of or in connection with any telecommunications apparatus or service; electronic calendar software; application software for accessing audio, visual and/or audio-visual content via mobile telephones and/or tablet computers; games software”

This decision does not prevent brand owners from filing broadly-drafted specifications. The potential downside to filing a broad specification is that it might be narrowed by a counterclaim for bad faith. However, given that the majority of disputes never reach a final adjudication by the court, it is very unlikely that the broad scope of the trade mark filing would ever have to be defended.

What this means for brands

A trade mark is a powerful tool and can be used to ringfence a brand’s rights. It remains advisable for brands to register trade marks for the goods and services they use or plan to use in the future. This means applying to register those trade marks for as wide a specification as possible, provided there is an intent to use the marks on the goods and services in question. As such, there is little reason for brands to change their approach to trade mark filing.

If you have any questions about trade mark filing strategy, please contact a member of our IP team.