Sky trade mark dispute

An eight-year trade mark dispute over broadcaster Sky’s use of the word 'Sky' ended this week with an important Supreme Court ruling, made even more unusual by the fact that neither party wanted that ruling to be made.

Sky claimed infringement of its marks against Skykick (a provider of cloud computer services) even though the goods and services that Sky said it was protecting were unlikely to ever be offered by them. The Supreme Court decided in favour of Skykick.

The decision highlighted several matters:

1. Sky acted in bad faith when it applied for trade marks in categories of goods and services which it could never have intended to put on the market. This meant that when Sky claimed infringement by SkyKick, Sky could not prove it.
2. Perhaps surprisingly, despite Brexit, the UK court retains its jurisdiction as an EU trade mark court and can continue to determine the validity or invalidity of an EU trade mark, including outside the UK.
3. Even though both parties applied for permission to withdraw the appeal as they had come to a settlement, the Court said no. Reasons given were that they were too late, that the Judgment involved issues of general public importance and lastly that the UK Intellectual Property Office wanted a ruling so as to settle the law.

What does this mean for trade mark holders and applicants?

• Be more careful when applying for trade marks, especially if you want to claim that someone else has infringed your own mark.
• This decision could call into question some existing registrations.
• Only apply for those specific goods and services you offer or, in good faith, that you intend to offer.
• Don’t include everything broadly in a class if you don’t absolutely mean to, as it is now possible to infer bad faith where an applicant has included broad goods and services rather than relevant and more specific sub-categories of goods and services.
• Don’t apply for classes in which you have no real intention of operating.

If you have any questions at all about your trade marks, or other intellectual property questions, please contact our Legal 500 recommended expert Brian Levine on 01935 846 000 or email him at brian.levine@battens.co.uk.