Posted on November 13, 2024
No intention to use a trade mark for certain goods and services covered by the specification could result in (partial) cancellation on the grounds that the original application was filed in bad faith.
The Supreme Court overturns the Court of Appeal and holds that the High Court was justified in its finding that Sky was acting in bad faith when it filed its Trade Mark Applications covering a range of goods and services in which it had no plausible commercial interest.
In May 2020, we reported the High Court’s decision in Sky vs SkyKick here. The High Court found that broad specifications of goods and services which went beyond the commercial activities of the Applicant, could invalidate (or at least partially invalidate) a Trade Mark Registration on the grounds that the original application had been filed in bad faith. Specifically, Sky had filed applications covering an overly broad range of goods and services in which it had no interest in order to obtain an exclusive right in the mark SKY (in the Court’s words “with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely as a legal weapon against third parties”). That decision was overturned by the Court of Appeal, Sky was found not to have been acting in bad faith, and Skykick had infringed its Trade Marks. Skykick appealed to the Supreme Court on the issue of bad faith and, almost 18 months later, it has today handed down its judgment.
The Supreme Court has overturned the Court of Appeal and has held that the High Court was correct in finding that Sky’s Applications were filed in bad faith, and partially cancelling Sky’s Trade Mark Registrations.
Lord Kitchen made the following helpful comments on the use of broad terms (such as ‘Computer Software’) in specifications:
“322…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 an objection that the applicant has applied for a wide range of goods and services using class headings or other general terms. That objection, which is one of clarity and precision, has largely gone away in the light of the decision of the CJEU in this case.
323. Where, however, the broad description includes distinct categories or subcategories of goods or services, as “computer programs” and “computer services” undoubtedly do, then, for the reasons I have given, the proprietor may be found to have acted in bad faith in relation to one or more of those, and it would be manifestly unjust if it escaped that consequence simply because it had framed its specification using general terminology."
Following the Supreme Court’s decision, there is a risk that Trade Mark Registrations could be found invalid, or partially invalid, if, or to the extent that, i) they cover goods and services for which the owner clearly had no intention to use the mark at the date of filing, or ii) cover broad terms which encompass various subcategories for which the owner clearly only had an intention to use the mark in relation to a particular subcategory at the date of filing.
However, it is clear that this will depend on the precise circumstances of the case with a range of factors to be taken into consideration; there is no blanket rule which applies to all. It will come down to whether the Applicant, at the time of filing, was attempting to obtain protection for a broad range of goods and services, without any commercial justification, in order to own an exclusive right to use as a legal weapon.
This decision is one of the most important UK decisions handed down on trade marks in recent years. The practical ramifications of the Supreme Court decision will only be determined when we start to have cases decided by the lower courts and the UKIPO tribunal based on the Skykick decision. We shall provide further guidance shortly but in the meantime applicants should carefully consider what goods and services should be covered by their applications in case those specifications are subsequently considered to be “too broad”. Similarly, opponents will need to consider the extent to which the registrations on which they rely are, in practice, enforceable for goods and services for which no commercial justification could be shown. Finally, applicants facing oppositions based on registrations which are considered to be too broad may wish to consider whether to seek cancellation of those registrations.
More to follow on this and what it means in practice for trade mark owners; what goods and services should you cover when filing trade mark applications and what will be considered ‘too broad’?
