The United Kingdom’s Supreme Court has held that the British television company Sky committed bad faith when it applied for trademarks that were unreasonably broad and covered goods and services, which they did not plan to provide. The landmark ruling, issued on Wednesday, is likely to lead to numerous challenges against other brand owners with extensive trademark portfolios.
The situation dates back to 2016, when Sky took SkyKick, a cloud management software provider based in Seattle, to court for infringing its “Sky” trademark. In 2018, London’s High Court confirmed that Sky’s trademark applications included categories such as bleach and luggage products that the company had no intention of offering, thus constituting bad faith. The Court of Appeal later reversed that decision in 2021.
The Supreme Court has now decided to give a verdict that reinstates the finding of bad faith but agrees that SkyKick is still responsible for infringing Sky’s trademarks in the case of cloud storage services.
Justice David Kitchin stated that trademarks registered for the purpose of harming competitors or for extending protection beyond the main function of indicating the origin can be considered as bad faith. Nevertheless, he explained that the mere fact of not providing certain services at the time of registration does not necessarily mean bad faith.
Legal experts consider the ruling to have the potential to transform trademark strategies throughout the UK. Richard May, partner at Osborne Clarke, pointed out that the judgment “widens the scope for attacks on broad registrations.” At the same time,
Geoff Steward of Addleshaw Goddard commented that brand owners and lawyers will be looking at their portfolios very quickly, with vulnerabilities in mind, he said.
Sky appreciated the transparency of the decision, whereas SkyKick has not responded to a request for comment.
