Will SkyKick set new limits for trademark registrations in the UK and EU?

What happens if a brand owner applies for a trademark with an overly broad specification of products or services? Aaron Wood shares insights from a recent UK ruling on broad trademarks and bad faith that looks set to impact European trademark holders, too.   

How broadly is it acceptable to register your trademark? Is it acceptable to register for terms which include not only products and services you are interested in, but also products and services outside your interests? If you have registered broader than your commercial interests, is it acceptable to enforce those broad registrations outside your areas of commercial interest? If you transgress these practices, are you deemed to have acted in ‘bad faith’? 

These are the core trademark questions answered by the UK Supreme Court in SkyKick UK Ltd v Sky Ltd in November 2024, a decision that had been awaited for almost 12 months and which seems likely to change trademark practice not only in the UK but also across Europe.  

A long-awaited trademark decision by the UK courts 

Although a decision of the UK Courts, the Supreme Court ruled using powers from when the UK Courts had jurisdiction to decide on EU trademark cases: the Court was required to determine the application of not just UK law but also European Community trademark law. 

The case began as an infringement dispute brought by Sky, a major TV and entertainment company which also offers telecommunications services such as broadband and mobile telephony, against internet service provider SkyKick. In the preceding years Sky had built up a very significant trademark portfolio with coverage for almost all possible kinds of goods and services. This included items for which there was no commercial rationale (such as ‘whips’) as well as terms which were significantly broader than the requirements (such as ‘computer software’, which theoretically covers all kinds of computer software). 

SkyKick sought to defend itself by invalidating Sky’s trademarks (as you cannot infringe invalid trademarks). It argued that Sky had acted in bad faith in protecting its marks far more broadly than needed, and by using those trademark registrations abusively in the UK to stop third parties from using signs with Sky in their name even where there was no commercial conflict with Sky.   

The case was referred up to the Court of Justice of the European Union (CJEU) during the initial proceedings. Once the case returned to the UK, the judge concluded that Sky’s trademarks were partly (but not entirely) made in bad faith. As well as some terms being entirely in bad faith, others were partially in bad faith and should be restricted down to more limited descriptions. 

What makes a trademark registration in ‘bad faith’? 

This approach was endorsed by the UK Supreme Court, which underlined that bad faith is a term with a specific meaning in EU law (a meaning shared in UK law). Bad faith means not just registering a mark with a dishonest state of mind or intention towards a specific third party but also registering an exclusive right for purposes other than those falling within the functions of a trademark. 

The Court went on to say that in establishing whether the registration of a mark was made in bad faith, the following may be indicative features: 

• The overall breadth of the specification, i.e., whether the protection is sought for a list which is far broader than would be reasonable for a company of the size of the applicant; 
• The use of broad or general terminology (such as ‘computer software’) rather than appropriate sub-categories; and 
• The use of the very broad specification repeatedly against third parties even in the face of challenges or where it is outside the normal business of the owner. 

As well as indicating that the judge before the UK High Court was entitled to make the findings of bad faith in the SkyKick trademark UK ruling, the Supreme Court underlined that the judge was also entitled to find that clauses for which there was partial bad faith could be amended by the judge to terms which were acceptable. 

Key takeaways for trademark owners in the UK and EU 

The decision is likely to be one which will be heavily relied upon and affects multinationals as much as small companies. Although the full effects will only come to light over time, it seems likely that brand owners will need to be aware of the following: 

• Where brand owners have ‘standard’ lists for their products (or divisions) this may come under attack if the mark is relied upon; 
• Individualised approaches (or at least careful curation of disputes) will be needed to avoid challenges based upon allegations that the over-eager enforcement of trademarks shows bad faith; and  
• For real security there may need to be a clearly expressed business case for broad protection set out around the time of protection. 

To find out more about the SkyKick ruling and its implications for trademark owners in the UK and EU, watch our recent webinar recording ‘Lessons in brand protection: SkyKick and Adidas’, speak to your Novagraaf attorney or contact us below.  

Aaron Wood is a UK Chartered Trademark Attorney, Trademark Litigator and Trademark Advocate with more than 20 years of experience in IP.