What is the dispute about?

Sky has a very large portfolio of trade marks. It covers almost every possible product or service possible, due to a strategy that says it is cheaper to register everything.

The problem is that this creates a massive block to anyone wanting to use the mark Sky, regardless of whether their business is connected to anything Sky actually does.

A recent Opinion from the Advocate General to the European Court of Justice has suggested in the strongest possible terms that this is impermissible, and that the use of certain terms is contrary to the public interest in the trade mark system working effectively.

Sky are not, of course, the only company that have kept a vice-like grip on their mark.

Other companies such as O2, Monster Energy and G-Star Raw have also sought very broad rights and have been active in going after anyone who includes the element in their mark, regardless of the industry. Some of these companies have also adopted a practice called evergreening, where these incredibly broad lists are refiled every few years to ensure that this strategy does not fail.

Why is Sky v Skykick so significant?

The Skykick case looks likely to shoot a massive hole through that strategy, meaning that these companies will now have to review which cases they bring and how they fight them. It will mean that trade mark applications are likely to be more expensive, as specialist lawyers will need to take more time to draft a list of goods and services which will be secure. It may mean that oppositions that currently look unassailable will turn. Finally, it will bring EU practice closer to US practice, which already has stricter rules about the list of goods and services.

For brand owners the challenge will be to develop effective strategies and to review live cases to establish whether they are likely to still succeed, and whether further tactical steps would clear current objections. For those without an active raft of disputes, the next review will probably come when a dispute arises, and at this stage you should look at the continuing validity of your rights.

If you have a question or a problem, then get in contact with Aaron Wood on 020 3319 3700 or [email protected]