SkyKick v Sky: Supreme Court Rules on “Bad Faith” Trade Marks

In the conclusion to a long-running case, the Supreme Court has ruled on the law of bad faith trade mark claims in a blow to Sky. The case originated out of a claim, brought by Sky, the telecoms company, against SkyKick, a Seattle-based cloud and email management company, alleging trade mark infringement. At trail, Sky also alleged that SkyKick, in so doing, had passed off their goods and services as connected to Sky. The case before the Supreme Court centred around the question of whether the registration of a trade mark can be invalidated if the application for said trade mark was made in “bad faith”. If the applicant had made the application without “genuine intention” to use the mark with regards to the goods/services for which it was seeking protection, would this be considered bad faith under s.3(6) of the Trade Marks Act 1994? 

The court unanimously found that Sky’s marks were applied for in bad faith. The court agreed with SkyKick that Sky’s marks were ‘framed in very general terms’ and ‘cover an enormously wide range of goods and services.’ The range of the services included ‘computer services for accessing and retrieving information/data via a computer or computer network.’ The Supreme Court rejected the Court of Appeal’s conclusion that the breadth of trade mark coverage could ‘never lead to an inference that an application was made in bad faith.’ Lord Kitchin, writing the lead opinion, noted that this would, in practice, make it ‘very difficult if not impossible’ for a third party to argue a bad faith case. He found that it was a ‘misuse of the system’ should a person make an application for a mark to which they had no intention of using. 

The court also engaged with the more general issue of EU trademarks. As the litigation spanned Brexit, Sky contented that the withdrawal of the UK from the EU removes jurisdiction from UK courts in cases concerning EU trade marks. Sky advanced the argument that, since 2020, “the guillotine has come down” and the EU and UK trade mark regimes have gone forward independently. The court disagreed, finding that the court ‘retains the jurisdiction to decide issues of infringement and validity’, regarding EU trade marks.  

Lastly, the judgement notes that during the period when the judgement was being finalised, SkyKick, supported by Sky, asked to withdraw the appeal. However, the court, having invited the Comptroller-General to intervene, found compelling reasons to continue with the judgement. Due to the ‘general public importance’ of the case and due to the intervention of the Comptroller-General, who emphasised the desire of the UK Intellectual Property Office to see judgement given on the issues involved, the court refused the application for withdrawal and continued with the judgement. 

The case saw six Chambers ranked barristers involved. You can see the Intellectual Property table here: Intellectual Property, London (Bar), UK Bar | Chambers Rankings. 

For the appellant was Adrian Speck KC of 8 New Square who was leading Simon Malynicz KC of Hogarth Chambers and Stuart Baran of Three New Square IP. 

For the respondents was Geoffrey Hobbs KC leading Philip Roberts KC both of One Essex Court.  

For the Comptroller-General, as intervener, was Anna Edwards-Stuart KC of 11 South Square.