Supreme Court Decision in Sky TV v Skykicks 2024 and the importance of getting trade mark registrations right

by | Nov 15, 2024 | Blog, Legal Updates

The Supreme Court recently delivered a key judgment in SkyKick UK Ltd v Sky Ltd ([2024] UKSC 36), tackling the issue of overly broad trademark registrations. This decision has significant implications for how businesses register and protect trademarks in the UK. Here’s what you need to know.

Background Facts

The dispute began when Sky, a household name in TV and telecommunications, accused SkyKick, a provider of cloud migration and backup services, of trademark infringement. Sky argued that SkyKick’s use of the name “SkyKick” was too similar to their “Sky” trademarks, which covered a huge range of goods and services.

SkyKick fought back, claiming Sky’s trademarks were invalid because they were overly broad. Sky had registered the word “Sky” for categories as wide-ranging as “computer software” and even “whips,” with no real intention to use the trademark for many of these items. SkyKick argued that this was done in bad faith, simply to block others from using the name “Sky” in any capacity.

The case raised two big questions:

  1. Can a trademark be invalidated if the owner had no intention to use it for some of the goods and services listed?
  2. What counts as “bad faith” when applying for a trademark?

The Decision

The Supreme Court ruled that applying for a trademark without a genuine intention to use it can indeed be considered bad faith. This is especially true if the application is designed purely to block others from entering the market or to “stockpile” rights with no real business purpose.

However, the Court stopped short of agreeing that broad or vague terms, like “computer software,” automatically make a trademark invalid. A lack of precision alone doesn’t mean bad faith – what matters is the applicant’s intentions at the time of registration.

SkyKick was partially successful. The judgment emphasized the importance of having a real, honest reason for registering a trademark, particularly in categories where you actually intend to trade.

Practical Implications for Small Businesses

1. Be Specific and Honest in Trademark Applications

If you’re applying for a trademark, avoid being overly broad. For example, don’t register for “all computer software” if you only intend to make a specific app. Not only is this bad practice, but it could open you up to legal challenges later.

2. Keep an Eye on the “Big Players”

If a competitor or large company holds a trademark that seems unfairly broad, this case sets a precedent for challenging it. If you believe their registration was made in bad faith, you may have a strong case for invalidation.

3. Protect Your Brand Strategically

This decision is a reminder that trademarks should be tools for protecting your brand, not weapons to stifle competition. Register only for the goods and services you genuinely plan to offer and expand your coverage gradually as your business grows.

 

This case marks a positive step toward fairness in the trademark world, making it harder for big brands to hoard rights they’ll never use. For small businesses, it’s a chance to compete on a more level playing field. If you’re looking to register a trademark, now is the perfect time to review your strategy – and get expert advice if you need it. Get in touch today.

Steven Mather

Steven Mather

Solicitor

Hello, I’m Steven Mather, Solicitor – thanks for reading this blog I hope you found it useful.

As you’ll see from my site here, I’m an expert business law solicitor (sometimes called a corporate solicitor, commercial solicitor, company solicitor, but they’re all about advising businesses).

If you’re looking for Remarkablaw advice – fixed fees, great service, and a smile, then get in touch with me today.

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