Supreme Court rules Sky acted in bad faith with trademark

UK media giant Sky acted in bad faith when it applied for its trademarks, the Supreme Court said today in a long awaited and closely watched decision.

The long-running legal battle stems back to 2016 when Sky sued US tech provider SkyKick as it alleged it had infringed on its EU and UK trademarks with the use of ‘Sky’ in its name, email, cloud storage products and services

This legal battle is considered by intellectual property (IP) lawyers as one of the most important cases due to the implications for other businesses. Many court actions were stayed pending the outcome of this case.

The case went to the High Court in 2018, and in the course of four judgments and following a reference to the Court of Justice of the European Union, found that Sky had applied for the Sky marks in part in bad faith.

Mr Justice Arnold ruled that Sky applied for trademarks in categories that were so broad that the media giant could not have intended to use the marks across their breadth. For this, it rendered the Sky marks partially invalid.

The case was taken to the Court of Appeal by Sky in 2021, and the court reversed the High Court ruling. Sir Christopher Floyd determined that Sky had not acted in bad faith when it had filed its trademark applications.

The Court of Appeal also found that the procedure adopted by the judge in the High Court had been unfair.

The US tech company took this to the Supreme Court, which went to a hearing in June 2023, and after criticism of the Supreme Court for the delay in its decision, it handed down its ruling today.

The highest court in the UK unanimously allowed SkyKick’s appeal, ruling that the High Court was entitled to find Sky’s marks were applied for in bad faith, adding the Court of Appeal was wrong.

The justices also decided that the procedure adopted in the High Court had not been unfair.

A Sky spokesperson said: “Sky, like many other businesses, historically filed a range of trade marks in accordance with relevant guidance available at the time. Today’s Supreme Court judgment concludes a lengthy legal process to clarify the correct application of the law. We acknowledge this clarification and will follow this moving forward.”

A ‘sea change’

“The Supreme Court decision will mark a sea change in trade mark filing practices,” Geoff Steward, a partner at Addleshaw Goddard, said.

He explained that brand owners and lawyers are going to be desperately reviewing their UK trademark portfolios, and will have a radical re-think about their UK trademark filing strategies.

Stewart added “gone are the days of overreaching to gain wider trademark monopolies.”

“A serious point for big brands is this: just because a brand is well known does not justify listing goods and services,” Tristan Sherliker, of counsel at Bird & Bird, said.

Sherliker added that “in this case, Sky is a leading brand known all around the country, but that did not justify registrations for ‘bleach'”.

This decision “could open a can of worms when it comes to the trademark registers,” noted Charlotte Duly, a partner at Charles Russell Speechlys.

However, she noted that “whilst today’s decision could lead to a change in how trademarks applications are drafted…the UK Intellectual Property Office are unlikely to examine the subjective intentions of an applicant nor investigate bad faith for every broad application filed.”