Bad Faith in Trade Mark Dispute: SkyKick v Sky
The UK Supreme Court has overturned the Court of Appeal on key aspects of bad faith in a trade mark dispute, which has significant implications for trade mark applications and enforcement.
The three key findings of the Supreme Court are as follows:
- A broad specification can lead to an inference of bad faith in a trade mark dispute, but it depends on all of the individual circumstances of the case.
- Where a specification includes a broad category of goods or services, it may be held partially invalid for bad faith if that broad category includes distinct sub-categories for which there is no genuine intention to use the mark.
- The Court of Appeal was wrong to introduce a requirement for the invalidity applicant to identify precisely which goods or services the trade mark applicant should have applied for and how the trade mark specification should be restricted.
Sky had sued SkyKick for trade mark infringement and passing off. The key consideration, which had led to the case escalating to the Supreme Court, was the extent to which Sky's trade marks had been validly registered. SkyKick had argued that the great breadth of Sky's trade marks indicated that the marks had been filed solely for enforcement purposes and without a genuine intention to use the marks in trade for all the goods and services covered. The extent to which this filing strategy is in bad faith, and gives rise to partial or complete invalidity of the trade marks, was the central question for the Supreme Court to answer.
Tidman Legal Comment
To minimise a finding of bad faith in a trade mark dispute, brand owners and their advisors must carefully consider the specifications used before filing trade mark applications.
Brand owners should always strike a balance between a sufficiently broad specification that meets their protection needs while not inviting unnecessary bad faith counter attacks from competitors. However, in light of this decision, brand owners should take advice on trade mark registrations with broad specifications before enforcement. Otherwise a finding of bad faith in a trade mark dispute is not pie in the sky.
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Please note the contents of this blog is given for information only and must not be relied upon. Legal advice should always be sought in relation to your specific circumstances.