New Skies Ahead: Sky v SkyKick judgment sets new rules

June 4, 2020

3 min read

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What's going on here?

On 29 April the High Court handed down its judgment in Sky V SkyKick UK Ltd. In doing so, it refined the rules on trademark protection and bad faith. The judgment marks a turning point for brand owners that use trademark protection as “a legal weapon”.

What does this mean?

Lord Justice Arnold’s judgment in the case closely follows the prior decision of the CJEU in the same case but went one step further. The CJEU had ruled that trademarks could be partially or totally cancelled if the applicant had no intention to use the mark and had filed it in bad faith. However, it has upheld that trademarks containing broad terms are still valid. 

The additional step the UK Court took was to rule that trademark specifications, if too general, could be narrowed down by the court. The “new mark” will only cover products the company intends to produce.  In this process, the judges are to consider:

  • The extent of the company’s bad faith 
  • Whether the company has “justifiable commercial reasons” to register the mark
  • That companies have “a legitimate interest in seeking a modest penumbra of protection extending beyond the specific goods and services in relation to which they intend to use their mark”.

In other words, the Court will assess the current range of products and consider whether or not there is any indication that the mark will be used for a future product. As a result, Sky’s trademark for “computer software was cut down to signify computer software supplied as part of, or in connection with “ any television, video recording or home entertainment apparatus or service; any telecommunications apparatus or service; electronic calendar software”;  This is because Arnold LJ deemed the application to cover an entire class of products had been filed in bad faith.

What's the big picture effect?

There are two takeaways worth remembering. 

First, broad patents are still valid and will remain so, though they become much more vulnerable. Cases based on allegations of bad faith will likely increase following this judgement and many trademarks will be narrowed.

Secondly, the decision comes as a result of big companies’ widespread trademark registration tactics. Some may remember the infamous case of comedian Joe Lycett changing his name by deed poll to Hugo Boss in protest of this. Many of these companies register hundreds of patents for all kinds of products that they will never produce. This is done solely as a legal weapon against smaller companies that may happen to use a similar branding. In the present suit, Sky owns trademarks for products ranging from whips to bleaching preparations. 

With these new rules, the Court has struck a fair balance. They protect big companies who need anticipatory protection for new products whilst sheltering smaller ones from abuse. Moreover, it is worth noticing that the judgment takes a lenient stance. It allows for “a modest penumbra of protection extending beyond the specific goods and services in relation to which they intend to use their mark.” This can only mean that intention will be interpreted in a wider sense, leaving companies some room to grow, but not so much that they encroach on business freedoms of smaller operators. With this development, you’ll likely be waiting a while for your Sky-branded whip.

Report written by Bogdan Ciacli

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