Trade marks: no more wide-claiming – an abuse of registration systems

On 13 November 2024, the Supreme Court (“UKSC”) handed down its seminal judgment in the case of SkyKick UK Ltd v. Sky Ltd [2024] UKSC 36.  The parties, having settled their longstanding dispute, applied to withdraw Sky’s appeal and requested the UKSC not to give judgment.

We reported on the previous stages of the litigation in 2018 at the High Court and in 2022 at the Court of Appeal.

After considering the representations of the parties and the UK Trade Marks Registrar, the UKSC refused the parties’ application because the case involved issues of public importance to registered trade marks laws and practice.  The UKSC confirmed and clarified the points now set out below.

Clarity and precision in trade mark specifications

Trade marks are registered in respect of goods and/or services classified according to the Nice Classification, which is an administrative tool.

A specification of goods and/or services must be clear and precise but this is a requirement of application for registration, and not a ground for invalidity.

Intent to use

A trade mark does not have to be used for the subject goods and/or services at the time of application for registration.  Instead, it must be so used within five years of registration, otherwise the registration becomes liable to attack on grounds of non-use.

The UK requires an applicant to state on the application form that the applicant intends to use the trade mark for the goods and/or services for which registration is applied.  The EU trade marks system does not have the same requirement.  The UK’s declaration of intent to use is not contrary to EU retained law.

Lack of intent to use does not provide a separate ground of invalidity, but it can be an indication that a trade mark was applied for in bad faith.

Bad faith

Bad faith in an application is both a ground for opposition to and invalidation of the registration of a trade mark in the UK.  In the EU, bad faith in an application is a ground of invalidity only.

Bad faith covers two scenarios.  First, where an application is made with the intention of undermining the interests of third parties.

Second, where an application is made with the intention of obtaining exclusive rights for purposes other than protecting the essential function of a trade mark (i.e. guaranteeing the origin of the goods and/or services in question).

The categories can overlap but wide-claiming – i.e. applying for goods and/or services in respect of which there is no intention to use a trade mark – usually falls within the second category.

Test of bad faith

Whether an application for registration of a trade mark was made in bad faith must be judged against the objective circumstances of each case.

Total or partial invalidity

A finding of bad faith can lead to total or partial invalidity of a trade mark registration.  With wide-claiming this can lead to the strike-out of specified goods and/or services, or the limitation of general terms.

For example, in the present case, Sky had no intent to use the SKY trade mark for “bleaching preparations”.  On the other hand, Sky did intend to use and used the SKY trade mark for some types of “computer software”.  That general term was though cut down by the court appropriately to reflect the scope of Sky’s business.

General terms

Applicants have in the past often employed general terms to describe the goods and/or services for which registration is sought.

A paradigm example is “computer software” (as a good or service).  The UKSC was clear that an applicant cannot hide behind such terms to obtain exclusive rights in distinct categories or subcategories of goods or services that fall within the general term but in respect of which no use is intended.

Brexit

The SkyKick v. Sky litigation involved both EU and UK registered trade marks belonging to Sky.

After the end of 2020, EU registered trade marks no longer covered the UK but were effective in the 27 EU Member States only.  Instead, the UK granted EU registered trade mark proprietors an equivalent UK trade mark registration effective in the UK-only called a “comparable trade mark (EU)”.

In respect of proceedings commenced after the end of 2020, the UK courts no longer had jurisdiction over EU registered trade marks and no longer operated as EU trade mark courts.

However, for pending cases like the present involving EU registered trade marks, the UK courts’ statuses as EU trade mark courts were retained under the withdrawal arrangements agreed between the UK and EU.  Such pending cases continued to be governed by the EU trade mark regulations and included the rights of the UK courts as EU trade mark courts to grant pan-EU injunctions and revoke or declare invalid EU registered trade marks.

This also applied to UK domestic courts hearing appeals in such pending cases.

SkyKick v. Sky

In the context of the present case, the UKSC held that the judge at first instance (Arnold J as he then was) had correctly found that the SKY trade marks were partially applied for in bad faith and limited their specifications accordingly.

For example, Sky’s specification for “computer software” was rightly cut down to: “computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service; computer software supplied as part of or in connection with any telecommunications apparatus or service; electronic calendar software; application software for accessing audio, visual and/or audio-visual content via mobile telephones and/or tablet computers; games software”.

On those limited specifications and according to the basis on which the proceedings were conducted, the UKSC decided that SkyKick’s “Cloud Migration” service was not an “electronic mail service” and did not infringe Sky’s trade mark registrations.

Contrariwise, SkyKick’s “Cloud Backup” service did allow for access and retrieval of data and did infringe Sky’s trade mark registrations.

Going forward

The UKSC’s judgment is bound to lead to accusations that existing registrations are totally or partially invalid for wide claiming.

New applicants must ensure that their specifications of goods and, or services are appropriately confined to their business plans, present and proposed.

Our team at Humphreys Law are specialists in registered trade mark prosecution, maintenance and enforcement, including drafting appropriate specifications, as well as in all types of intellectual property legal work.  If you or your business are affected by any of the above issues, please do contact a member of our team.

This piece was contributed by Robert Humphreys and Tristan Morse. Do please reach out to a member of the team if you would like to discuss matters relating to commercial law generally.

All the thoughts and commentary that HLaw publishes on this website, including those set out above, are subject to the terms and conditions of use of this website.  None of the above constitutes legal advice and is not to be relied upon.  Much of the above will no doubt fall out of date and conflict with future law and practice one day.  None of the above should be relied upon.  Always seek your own independent professional advice.

Humphreys Law