The UK Supreme Court has today handed down its hotly-anticipated
trade mark decision in the Skykick v Sky case.
The Supreme Court judgment was given notwithstanding that the
parties having settled the dispute, indicating the significance of
the points of law that were raised in the case.
The Supreme Court has concurred with the High Court in its position
on the existence of bad faith, and provided guidance on the
circumstances which may amount to bad faith.
The Supreme Court has ruled that bad faith may arise in the
following circumstances:
- (i) the trade mark proprietor has sought broad protection regardless of the commercial justification for doing so and with the intention of obtaining an exclusive right; and
- (ii) the trade mark proprietor does not then use the trade mark for the specification of goods and services for which it has been registered but as a legal weapon against third parties.
The Supreme Court also notes that it is not always necessary for
the party seeking a declaration of invalidity on the basis of bad
faith, to set out, in advance, the narrower specification to which
the trade mark proprietor should be entitled. Each case will be
decided on its own individual facts and merits, and the Supreme
Court opines that it would be anomalous if the existence of the
circumstances set out by the Supreme Court could never lead to an
inference of bad faith.
It remains to be seen how the decision will be applied in future
cases. However, for now, the decision may mark a shift in practice
towards a more US-style trade mark system, the latter which
requires a trade mark applicant to specify a narrow and precise
category of goods and/or services in its application. Trade mark
proprietors will need to review their prior and future trade mark
filing strategies and note that overly broad specifications may be
vulnerable to challenge on the basis of bad faith. The decision
will be welcomed by those seeking to launch new brands to do so
with more confidence in respect of marks that are not in obvious
use by others.
With respect to infringement, the Supreme Court notes that where a
specification includes terms which are ambiguous and not clear, the
specification should be construed as those goods or services which
are clearly covered. Again, this will be welcomed by businesses
looking to launch new brands.
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