After many years of proceedings, the long-waited trade mark case Sky v SkyKick has finally reached a decision at the Supreme Court today. The Judgment contains clear direction on when a trade mark has been registered in bad faith.

Impact

Owners of UK registered trade marks with broad specifications are now increasingly vulnerable to their marks being subject to invalidity attacks on the basis of bad faith, particularly where there is no intention to use such a broad specification. Trade mark owners should liaise with their trade mark advisers to review their portfolio and filing strategy, and how the decision may impact any ongoing or potential disputes.

Where we are already handling UK trade marks on your behalf, we will be reviewing whether your UK trade mark registrations need to be reviewed and whether the results of this case will affect any disputes you are currently involved with.

Background

• Sky brought actions against SkyKick for infringing its trade marks across a range of goods and services, and SkyKick in return challenged the validity of Sky’s trade marks.
• SkyKick argued that Sky had applied for its trade marks in “bad faith” and that they were thus invalid. Skykick had alleged that Sky’s trade mark applications were far too broad and separate from its core business and that Sky had no genuine intention to use the marks for the claimed goods and services. One of these terms was “computer software”.
• In the High Court, the Judge found that Sky had acted in bad faith and its trade marks were partially invalid, but SkyKick’s services had infringed Sky’s trade marks.
• Sky appealed the decision on bad faith, and Skykick cross appealed the decision on infringement.
• The Court of Appeal found that Sky had not acted in bad faith when registering its trade marks, and SkyKick’s appeal on infringement was dismissed.
• Skykick appealed to the Supreme Court the bad faith decision made by the Court of Appeal.
• A key issue considered by the Supreme Court was the basis for a finding that an application to register a trade mark had been made in bad faith.

Decision

• The Supreme Court affirmed the Court of Appeal’s finding on infringement.
• The Supreme Court reversed the Court of Appeal’s finding on bad faith and held that the High Court was entitled to find that the SKY marks were applied for in bad faith to the extent that it did.
• An application to register a mark in respect of a broad category of goods or services may be made partly in bad faith in so far as the broad description includes distinct sub-categories of goods or services in relation to which the applicant never had any intention to use the mark. It would be anomalous for traders who use broad terminology to describe the goods and services for which they seek protection to find themselves in a more favourable position than those who use appropriate sub-categories to describe the same goods and services.
• An applicant does not have to have a commercial strategy to use a mark for every possible species of goods or services falling within the specification. Nor is it an objection that the applicant has applied for a wide range of goods and services using class headings or other general terms.

AUTHORS

Shireen Peermohamed Partner

Shireen is a partner and head of our intellectual property and publishing practices.

Shireen is a partner and head of our intellectual property and publishing practices.

Shireen advises on all types of intellectual property, with a particular emphasis on pragmatic and cost effective disputes and strategic advice. She also provides advice on the protection of IP, IP audits, the exploitation and disposal of IP and the management and enforcement programmes  Her 30 years’ experience means that she is a trusted adviser to many leading businesses and has deep and strong experience in a number of sectors and issues.

Shireen works with clients in a wide range of sectors, including FMCG, retail, fashion, film, TV and theatre, publishing, music, video games and travel. She has a particular interest in the publishing industry (advising a number of leading publishers, authors, literary estates and content platforms) and in cutting edge issues such as the intersection between AI and IP.

Shireen has been listed as both a recommended IP lawyer and a recommended publishing lawyer by Chambers and The Legal 500 for many years.

Shireen was a council member of the Advertising Standards Authority, adjudicating on advertising complaints, for six years. She currently sits on the Portman Group Independent Complaints Panel and the Games Rating Authority Appeals Panel.

Sharon Daboul Managing Associate

Sharon is a chartered trade mark attorney (UK) and head of trade marks. 

Sharon is a chartered trade mark attorney (UK) and head of trade marks. 

She, along with the trade mark attorney team, provides advice on all aspects of trade mark law, including clearance, filing and prosecution of trade marks, domestic and overseas portfolio management, and contentious trade mark proceedings before the Intellectual Property Offices. She also manages design portfolios. Sharon has experience of managing global portfolios across a range of industries, including media, arts, entertainment, telecommunications and consumer goods. She works with a wide range of clients, from multinational corporations to SMEs and entrepreneurs.

Sharon has been recognised in Who’s Who Legal as among the world’s leading trade mark attorneys, based on client and peer review. She has been credited in The Legal 500 as a ‘key lawyer’, recognised as a ‘rising star’ and ‘notable practitioner’ in the IP Stars publication, and is ranked as one of the ‘world’s leading trade mark professionals’ in the World Trade Mark Review 1000 publication.

She has also provided commentary on trade mark stories for a number of news publications, including The Telegraph, The Guardian, The Daily Mail, The Huffington Post, City A.M., The Mirror, Global Legal Post, The Lawyer and World IP Review. Details of which can be seen below. She is also a frequent commentator for the World Trademark Review and CITMA Review industry publications. Her most recent article on the impact of AI for trade mark attorneys was featured as a cover story for the CITMA Review. As well as this, Sharon tutors a residential revision course on trade mark law for trainee patent attorneys, which runs yearly.

Sharon is a member of the Chartered Institute of Trade Mark Attorneys (CITMA) and is a member of the Education, Qualification & Standards (EQS) Committee.

Daniel Prim Senior Associate

Daniel advises businesses, institutions and individuals on a broad range of IP law issues, and specialises in advising clients in relation to contentious IP and media related issues.

Daniel advises businesses, institutions and individuals on a broad range of IP law issues, and specialises in advising clients in relation to contentious IP and media related issues.

Daniel provides strategic IP advice to clients from across sectors including, art, film, TV, theatre, publishing, music, entertainment, finance, fashion and retail. Daniel regularly advises on all stages of an IP dispute from pre-action through to trial and beyond, as well as alternative forms of dispute resolution including settlement and mediation. Daniel has advised clients in IP disputes in the Intellectual Property Enterprise Court, High Court and Court of Appeal, and in tribunal proceedings before the UK Intellectual Property Office and EU General Court.

Daniel advises clients on trade marks, passing off, copyright, database rights and design rights issues. This includes enforcement of IP rights outside the Courts such as online takedowns and domain name complaints. Daniel advises on advertising clearances and ASA complaints, and reputation management (including social media issues). On the non-contentious side, Daniel advises on the exploitation, acquisition and licensing of IP rights. In the art law space, Daniel has advised on disputes in relation to the ownership of artwork, the sale of works at auction, the recovery of stolen artwork by way of "stakeholder application”, NFTs where the underlying asset has been artwork, the resale of artwork online, and artist resale rights.

Before joining Harbottle & Lewis in 2021, Daniel was a senior associate in the London IP and media team of Eversheds Sutherland, having trained and qualified there in 2015.

Daniel has been named a key lawyer in The Legal 500 for intellectual property: trade marks, copyright and design law (2024 & 2025) and for media and entertainment law (2021). Daniel holds a Postgraduate Diploma in Intellectual Property Law and Practice from the University of Oxford. Daniel studied languages at university and speaks Spanish and French fluently. Daniel is a member of the Art Lawyers Association (ALA), and Society for Junior Intellectual Property Practitioners (IPSoc). Prior to working in law, Daniel worked in film post-production, and was part of a team nominated for a film BAFTA.