SkyKick UK Ltd v Sky Ltd [2024] UKSC 36
This is the highly anticipated decision of the Supreme Court in the Sky v SkyKick saga. The case centred around Sky’s claim of trade mark infringement for the use of the sign ‘Sky’ in relation to cloud migration and cloud backup services, and SkyKick’s counterclaim for invalidity based on bad faith.
The appeal was heard in June 2023 by Lords Reed, Lloyd-Jones, Kitchin, Hamblen and Burrows. An application made by SkyKick shortly before the judgment was finalised asking for permission to withdraw the appeal was rejected on public policy grounds.
The main judgment was given by Lord Kitchin (with whom the rest of the panel agreed). The court allowed the appeal and reversed the Court of Appeal’s decision on bad faith, and upheld its decision on infringement. Lord Reed gave additional reasons for agreeing with Lord Kitchin’s finding that England and Wales courts retain their pre-Brexit jurisdiction in full in relation to proceedings for infringement or validity of EU trade marks pending on IP Completion Day.
The judgment raised several points of policy with regards to the appropriate limits that need to be placed on applicants when registering a sign for specific goods and services, taking into account the fundamental origin function of trade marks and the need to maintain fair competition on the market. The judgment includes inter alia the following important findings:
- It was confirmed that at the time a trade mark application is made the applicant does not need to have a firm or settled intention to use the sign as a trade mark in relation to the goods and services in its specification. However, lack of such use and intention may be evidence in support of an allegation of bad faith where the applicant has no genuine intention to use the grace period to try to establish or even reasonably to explore the viability of a business under the mark, in particular where they nevertheless intend vigorously to enforce the registration against third parties across the full range of the goods and services in respect of which it is registered.
- The length of the list of goods and services in the specification, when compared with the size and nature of the applicant’s business, can be taken into account as a factor supporting an allegation of bad faith, as can a failure on behalf of the applicant to provide any satisfactory explanation for the choice of specification.
- An applicant’s reputation does not allow them to apply to register the mark for goods and services which they never had any intention to sell or supply.
- Applicants should not be permitted to apply to register a mark in respect of distinct categories of goods or services in relation to which they never had an intention to use the mark simply because they chose to use a broad description. A general terminology should be viewed as consisting of several sub-categories, some of which may have been included in bad faith.
- As to the proper procedure, the trial judge was entitled in the circumstances of the case to put forward a different limited specification. It would not be fair to require a party seeking a declaration of invalidity to set out with precision the specification to which the trade mark should be restricted without sufficient knowledge of the applicant’s intention.
- In the context of infringement, the court agreed with the CoA and reaffirmed the principle that, in considering a specification of goods or services defined by terms which are not clear or precise, the correct approach is to confine the terms used to the substance or core of their possible meanings. Comprising cloud migration within the meaning of “electronic mail services” was therefore an impermissible extension of the core meaning of the expression to an unclear and indeterminate range of services connected to electronic mail in an unspecified way.
Anna Edwards-Stuart KC appeared on behalf of the Comptroller-General of Patents, Designs and Trade Marks as an intervener.