Now the dust has settled on the Supreme Court’s landmark decision in Skykick UK Ltd v Sky Ltd (2024 UKSC 36), we consider some practical implications for UK trade mark owners arising from the case.

Overlong specifications of goods/services with no intent to use:

While it may still be possible to physically file very long and wide-ranging lists of goods/services, this may expose an application to bad faith actions from third parties, alleging the applicant had no genuine intention to use the mark for all such goods/services.

In the SkyKick case, Sky’s registrations, for example, included goods such as ‘bleaching preparations’ and ‘whips’, for which it did not have any real intention to use its marks.

The success or failure of such a bad faith action will, of course, depend on all the circumstances of a case. However, to try to reduce the risk of such a bad faith attack, those seeking to file UK trade marks may now opt to file more streamlined, commercially relevant goods and services.  This will also help to ensure more focussed, enforceable registered rights.

Lists of goods/services can still allow for intended expansion of a business into potential new or desired goods/services, for which there is a bona fide intention to use in the future, and a trade mark owner still has a five year period to put a mark to genuine use in the UK, from the registration date, before the registration may be vulnerable to non-use attack.

Broad terms of goods/services within a specification:

The Supreme Court also ruled that broad terms, such as ‘computer software’ in Class 9, may result in an unfair monopoly, as this term applies to so many different fields and commercial applications, and a trade mark applicant may be unlikely to have had an intention to use for software across so may possible fields to justify the broad term.

Other broad terms were not specifically explored in the judgement, but it does reference descriptions such as ‘computer programs’ and ‘computer services’ as also having distinct sub-categories, for example. Other similar terms may exist in other classes of course, such as ‘machines’.

The Supreme Court held that such broad terms that may go beyond an applicant’s intended or actual use, may be declared to have been filed in bad faith to the extent they are not within the commercially justifiable intention to use.

The leading judge said:

“I see no reason why a person should be permitted to apply to register a mark or retain a registration in respect of distinct categories of goods or services in relation to which it never had any intention to use the mark, simply because it chose to use a broad description of those goods and services which meant they were encompassed together with goods or services about which no complaint is made”.

Therefore, filing only for broad terms such as ‘software’ in a UK trade mark application, rather than specific sub-categories of software (e.g. business management software) carries with it a risk of third parties attacking the broad term and arguing the application was filed in bad faith, at least to the extent not within the applicant’s commercially justifiable intention at the time of filing. So filing only for a broad term such as that, carries inherent uncertainty.

At present, the UKIPO themselves are not raising objections to such terms on the grounds of bad faith and there are no explicit restrictions on including, for example, ‘computer software’ in a UK application. Any finding of bad faith could result from an action brought by a third party against the broad terms.

Although it may not currently be necessary to address the presence of broad terms in existing registrations, those seeking to register new UK trade marks should bear in mind the impact of the SkyKick decision on broad terms.

Bad faith ‘evergreening’:

The Supreme Court also affirmed that the practice of serial repeat filing by a mark owner, of the same trade mark for the same goods/services, to circumvent the non-use vulnerability of any earlier existing registrations, may amount to bad faith, unless there was commercial justification in such new filings. This practice is known as ‘evergreening.’

Therefore, a trade mark owner filing a new UK trade mark may wish to only include new goods/services appearing for the first time in any new UK application, where it is for the same trade mark as an existing UK registration. This can mitigate against the risk of an evergreening attack on the basis of commercial justification, although may not entirely remove the risk.

For example, new filings of specific goods / services which are within a broader term in an existing registration (e.g. ‘software’) may still be vulnerable to evergreening attack. As with long specifications, ultimately each case will fall to be assessed on its facts, for example, whether there was commercial justification for the filing due to developments and changes in a business. This still leads to a currently unknown point where certain types of software were not in contemplation at the time of an older filing but were still within that earlier broad term when the same later mark was filed.

What this meant for the case:

In the SkyKick case, although Sky eventually reduced down the goods/services it sought to rely on in the infringement claim against SkyKick, the Supreme Court also held that certain terms in Sky’s registrations were too broad and, thus filed partly in bad faith.

The Supreme Court also agreed with the first instance judge, that that ‘computer software; computer software supplied from the Internet; data storage’ in Class 9, for example, were too broad to be justified, and should be narrowed to reflect what was commercially justifiable for Sky, with specific references to ‘television, video recording, or home entertainment apparatus or services’ amongst other specific fields.

Although ‘telecommunications services; e-mail services and internet portal services’ in lass 38 were not further qualified, ‘computer services for accessing and retrieving information/data’ in Class 42 was.

As for the infringement claim, the Supreme Court held that Skykick’s use for ‘cloud migration’ services did not infringe Sky’s (remaining) registrations. However, despite the modifications to Sky’s goods and some services, Skykick’s use of SKYKICK for ‘cloud back-up services’ was still deemed to have infringed Sky’s registrations.

This case also adds a nuance to due diligence searches for prior rights: there may be new scope to argue that an earlier trade mark was filed (at least partly) in bad faith to the extent that it covers broad terms wider than a reasonably commercially justifiable intention to use, and where an earlier right covers a long list of goods/services that could not be commercially justified by the prior rights holder.