The UK Supreme Court recently delivered an important judgment representing the culmination of years of litigation between software company Skykick UK Ltd and media giant Sky. The judgment is likely to have a significant impact on the approach of brand owners seeking trade mark protection, who will now have to take care to ensure that their applications are suitably focused.
The Supreme Court held that Sky’s trade mark was susceptible to invalidation having been applied for in ‘bad faith’. The finding of bad faith stemmed from Sky having sought to include a very broad range of goods and services in respect of which they had no intention to use the relevant mark. The upshot of the decision is that brand owners will need to be able to demonstrate a genuine intention to use their mark in relation to some or all of the goods and services specified (either now or as part of a future plan).
The decision overturns what was generally considered to be a more “brand friendly” and pragmatic decision of the Court of Appeal.
The case also grappled with the difficulties arising in cases commenced before Brexit but determined in the new post-Brexit world. (Those cases will continue to be determined in accordance with EU law).
Finally, the judgment was a rare example of a Court issuing a decision despite the settlement of the proceedings. Whilst the Court was fully cognisant of the strong view of the parties that it should not deliver judgment and recognised the benefit of encouraging settlement, nevertheless the issues were considered to be of such wide significance to both traders and the public alike that the Court exercised its discretion to proceed. Sometimes litigation really is a steam train that you cannot get off!
The Intellectual Property team at Mills Selig regularly advises both brand owners seeking protection and businesses threatened with infringement action.
Editorial prepared by Kirsten Magee, Partner, Litigation @ Mills Selig
Kirsten Magee, Partner, Litigation
Kirsten is a highly skilled and experienced commercial litigator with a background in advising both private and public sector clients on a wide range of complex, high-value disputes.
T: 028 9024 3878
E: Kirsten.Magee@MillsSelig.com
W: https://millsselig.com/team/kirsten-magee/
Based in Belfast, Mills Selig’s expert legal team provide clear, concise and solution-focused advice to businesses and individuals. Make Mills Selig #YourLegalTeam
