30 April 2020

The UK High Court has issued its eagerly anticipated decision yesterday in the long-running Sky v SkyKick saga. For a refresher of the background to this case and an overview of the CJEU’s judgment following the High Court’s earlier referral, please see our previous article here.

The High Court decision in brief

  • Lord Justice Arnold largely followed the CJEU judgment, but (as might be expected) also took a few additional points into his own hands.
  • A lack of clarity or precision in a specification was confirmed to not in itself be a ground for invalidity.
  • However, a number of Sky’s trade mark registrations were found to be partially invalid on the grounds of bad faith. There was no “foreseeable prospect” that at the time of filing Sky ever intended to use the marks in relation to some of the goods and services covered. Further, Sky filed the applications “pursuant to a deliberate strategy of seeking very broad protection of the Trade Marks regardless of whether it was commercially justified”. In doing this, Sky applied for the trade marks “purely as a legal weapon against third parties”.
  • Sky’s trade mark specifications were limited as a result. In particular “computer software” was too broad and tainted by bad faith. However, Sky did not provide fall-back wording for a suitable limitation, and therefore Lord Justice Arnold amended the wording as he saw fit, to remedy the extent of the bad faith found.
  • Notwithstanding the above findings (and many other interesting points raised in the decision), SkyKick was still liable for trade mark infringement – partial invalidity of the earlier rights did not affect this.

Our comments and key take-away points

  • It will be of great relief to many UK trade mark owners to know that even if an existing registration covers overly broad or imprecise terms within its specification, and even if this could result in a finding of partial bad faith, this will not automatically result in the fall of the entire registration.
  • This decision will, however, undoubtedly make trade mark applicants and practitioners think twice before filing an application for the extremely popular term “computer software” (or other similarly broad terms) without limitation going forwards.
  • It is interesting that Lord Justice Arnold himself devised alternative limited specification wording for certain terms deemed to have been filed in bad faith. This suggests it would be wise for any trade mark owners in this position in the future to provide the Court with their own fall-back wording in advance, to try to steer the Court to their own preferred wording and avoid an amended specification they are unhappy with.

How can Burges Salmon help?

If you would like to discuss any of the issues raised in this article or would like further information, please contact Jeremy Dickerson, Georgina Shaw or Laura Tennant in the IP team.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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