UK Supreme Court Blames Sky For ‘Bad Faith’ Trademark But Upholds High Court Ruling On SkyKick’s Infringement

UK Supreme Court Blames Sky For ‘Bad Faith’ Trademark But Upholds High Court Ruling On SkyKick’s Infringement

Lawyers stated that the ruling would open other brand owners to legal challenges

The UK Supreme Court has ruled that British TV company Sky applied for overly broad trademarks over its name in bad faith.

Sky had sued SkyKick, a Seattle-based cloud management software provider in 2016 for allegedly infringing its trademark over ‘Sky’.

In 2008, London's high court, the Court of Appeal, ruled that Sky applied for certain trademarks in bad faith, as they covered goods and services that it never intended to provide, including bleach or luggage but in 2021, overturned the decision.

However, the Supreme Court found Sky guilty but upheld the high court ruling that SkyKick had nonetheless infringed on Sky's trademarks.

Sky’s spokesperson said it welcomed the legal clarity.

In his ruling, Judge David Kitchin stated that Sky applied to register the trademarks covering a range of goods and services, which it was implausible to provide.

He explained that bad faith occurred if a trademark was registered with the intention of undermining third parties' interests or obtaining protection beyond the "essential function of indicating the origin."

However, he added that bad faith could not be presumed because a company did not provide certain services while applying to register a trademark, as it did not know the use of the trademark at that time.

Meanwhile, in a long-awaited decision that lawyers said could open other brand owners to legal challenges, Richard May, a partner at Osborne Clarke remarked that the ruling "will have wide ramifications for brand owners, as it opens the door for broad registrations to be attacked on the grounds of bad faith."

Geoff Steward, a partner at Addleshaw Goddard maintained, "Brand owners and trademark attorneys will desperately review their UK trademark portfolios to see if registrations were vulnerable to bad faith."

He added, "Gone are the days of overreaching to gain wider trademark monopolies."