Yesterday, the UK Supreme Court finally published the dates it will hear the long awaited SkyKick v Sky appeal and it’s not long to wait! The hearing will take place on 28-29 June 2023 before Lord Reed, Lord Lloyd-Jones, Lord Kitchin, Lord Hamblen and Lord Burrows. (We all heard a few months ago that this was the likely date, but it is good to see it formally announced.) 

The Supreme Court’s ruling is likely to have a significant impact on brand protection strategies in the future. It is therefore not surprising to see the Comptroller-General of Patents Designs and Trade Marks listed as an intervener in the action. 

Facts: reminder

This long-running trade mark case, began in May 2016. It has so far entailed no less than four first instance judgments, a judgment of the CJEU and the UK Court of Appeal. The Supreme Court website contains a concise summary of the facts as follows: 

• Sky brought actions against SkyKick for infringement of its trade marks across a range of goods and services, while SkyKick challenged those trade marks’ validity. 
• At this stage in the proceedings, the parties’ arguments are focused on whether Sky applied for its trade marks in “bad faith” within the meaning of section 3(6) of the Trade Marks Act 1994, which would render Sky’s trade marks invalid. SkyKick alleges that Sky employs a strategy of applying for overly broad trade marks for goods and services which it does not deal in, and for which it has no conceivable commercial rationale. 
• The High Court judge found that Sky had acted in bad faith and that its trade marks were partially invalid, but also found that SkyKick’s email migration and cloud storage services infringed Sky’s trade marks. The Court of Appeal allowed Sky’s appeal and held that it had not acted in bad faith and dismissed SkyKick’s cross appeal on infringement. SkyKick now appeals to the Supreme Court on the issue of bad faith. (See here for our earlier article on the Court of Appeal ruling.)

Issues before the Supreme Court

1. What is the test for determining “bad faith” in section 3(6) of the Trade Marks Act 1994?

2. If such bad faith is found, what is the correct approach to determining the specification that the trade mark owner should be permitted to retain?