Should you be able to register a trade mark for wide descriptions of goods and services or should you only be able to register it for precisely the goods and services you plan to offer?  How specific should the description be?   Could trade marks lose protection entirely, if the description is too broad?

The questions go to the heart of the UK’s first-to-file trade mark system. They have been answered today by the UK Supreme Court in SkyKick v Sky.  The court decision perhaps takes us closer to the US system: whether or not this will be considered to diverge from the EU approach in practice remains to be seen.

The Supreme Court accepted SkyKick’s appeal in part and held that a trade mark can in certain circumstances be revoked for bad faith if there is no intention to use the mark for all the goods and services for which it has been applied. This is especially the case if the intention at the date of filing was simply to use the mark as a legal weapon against other traders. 

The decision runs to 144 pages and deals with a number of points but perhaps most importantly sets out how a Court or tribunal should assess whether a trade mark has been applied for in bad faith. The Court was clearly right to set this out as it found the assessment mired in confusion. This is clear from the fact that of all the various courts to consider the case below, the Court of Appeal was wrong on important points; but on other points, the High Court was wrong and the Court of Appeal was correct.

Important takeaways for businesses

Breadth not a factor on its own

There may often be a contrast between the nature of a business, and the size of its trade mark specification. Just because there is a long list of goods and services in a trade mark registration’s specification does not on its own mean that the registration is invalid. 

Bad faith is to be measured in assessing the objective circumstances, and it's a matter of degree. If a trader files for a very broad description, they will be setting themselves a higher hurdle to prove good faith; that is a risk, which should be weighed against the ever present temptation to file for broader protection. 

The question becomes: is it reasonable to infer that the application was made in bad faith, taking into account all the circumstances? 

Well known brands

Just because a brand is well known does not on its own justify a broad list of goods and services outside its area of business. In this case, Sky is a leading brand known all around the country, but that did not justify registrations for 'bleach'.

However, well known brands can take comfort from the fact that the trade mark system already provides for them. Brands with reputation get helpful additional protection even without having an over-broad registration. An example is the recent case of Lidl v Tesco in which reputation rights were relied on alone. The success of that case shows that it is not necessary to register more broadly: and the Skykick decision today shows that it is not desirable, either.

Background

The Supreme Court heard the case at the end of June 2023, after the Court of Appeal judgment in July 2021. 

Normally, disputes are driven by the parties behind them. Here, the parties had actually settled their dispute after the hearing and despite the parties attempting to withdraw the case the Supreme Court decided to hand down the judgment given its importance and due to the intervention from the UK IPO. 

History of the case

The case has a long and complicated history having started in mid-2016. Sky brought a claim for infringement of their SKY trade marks against SkyKick for use of that name for IT services related to migration of businesses to Microsoft Office.  

As part of their defence, SkyKick applied to revoke Sky’s trade marks on the basis they had been applied for in bad faith. They claimed that Sky had had no intention to use the SKY trade mark for all the goods and services and had registered such a broad specification simply to use as a legal weapon.

The High Court had referred the question to the Court of Justice of the European Union and on receipt of the answer had held that certain goods and services within SKY’s specification e.g. computer software, should be partially revoked and limited to those goods and services which SKY had an intention to use at the date of application. This decision was overturned by the Court of Appeal which held that there was no requirement for a trade mark applicant to establish at the date of application the goods and services for which it intended to use the trade mark.

The outcomes

An initial review of the Judgment indicates that the Supreme Court has held that you should not be able to register a trade mark for goods and services unless you believe there is a reasonable prospect of using the trade mark for the goods and services applied for within the period 5 years from the date of registration. This is a significant change from current practice and will require businesses to consider much more carefully with their advisors the goods and services they wish to cover in any new application. Businesses will not only need to consider what areas their business has a reasonable prospect of expanding into but from a practical perspective may be well advised to keep a record of their view at the date the application is made.

It is likely that this will have a profound effect on existing registrations given that for marks that have been registered for less than 5 years and have not yet been used in relation to all goods and services covered by the registration will now be vulnerable to partial cancellation if the proprietor when challenged cannot establish that they had in mind at the date of application that there was a reasonable prospect of using the mark for the relevant goods and services within 5 years from registration.