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This morning, the Supreme Court handed down its long awaited judgment in the case of Sky v Skykick [2024] UKSC 36 (a copy of the full judgment can be found here). We will be producing a detailed note on the full judgment (which runs to an impressive 145 pages) shortly. However, we set out a brief summary of the key points below.
The Supreme Court unanimously found that the High Court was correct in its finding that Sky’s trade marks were applied for in bad faith and that the High Court’s procedure in reaching this finding was not unfair. The Court of Appeal (“CoA”) was therefore wrong to reverse this finding.
In particular, it was found that the CoA was wrong in its conclusion that the overall breadth of goods or services covered by a trade mark specification can never lead to an inference of bad faith. Moreover, the Supreme Court found that it would be wrong to say that there can never be an inference of bad faith when broad or general terms (as opposed to appropriate sub-categories) are used to describe goods or services to be covered in a specification.
It was also found that the CoA had failed to take account in its conclusion of various ways in which Sky had conducted this litigation which supported a finding of bad faith.
The Supreme Court found that the Court of Appeal was correct in its findings that, were Sky’s trade mark specifications to be narrowed (as the Supreme Court has found they should be): (i) infringement by Skykick’s cloud migration product and service had not been established; and (ii) the High Court had made no error in its finding of infringement concerning Skykick’s cloud backup product and service.
This judgment provides a clear warning to trade mark applicants (and those advising them) that one must, when making an application, ensure that your specifications do not include goods or services, or broad categories of goods or services, that cannot be commercially justified.
If you have any queries regarding this topic, or would like assistance creating or implementing an IP strategy, please contact Fergus Brown of our team.
Category: News | Author: Fergus Brown | Published: | Read more
