The UK Supreme Court’s recent decision in Sky v SkyKick [2024] UKSC 36 is an important step in trademark law. It changes how we see “bad faith” in trademark applications. The key issue in this case is whether trademark owners can hold large registrations without a true plan to use them for all the goods and services they mention.
This ruling examines whether trademark owners can keep big registrations even if they do not plan to use them for all the listed products and services. This change matters. Businesses need to be more careful and show clear plans when they apply for trademarks. If they do not, they could have trouble getting their trademarks approved. The effects are serious: businesses must be more precise and show real intent in their trademark applications, or they risk losing them.
For expert guidance on your trade mark strategy or any intellectual property matters, contact our team at Go Legal for a Free Consultation. Call us on 0207 459 4037 or book your consultation online today.
Background and Significance of the Sky v SkyKick Case
The dispute between Sky Ltd, a prominent broadcasting and telecommunications company, and SkyKick Ltd, a US-based cloud technology firm, underscored longstanding tensions in trade mark law. SkyKick challenged the validity of Sky’s expansive trade mark registrations, arguing that they were filed in bad faith to monopolise market segments without any genuine intent to use the marks for many of the listed categories, which included unrelated goods like “bleach” and “insulation materials.”
The Sky v SkyKick dispute commenced in 2016 when Sky Ltd, a major player in the UK’s broadcasting and telecommunications sector, brought legal proceedings against SkyKick Ltd, a US-based cloud technology firm, for alleged trade mark infringement. Sky asserted that SkyKick’s use of the term “SkyKick” would lead to consumer confusion and undermine the distinctiveness of its “Sky” trademarks. Sky’s trade mark registrations were notably broad, encompassing a diverse range of goods and services, including unrelated categories such as “bleach” and “insulation materials.”
SkyKick countered these claims by arguing that Sky’s trademarks were overly expansive, lacked a genuine intention for use across the claimed categories, and were filed in bad faith. SkyKick maintained that such registrations were an attempt to monopolise market segments and stifle competition without a legitimate commercial rationale.
This raised a crucial question for trade mark law: should trade mark applications be invalidated, in whole or in part, if they are deemed speculative, anti-competitive, or not reflective of genuine business intent?
By challenging the legitimacy of overly broad trade mark applications, it underscores the necessity for specificity, genuine intent, and good faith in trade mark filings, reshaping the legal landscape for brand owners in the UK and beyond.
To discuss how this ruling affects your trade mark strategy, contact our expert intellectual property team at 0207 459 4037 or schedule a Free Consultation today.
Key Issues in the Sky v SkyKick Case
Central to the case was the question of whether overly broad trade mark registrations, lacking genuine commercial intent, should be allowed to stand and how such applications impact market competition. The primary issues examined included:
- Bad Faith in Trade Mark Applications
A critical focus of the case was whether Sky’s extensive trade mark registrations were made in bad faith. SkyKick argued that Sky had claimed rights over a vast array of goods and services—many of which were unrelated to its core business activities and for which it had no genuine intent to use the trademarks. This, they maintained, represented an abuse of the trade mark system, aimed at stifling competition and creating unwarranted market dominance. The Supreme Court needed to determine if such expansive applications, without credible commercial intent, could be invalidated as contrary to trade mark law.
- The Scope and Validity of Broad Registrations
Another major issue was the extent to which trade mark holders could claim protection over broad categories without demonstrating intent to use the mark across those goods or services. SkyKick’s challenge emphasised that allowing overly broad registrations without genuine commercial plans restricts market competition and creates barriers for other businesses. This prompted the Court to consider whether trade marks that extend far beyond actual business activities should be subject to invalidation.
For Trade Mark Holders: This highlighted the need for applicants to align their trade mark filings with legitimate business objectives and avoid speculative claims that could expose them to legal challenges.
- Partial Invalidation as a Remedy
The Court also explored whether it was appropriate to invalidate only the portions of a trade mark registration found to be made in bad faith while preserving the valid parts. This concept of partial invalidation sought to balance the rights of trade mark holders with the need to prevent misuse. By allowing portions of a registration to stand, legitimate business interests could be protected, while eliminating unjustified claims designed to hinder market access.
Previous Decisions in the Sky v SkyKick Case
As explained above, the Sky v SkyKick case proceeded through multiple levels of the judiciary since 2016, each delivering important rulings that shaped the final outcome in the Supreme Court.
| Court | Date | Key Findings |
| High Court (England & Wales) – Sky plc & Ors v SkyKick UK Ltd & Anr [2018] EWHC 1732 (Ch) | February 2018 | The High Court found that Sky’s trade mark registrations were partially invalid due to a lack of genuine intent to use the marks for many of the specified goods and services. It concluded that Sky’s broad registrations were inconsistent with the proper purpose of trade mark law and referred questions on the interpretation of “bad faith” to the CJEU. |
| Court of Justice of the European Union (CJEU) – C-371/18 Sky v SkyKick | January 2020 | The CJEU held that a lack of genuine intention to use a trade mark can constitute “bad faith” under EU law, but clarified that lack of specificity alone does not render a trade mark invalid. The court provided a framework for assessing intent and proportionality in determining whether a registration was valid. |
| Court of Appeal (England & Wales) – Sky v SkyKick [2021] EWCA Civ 1121 | July 2021 | The Court of Appeal partially reversed the High Court’s findings, determining that broad trade mark registrations could be justified if supported by credible evidence of potential future business use. This decision shifted the focus to the intentions and evidence presented by trade mark holders at the time of filing. |
| Supreme Court (UK) – Sky v SkyKick [2024] UKSC 36 | November 2024 | The Supreme Court reinstated the concept of partial invalidation, ruling that trade marks filed without genuine intent for certain goods or services could be classified as being filed in bad faith. It upheld the principle that only those parts of a registration found to lack genuine intent should be invalidated, preserving legitimate claims and ensuring a balanced approach to trade mark protection. |
The decisions in the Sky v SkyKick case reveal the evolving interpretation of “bad faith” in trade mark law and highlight the need for genuine commercial intent in trade mark registrations. Through each stage of this legal battle, the courts have emphasised the importance of aligning trade mark protections with legitimate business aims. By tackling overly broad and speculative registrations, these rulings set a new benchmark for how trademarks should be used to balance competition and protect brand rights.
If you want to safeguard your trademarks or ensure compliance with evolving legal standards, contact our expert trademark and intellectual property team at 0207 459 4037 or book a Free Consultation today.
The Supreme Court Decision in Sky v SkyKick: Detailed Analysis
The UK Supreme Court’s ruling in Sky v SkyKick [2024] UKSC 36 provides critical clarification on the scope and application of “bad faith” in trade mark law. This landmark decision established crucial principles that impact trade mark registrations and their enforcement in the UK, especially where the genuine intention to use the mark is in question.
Genuine Intention to Use and Bad Faith
The central issue before the Supreme Court was whether Sky’s application to register certain trademarks was made in “bad faith” due to a lack of genuine intention to use the marks across all the specified goods and services. The Supreme Court affirmed that a trade mark registration can indeed be challenged and invalidated, wholly or in part if filed without a genuine intention to use it.
As noted by Lord Kitchin in the judgment, “An application for registration made without any intention to use the mark in relation to specified goods or services constitutes bad faith. Such misuse undermines the trade mark system’s integrity” (para 183).
The ruling highlighted that speculative filings aimed solely at market control contravene the underlying purpose of trademarks, which is to denote origin and serve a legitimate business interest.
For Example: if Company A registers a trade mark for a wide range of medical devices but has no capacity or genuine intent to manufacture most of these devices. Such an act would amount to bad faith if it aimed to block competitors from entering the market.
Partial Invalidation
The Supreme Court upheld the principle of partial invalidation, whereby only those elements of a trade mark found to be filed in bad faith can be struck out. This nuanced approach preserves legitimate claims while removing any aspects that were improperly registered.
As observed by Lord Kitchin “Partial invalidation safeguards both the legitimate and genuine components of a trade mark application, reflecting a balanced approach” (para 239).
Scope of Registrations and Evidence of Intent
The Court emphasised the importance of clear and credible evidence to demonstrate genuine intent at the time of filing. Broad registrations unsupported by tangible business plans or realistic expansion goals risk invalidation.
The judgment clarified, “A trade mark applicant must provide credible evidence that their intention at the time of filing extends beyond speculative control of market space” (para 258).
Impact and Implications of the Sky v SkyKick Decision
The Supreme Court’s ruling in Sky v SkyKick [2024] UKSC 36 has far-reaching consequences for trade mark holders, applicants, and businesses seeking to protect their intellectual property. By clarifying the limits of what constitutes “bad faith” in trade mark applications and reinforcing the need for genuine commercial intent, the judgment reshapes trade mark law and provides crucial guidance for brand owners.
Enhanced Scrutiny on Broad Trade Mark Applications
The judgment establishes that trade mark applications covering broad or unrelated categories without credible commercial intent will face greater scrutiny. Applicants must provide evidence of their genuine plans to use the mark across all claimed goods and services. Speculative filings designed solely to block competitors are now at increased risk of partial or full invalidation.
Practical Tip: Businesses should focus on aligning their trade mark applications with their actual or planned commercial activities. Maintaining detailed records of market analyses, strategic expansion plans, and product development initiatives can help demonstrate genuine intent.
Principle of Partial Invalidation
By upholding the concept of partial invalidation, the Court ensures that only the elements of a trade mark registration found to be made in bad faith are struck out, while legitimate claims remain intact. This balanced approach preserves trade mark rights that serve genuine business purposes while preventing abusive practices that unfairly monopolise market space.
Practical Tip: Conduct regular audits of your trade mark portfolio to ensure that all covered goods and services reflect your current or credible future commercial plans. This can help mitigate the risk of bad faith challenges.
Stronger Challenges Against Overreach
Competitors and new market entrants are now empowered to challenge overly broad or speculative trade mark applications that hinder fair competition. This ruling sets a higher bar for trade mark registration, protecting the market from abuse while encouraging genuine commercial development.
Practical Tip: If your business is faced with a competitor’s broad trade mark that unfairly limits your market access, consider initiating a challenge based on lack of genuine intent and bad faith principles as clarified by the Supreme Court.
Tips from Our Expert Trademark Lawyers
Our trade mark lawyers provide practical steps to help businesses navigate these new standards and optimise their intellectual property strategies:
- Document Your Intentions – Ensure that every trade mark application is backed by tangible evidence of intent to use the mark across the specified goods and services. Consider preparing market plans, product development strategies, and documented growth projections to demonstrate the legitimacy of your claims.
- Avoid Overly Broad Applications – Filing for a wide range of categories without genuine plans to enter those markets can expose you to challenges and invalidate your registration. Instead, focus on key areas where your business operates or has credible expansion plans.
- Regular Portfolio Reviews – Conduct regular reviews of your existing trade mark portfolio. Remove or modify registrations that no longer reflect your business activities to avoid the risk of invalidation.
To learn how this ruling may impact your trade mark strategy or to ensure compliance with these evolving standards, contact our trade mark experts at Go Legal. Book a Free Consultation at 0207 459 4037 today or schedule using our booking form below.
Our Winning Approach to Trade Mark Strategy and Dispute Resolution
At Go Legal, we understand the challenges businesses face in protecting and maximising their trade mark assets, especially in the wake of landmark rulings like Sky v SkyKick. Our team of trade mark specialists offers a comprehensive approach that ensures your registrations align with the latest legal standards and serve your genuine commercial interests.
- Tailored Legal Advice: We work closely with clients to develop customised trade mark strategies that reflect their specific business needs and growth plans, minimising risks of bad faith claims and ensuring robust protection.
- Proactive Portfolio Management: Our team conducts regular audits of trade mark portfolios to ensure they accurately reflect your business’s current activities and plans, safeguarding you from challenges related to overly broad or outdated registrations.
- Expert Representation in Disputes: If your trademarks are challenged, or if you need to challenge a competitor’s overly broad registrations, we provide expert legal representation to protect your rights and maintain market fairness.
- Strategic Filing and Registration Guidance: We help you navigate complex filing requirements to ensure your trade marks meet the specificity and intent standards set by recent case law, including the Sky v SkyKick ruling.
Contact our expert trade mark lawyers today at 0207 459 4037 or book a free consultation online to protect and optimise your intellectual property.
Protecting Your Trade Marks with Precision and Expertise
The Sky v SkyKick decision has redefined the boundaries of trade mark law, emphasising genuine commercial intent and specificity in trade mark filings. Businesses must now take a strategic approach to ensure their trademarks are robust, enforceable, and aligned with their real market interests. At Go Legal, our expert team is ready to guide you through this evolving landscape with tailored advice, proactive management, and strategic representation.
For expert assistance in safeguarding your trademarks and navigating the complexities of trade mark law, contact us at 0207 459 4037 or schedule a Free Consultation today.
