Locke Lord LLP
On 13 November 2024 the UK Supreme Court handed down its decision in the case of SkyKick UK Ltd and Sky Ltd (full decision here). By the time the long-running dispute reached the Supreme Court, the key point in issue was whether the practice of filing a trade mark application for goods and/or services for which the applicant could not reasonably be said to have a genuine intention to use the marks applied for constituted bad faith, and therefore a ground to invalidate the subsequent registration.
For context, applications for UK trade marks only require an intention to use the mark. After a registration has been granted, the applicant is given a grace period to begin using the mark. If the registration is not used within five years, it may be revoked. In the UK, an applicant can obtain a monopoly on a trade mark without having to start using it.
The Supreme Court confirmed that submitting a trade mark specification that is broader than goods and/or service for which the applicant has a genuine intention to use the mark may constitute bad faith and can result in an invalidation of a registration or refusal of an application in relation to goods/services without such intent. This includes both the filing of broad specifications and using broad categories of goods or service with a specification. Although we await to see how the Supreme Court’s decision will be implemented in practice, the judgment provides some important guidance for brand owners when drafting specifications, or when considering enforcing a broad specification:
- Filing a broad specification or using broad categories within that specification (e.g. “computer software”) does not in of itself constitute bad faith.
- However, it if it is reasonable to infer from the size and nature of the specification and all “other circumstances” that there was no genuine intent to use the mark in respect of the specification, this can rebut the presumption that an application was filed in good faith.
- “Other circumstances” include the size and nature of the applicant’s business, but also factors such as the applicant’s enforcement strategy. Enforcement of goods and/or services that are part of a specification, but not likely to form a part of an applicant’s business in the future is likely to construed by the courts as an abuse of trade mark law rather than a legitimate effort to protect a necessary monopoly.
- An application for registration of a broad category (e.g. It is possible that “computer software” was made in part in good faith. Therefore, if the brand owner adopts a wide category in its specification, it would be prudent to also include a smaller sub-category in the specification in case the specification were subsequently challenged.
- An applicant can avoid a finding that the specification was made in bad faith if they provide a reasonable justification and explanation. In this context, it is useful to retain contemporaneous documents that demonstrate the business rationale behind the specification. The Supreme Court acknowledged the importance of the five-year grace to begin use and did not intend to undermine it. It is clear, however, that the grace period does not guarantee enforceability of a trademark across its entire specification.
- The specification will only be vulnerable if there was not a genuine intention to use the mark on those goods and services. A finding in respect of some goods or services does not risk the validity of the entire registration.
- Following this judgment, if a brand owner wants to file a specification which includes goods or services which it does not currently offer, the brand owner should be mindful that a court or the registry is likely to look more closely at the commercial rationale for the application. Brand owners should continue to work on drafting a fair specification that meets their current and future business needs. They should not expect to face penalties for applying for goods and services they have not yet used, if they intend to use them in the future. In the future, brand owners should be more careful in how they frame their protection requests.
To enforce an registration for goods or service that the brand owner has not yet used, even during the grace period, the brand owner will have to justify their decision to protect these goods or services. Brand owners do not have to change their specifications, but they will feel the impact of this decision when making decisions about enforcement strategies.
