Businesses await Supreme Court ruling in Sky v SkyKick case

Florian Traub of Pinsent Masons in London, who specialises in trade mark law and brand protection, was commenting after the UK Intellectual Property Office (IPO) provided details of ongoing trade mark disputes directly depending on the Supreme Court’s verdict, which is due to be handed down on Wednesday 13 November 2024.

In the dispute between SkyKick and Sky, SkyKick has alleged that trade marks that Sky has asserted against it are invalid because they were applied for in bad faith – the UK Trade Marks Act 1994 provides that a trade mark shall not be registered if or to the extent that the application is made in bad faith. At the heart of the claim raised by SkyKick is its belief that Sky registered its trade marks for an overly broad range of goods and services – some of which fall outside the scope of its core business – with no intention to use the marks for those goods and services.

The case has been litigated for years, having already passed through the High Court and the Court of Appeal. The Court of Justice of the EU (CJEU) also provided its interpretation on points of EU law in what was one of the last referrals to the court from the UK, pre-Brexit.

The dispute is now before the UK Supreme Court, with hearings having taken place in June 2023. There had been speculation as to whether the dispute was actually settled between the parties, but even if there was a confidential settlement, the Court appears set to use its discretionary powers to hand down a judgment regardless. The central question that the Supreme Court is expected to answer in its ruling on Wednesday is what constitutes a ‘bad faith’ trade mark registration.

Out-Law asked the IPO last month to confirm the number of actions before it in which either the registration of a UK trade mark is opposed, or the validity of a UK trade mark registration is challenged, in which the proceedings have been suspended pending the Supreme Court’s judgment in the Sky v SkyKick case. In response, the IPO has cited seven cases.

Those cases include a dispute over rights to the ‘Banksy’ trade mark; a dispute between a charity and prominent trade union over the name of a faith fellowship group; and disputes arising in the context of cryptocurrencies and cryptocurrency-related services.

Traub said: “While it is a little surprising that there are not more cases that have been suspended in lieu of the Supreme Court’s ruling in this case, it does not change the fact that this will be a seminal judgment of the court when it lands.”

“It is possible that the judgment will not only provide important guidance on the test for determining ‘bad faith’ registrations, but also set new UK case law on how precise brand owners need to be when specifying the goods and services they want UK trade marks to cover, and the degree to which they intend to use the marks. In doing so, there is the potential for the Supreme Court to deviate from settled EU case law in what would constitute one of the first significant divergences between UK and EU law in the field of intellectual property since Brexit. It is in this context that this ruling is keenly anticipated,” he said.