Cloudy Skies: An In-Depth Look at the Landmark Trade Mark Dispute Between Sky v SkyKick

After 7 years of litigation, in June 2023, Sky v SkyKick reached the Supreme Court, raising fundamental questions about the scope of trademark protection and the concept of "bad faith" trademark registration.

While we continue to wait for a judgment from the Supreme Court, our Dispute Resolution solicitors explore the potential implications of this case for businesses that rely on intellectual property protection.

The case started in 2016 when media and telecoms giant Sky held a registered trade mark for "SKY" across a broad spectrum of goods and services.

This trade mark encompassed everything from telecommunication services and set-top boxes to financial services and software.

However, their dominance was challenged when SkyKick, a US-based company offering cloud-based email migration and storage solutions, entered the scene.

SkyKick's core argument hinged on the notion that Sky's trademark registrations for "SKY" were obtained in bad faith.

This accusation stemmed from the breadth of Sky's trademark claims, encompassing numerous goods and services far removed from their core telecommunications business.

SkyKick asserted that Sky had no genuine intention of using the trademark for all the claimed categories.

They argued that Sky's motivation was to stifle competition by securing overly broad trademark protection.

This accusation resonated with the concept of bad faith registration, which, according to EU trade mark law, occurs when an applicant files a trade mark application for reasons other than genuine use, such as hindering the activities of competitors.

When Sky appealed to the Court of Appeal, in a significant turn of events, the court overturned the High Court's finding of bad faith.

The court determined that Sky's broad trademark registration strategy did not automatically constitute bad faith and could be justified by Sky's substantial business interests in the computer software sector, even if not directly linked to their core telecommunications offerings.

This decision emphasised the need for courts to consider the broader commercial context when evaluating claims of bad faith registration.