Sky v SkyKick: A Landmark Trademark Dispute and the Supreme Court's Judgment

The Supreme Court allowed SkyKick’s appeal against the reversal of the trial judge’s finding that Sky’s trademarks were made partly in bad faith.

When considering the issue of bad faith registration, the Supreme Court emphasised that “If a person applies to register a mark without having made any use of it and without intending to use it about the goods or services for which protection is sought, it may leave the trademark system open to abuse.”

The Nice Classification was established to group similar goods and services within 34 classes of goods and 11 classes of services for trademark registration.

Referring to the Nice Classification, the Supreme Court criticised the “enormous” range of goods and services within “many of the 45 classes” for which Sky had registered their trademark.

Additionally, the Supreme Court also noted that Sky was “prepared to deploy the full armoury”, citing Sky’s aggressive infringement stance against any trader using the mark in a wide variety of classes for which the Sky mark was registered.

Unsurprisingly, following the Supreme Court’s criticism of Sky’s registration of its mark in various classes and willingness to enforce the trademark, the Supreme Court overturned the decision of the Court of Appeal and held that the trademarks had been registered in bad faith.

Subsequently, Sky’s trademarks were deemed partly invalid to the extent that Sky did not have any ‘genuine intention’ to use the mark in a particular class of goods and services.