The impact of Skykick UK Ltd v Sky Ltd on the trade mark landscape  

An insight into the Skykick UK Ltd v Sky Ltd (2024 UKSC 36) judgment from the Supreme Court and the approach for commercial strategy in relation to branding portfolios following that ruling. 

In 2016 Sky brought infringement and passing off claims against SkyKick for using the mark “SkyKick” in relation to cloud migration, backup and management services. SkyKick counterclaimed, attacking the validity of the UK and EU trade mark registrations relied upon as they had been applied for in bad faith as Sky had no genuine intention to use them in respect of all the goods and services covered by these registrations.  

Could anyone have predicted the impact that this case would have when it concluded at the Supreme Court some eight years later. 

Previously, it was readily understood that a trade mark could be either opposed or declared invalid in the UK if it was registered in bad faith. The UKIPO’s PAN 1/23 from April 2023 covers when examiners might raise this and refers to Floyd LJ’s definition that has been followed previously, arising from the earlier related Court of Appeal Decision 26 July 2021, namely: 

“The concept of bad faith, so understood, relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices” [point 4 in paragraph 67: in Skykick UK Ltd and Another V Sky Ltd and Others [2021] EWCA Civ 1121].  

However, in November 2024, the UK Supreme Court confirmed UK trade marks could be invalidated or reduced in scope if found to have been applied for in bad faith, and bad faith will be established where the trade mark owner either intends to undermine the interests of third parties or intends to obtain an exclusive right for purposes other than those falling within the functions of a trade mark, particularly its function as a badge of origin.   

It was noted that Sky’s registrations included “bleaching preparations”, “whips” and “insulating materials” having no immediate link to their business interests plus use of general terms such as “computer software” rather than using subcategories of software that could better identify their interests. 

Whilst the parties had already reached a settlement, the Supreme Court used its discretion to give judgement because of the importance of the decision to trade mark law. 

The Supreme Court’s decision ruled that Sky had applied for its relevant marks in bad faith after concluding that it never had any intention to use those marks for the full range of goods and services for which it had registered the marks.  

The Supreme Court held the previous judgements that SkyKick had infringed however it upheld the High Court’s finding that Sky’s trade mark applications had partially been made in bad faith, reversing the Court of Appeal decision. 

The Supreme Court rejected the Court of Appeal’s finding that the width or size of the specification of goods or services could never, of themselves, be sufficient to rebut the presumption of good faith. Instead, the Supreme Court held that it may be reasonable to infer bad faith by comparing the width of the specification relative to the size of the applicant’s business, but it will depend on all the circumstances of the case.  

When assessing the relevant circumstances, the fact that a trade mark owner has a significant reputation is not a justification for registrations outside the scope of its business (e.g. in Sky’s case, registrations for bleaching preparations). 

Sky’s UK trade mark, and one of its EU marks, were registered in 22 of the 45 NICE classes, and included all of the goods and services set out under each of those classes. Sky also has a history of using this broad range of marks in litigation – previous successful claims for infringement against third parties included claims for goods including automatic vending machines, fire extinguishers, animal skins, footwear, motor vehicles and synthetic gemstones. 

The following factors supported an inference of bad faith: 

• Sky’s lack of contemporaneous evidence to justify filing for broad protection. 
    

• Sky’s aggressive enforcement strategy to oppose third party applications for the registration of marks in which it did not trade and had never traded. The fact that Sky only narrowed the scope of goods and services as a basis for its claim very late in the process – five weeks before trial and then again at the time of closing submissions – was also considered by the court to form part of a sequence of events that provided “powerful support” for SkyKick’s argument that Sky was using its registration as a legal weapon. 

The Supreme Court also concluded that if a trade mark owner uses class headings and broad terminology – such as “computer software” – so that goods and services in relation to which the owner has no intention of using the mark are effectively bundled with those where there is no genuine intention of use, they should not benefit from better protection than an applicant which uses appropriate sub-categories; rather, that trade mark owner should be vulnerable to a finding of bad faith in relation to goods and services in relation to which they have no intention to use the mark.      

The Supreme Court also affirmed that the practice of serial repeat filing by a mark owner, of the same trade mark for the same goods/services, to circumvent the non-use vulnerability of any earlier existing registrations, may amount to bad faith, unless there was commercial justification in such new filings. This practice is known as ‘evergreening.’ 

As for the infringement claim, the Supreme Court held that Skykick’s use for ‘cloud migration’ services did not infringe Sky’s (remaining) registrations. However, despite the modifications to Sky’s goods and some services, Skykick’s use of SKYKICK for ‘cloud back-up services’ was still deemed to have infringed Sky’s registrations. 

Impact of this decision moving forward 

The UKIPO in response to the Skykick decision has issued new guidance (PAN 1/25 and here) on what is expected when filing specifications, and outlines changes to examination practices which, as of 27 June 2025 could now include a bad faith absolute objection in relation to overly broad or unrealistic specifications.  

Filers could face an absolute objection based on bad faith during the examination process if their application includes a specification which is “manifestly and self-evidently broad”. Due to PAN/1/25 there is now an explicit requirement that applicants seek registration for goods or services which “represent fair and reasonable claims in the context of their businesses, for the purpose of denoting trade origin”.  Whilst UK trade mark applicants have always had to declare a bona fide intention to use a trade mark for the specification covered when filing an application, this change in practice allows examiners to question whether this is indeed the case. 

Any would-be challenger of existing trade mark registrations on the grounds that they were applied for in bad faith will need to set out the classes or categories of goods and services being challenged and show that as of the filing date of the underlying application(s) that the applicant had no intention of using the mark in relation to these goods and services.  

But broad wording per se is insufficient to confirm a finding of bad faith as it will depend on the circumstances of the case, and the applicant still has a five-year period post registration date to put the subject mark to use in relation to all the goods and services registration was achieve for thereby avoiding the prospect of invalidation for non-use. 

If you are considering applying for a trade mark, concerned about the rights you hold with an existing mark, or considering challenging a mark, get in touch with our Trade Marks and Brands Team as we, or the wider IP Team, can assist you. We also provide pre-filing clearance searches and advice, portfolio management advice and brand protection strategies utilising UK, EU and international trade mark applications.