Holmes Mackillop says that the UK Supreme Court’s bad faith trademark ruling in the SkyKick Trademark case could be a watershed moment in brand protection strategy.

British TV company Sky had sued SkyKick, a Seattle-based provider of cloud management software, for allegedly infringing its trademark over the word ‘Sky’. The Court ruled that Sky had applied for certain trademarks in bad faith, as the trademarks covered goods and services that Sky never intended to provide, including, bleach or luggage.

According to Finlay Swan (pictured above), associate solicitor at Holmes Mackillop, this finding fundamentally changes the strategy brand owners must take when looking to enforce their trademarks.

He said: “Gone are the days when a party looking to register a trademark could successfully apply for protection across a broad range of goods and services without any real commercial justification.

Now, brand owners must ensure their applications are specific only to trademark rights affecting their core business and/or genuine future expansion plans.

A brand owner looking to enforce its registered trademark against another party in relation to any goods or services in which it has no real business, needs to heed the lessons from the Supreme Court: its case now looks likely to fail on the grounds that it has acted in bad faith.”

Swan says that brand owners across the UK will now be reviewing their trademark portfolios with a view to weeding out any marks that could be susceptible to a finding of bad faith.

He commented: “This development is a pro-competition move by the courts. A branding behemoth like Sky (amongst many others) arguably had a monopoly on its trademarks, with the power to stifle smaller brands.

On the other hand, small brands looking to quickly ‘pop-in’ a cheap trademark application may now find themselves having to spend more time and money making sure their registration is specific enough to avoid accusations of bad faith.

The effect of this ruling will only truly become clear in the years to come; however, it would certainly appear to be a watershed moment in brand protection strategy.”