Intellectual property: SkyKick – takeaways for trade mark owners

In a prolonged authorized battle, the media and telecoms big Sky Ltd (previously Sky Plc) sued pc software program firm SkyKick UK Ltd for commerce mark infringement and passing off. In SkyKick UK Ltd and Anor v Sky Ltd and Ors, the Supreme Courtroom allowed SkyKicks’s enchantment partly, agreeing with the Excessive Courtroom that Sky Ltd’s SKY marks have been partly utilized for in dangerous religion. Does this imply that the holders of commerce marks with broad specs ought to panic? 

Sky’s commerce marks have been extremely broad. Its home mark prolonged to, amongst different items and companies, bleaching preparations, gasoline components for enhancing combustion of fuels and even whips. Whereas different events will little question have lined phrases they don’t have any intention of ever utilizing, the Supreme Courtroom took into consideration Sky’s behaviour within the lead-up to the trial. Sky had not solely secured extraordinarily broad registrations overlaying items and companies which it by no means had any intention to supply, but it surely was additionally ready to depend on the total remit of their specs towards third events.

Within the UK, a commerce mark applicant solely requires an intention to make use of the mark. As soon as the registration is granted there’s a five-year grace interval to begin use, after which the registration could change into susceptible to revocation on the grounds of non-use. The result’s {that a} UK registration can present a broad monopoly proper for 5 years with none use.

Whereas this ruling doesn’t discover {that a} broad specification is prima facie proof of dangerous religion, it does search to scale back the abuse of the commerce mark system. A commerce mark applicant doesn’t have to have a transparent industrial technique for each merchandise lined, however using broad phrases wants consideration. SkyKick exhibits that if a technique of broad phrases is coupled with enforcement of the ensuing registration throughout that broad specification, this could possibly be dangerous religion. A method described within the Excessive Courtroom choice as Sky acquiring broad registrations as ‘purely a authorized weapon’ to make use of towards third events.

The UKIPO has but to concern steering about any change in process following this choice. It appears unlikely that current registrations would require modification (bar any third-party challenges). That will be a major activity and arguably disproportionate. Nevertheless, SkyKick ought to inform behaviour for future functions. Candidates ought to contemplate their motive for submitting for broad phrases and count on extra scrutiny on the examination stage the place an utility incorporates an eclectic record of products and companies. It stays to be seen if the UKIPO raises the difficulty of dangerous religion at this stage and the place it attracts the road at what constitutes a specification that’s too broad and what’s considered acceptable.

Any intention of acquiring an unique proper for functions apart from these falling inside the features of a commerce mark could open the appliance, and ensuing registration, to scrutiny. Based on the Supreme Courtroom choice, dangerous religion is prone to be discovered when the commerce mark system is just not used for its main objective: ‘no intention (conditional or in any other case) to make use of the mark as a badge of origin constitutes an abuse – that’s to say, a misuse of the system’.

This doesn’t imply broad phrases and assorted specs can’t be lined. It additionally doesn’t imply that an applicant can’t cowl phrases they don’t use the mark on.  This stays permitted, and certainly could be essential for encouraging rising companies to guard IP; nonetheless there must be a industrial rationale for the phrases lined. At paragraph 235 the choice states ‘a failure to supply any passable clarification could reinforce the inference and supply additional help for a discovering of dangerous religion’. It will be sensible to have a paper path documenting the industrial justification for looking for such broad safety.

When imposing rights primarily based on a broad specification, cautious consideration must be given to the products and companies relied upon. A reliance on all phrases lined in such a situation might open rights-holders as much as a nasty religion problem.

It stays to be seen if a brand new wave of challenges or counterclaims counting on the bottom of dangerous religion arises from this choice.

The details for commerce mark house owners to remove from this choice are:

1.    Broad specs are permitted, and registrations can’t be invalidated solely on the idea that they’re broad.

2.    Nevertheless, the place a broad time period has pure subcategories, with the examples of ‘pc applications’ and ‘pc companies’ offered within the choice, the choice of such broad phrases should be rigorously thought-about and justifiable, in any other case the subcategories must be used.

3.    The place such broad phrases are justifiable, it’s price additionally together with narrower sub-categories the place doable. This may be helpful to make sure that future challenges to third-party use or functions could be extra simply primarily based on subcategories and assist with the specification that could be retained if the registration is challenged.

4.    If a 3rd occasion challenges a specification that it considers to be too broad, and demonstrates that the proprietor had no established or meant use for its mark for items and companies lined, there could possibly be a discovering of dangerous religion and the specification could also be considerably narrowed by the court docket. This will have unintended penalties.

5.    If some phrases inside a specification are discovered to have been filed in dangerous religion, this doesn’t imply the entire registration was filed in dangerous religion and there could also be phrases that stay legitimate.

6.    Because the UKIPO was proactive in these proceedings it might not be stunning if steering have been issued as to modifications in apply regarding broad specs, more than likely on the examination stage however presumably overlaying post-registration challenges too.

Clearly, commerce mark house owners have to obtain sound recommendation to grasp the authorized and industrial publicity of submitting a broad or slender specification. Broad specs should still be justified, however the place such phrases are lined, there must be documented industrial justification for looking for such broad safety.

Charlotte Duly is head of brand name safety at Charles Russell Speechlys, London