UNITED KINGDOM: Width and Size of a Specification Can Be Indicative of Bad Faith

The Supreme Court of the United Kingdom has delivered a landmark ruling in proceedings concerning whether a UK trademark can be invalidated because the proprietor acted in bad faith by applying to register the mark for a very wide range of goods and/or services without any intention to use the mark for them all.

The Supreme Court held, in SkyKick UK Ltd and another (appellants) v. Sky Ltd and others (respondents) on November 13, 2024, that bad faith can be inferred from the width and size of a trademark specification and the use of broad categories of goods and services, making the registration vulnerable to partial invalidation for the goods and services tainted by the bad faith.

The Supreme Court held that the circumstances of the case will determine whether an inference of bad faith is drawn, including the nature of the goods and services compared with the size and nature of the applicant’s business and whether the applicant has a commercial justification for the wide specification or broad category which is consistent with the use of the mark as a badge of origin.

The Supreme Court confirmed that brand reputation alone will not justify registering a mark for goods and services that the applicant has no intention to provide.

The Court also held that an applicant does not have to have a commercial strategy to use its mark for every possible species of goods and services falling within the specification. However, a trademark application for a broad category of goods or services (for example, computer software) may be made partly in bad faith in so far as the broad description includes distinct subcategories of goods or services in relation to which the applicant never had any intention to use the mark.

This judgment will have a significant impact on strategies around the filing and enforcement of UK trademarks. Specifications will need to more closely reflect the applicant’s business, and counterclaims for invalidity in contentious proceedings may become more frequent.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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