A haircut for broad trade mark specifications – Sky v SkyKick

The question of broad trade mark specifications has been the subject of a long-running dispute between media and entertainment group Sky and US-based cloud management service provider SkyKick. Those following the story will recall that the European court decided that “lack of clarity or precision” was not a basis for a full or partial revocation of a trade mark. (Many had expected that it would be, leaving large numbers of broadly drafted specifications at risk. We commented on the decision of European court here.)

The upshot of the European court’s decision was that a trade mark specification using a term like “computer software”, which includes a very wide range of different things, could not be challenged for being unclear or lacking precision. However, applying for trade marks with vague specifications or specifications including good or services unrelated to your business activity, could lead to full or partial revocation of the trade mark registration on the grounds of “bad faith”. For this to apply, the person attacking the registration would have to show:

• an intention to undermine the interests of third parties, in a manner inconsistent with honest practices or
• an intention to obtain an exclusive right for purposes other than those falling within the functions of a trade mark

Following the European court’s ruling the dispute returned to the UK for final resolution.

Was there “bad faith”?

The judge identified three types of “bad faith” behaviour on Sky’s part. These were:

1. specifications that included goods for which was no intention to use the marks at all (an example here is “bleaching preparations”)
2. specifications including categories of goods and services that were so broad that it would not be possible to use the marks across the whole category (such as “computer software”)
3. specifications intended to cover all goods and services in a particular class under the standard Nice Classification system. (Usual good practice is to include a subset of those products or services in a class for which you are using or intend to use the mark).

Trimming down the “computer software” specification

The presence of these types of “bad faith” activity meant that Sky’s trade mark registrations were exposed to a trimming back process. SkyKick’s argument that “computer software” should be cut out of the specifications altogether did not succeed – Sky’s activities had included  provision of some kinds of software. However, the judge was willing to specify in much greater detail what they could cover – for example, software relating to equipment and services relating to home entertainment and telecommunications.

Did SkyKick’s activity fall foul of Sky’s remaining protection?

Even after the trimming back process, there were still areas that were legitimately protected. Although the European court ruling gave the judge the task of cutting down trade mark specifications that were affected by “bad faith”, this did not mean cutting them back to the bare bones of the goods and services actually provided. Trade mark owners do have a legitimate interest in seeking “a modest penumbra of protection” around their core offering.

The remaining scope of protection included “electronic mail services”. SkyKick argued for a narrow reading of this term, but the judge concluded that it was (legitimately) broad enough to cover SkyKick’s services and so there was infringement.

Take away points

This case did not introduce the “nuclear option” of complete revocation of trade mark registrations where there was bad faith. That brought a sigh of relief from many brand-owners. However, it does encourage greater care in the future when drafting specifications. The safest course is to set out the products and services that the business genuinely plans to offer, plus a little more (those goods and services for which it may wish to use the mark in future) - the “modest penumbra”.

For those threatened with infringement, the message is less reassuring. Faced with an infringement claim by a powerful brand owner, the threatened business may have to go to the trouble and expense of proving that broadly specified registrations were applied for in bad faith, and ask for the specification to be cut back. There is little disincentive for brand-owners not to seek extensive protection.