SkyKick v Sky: The Importance Of Drafting Clear And Precise Trade Mark Specifications

Trade mark specifications set out the goods and/or services for which protection is sought under a trade mark registration. Applicants are required to submit a clear and precise specification as part of the trade mark application process.

Background

The dispute in this case significantly reshaped UK trade mark law, culminating in a Supreme Court ruling on the concept of bad faith in trade mark applications. The case centred on whether Sky had a genuine intention to use its marks across all goods and services listed—particularly broad terms like “computer software.”

Sky sued SkyKick in 2016 for trade mark infringement and passing off. SkyKick countered, alleging Sky’s registrations were made in bad faith. The High Court agreed in part, finding Sky lacked intent to use the marks for all specified goods, narrowing the scope of protection to reflect actual use.

The Court of Appeal reversed this, accepting that Sky’s broad filings could reflect legitimate commercial ambition. However, the Supreme Court reinstated the High Court’s view, confirming partial bad faith. It clarified that while broad specifications aren’t inherently dishonest, a lack of intent to use a mark at the time of filing can indicate bad faith.

Practical impact

In response to the SkyKick litigation, the UK Intellectual Property Office has issued updated guidance for trade mark applicants and examiners. Examiners are now required to assess whether a bad faith objection is appropriate at the examination stage when faced with overly broad specifications, based on the specific circumstances of each application.

Practitioners should ensure trade mark specifications reflect a genuine commercial intent and align with the applicant’s business plans. Broad or generic terms—like “computer software” or “clothing”—should be avoided unless clearly justified by relevant subcategories, as they may invite scrutiny or partial invalidation.

Applicants should be advised of the risks: broad filings may be rejected during examination or challenged post-registration on grounds of bad faith. Using specific, commercially relevant terms reduces these risks and strengthens the application.