Occasionally, an intellectual property case captures the attention of the whole industry. Perhaps it promises to resolve an apparent conflict, inconsistency, or provide clarity on a disputed point. When such a case comes around, the industry enters a state of anticipation that can almost amount to paralysis as cases related to the arguments at issue are paused until the all-important final judgement is delivered.   

And so we come to Sky vs SkyKick, the case that put bad faith in the spotlight. Concluded late in 2024, the case’s outcome continues to provoke comment and analysis in the UK and beyond. Fittingly, the INTA Trade Mark Administrators and Practitioners Conference in Berlin included a session on ‘Bad Faith in Trademark Filings’ moderated by Claire Lehr, Partner, Edwin Coe LLP, with speakers Oliver Morris of the UK IPO and Michael C Maier, Partner at German practice Nordemann.  Claire also led a lunch-and-learn table on the topic, which our Software Solutions & IP Specialist and CITMA paralegal Ann-Marie Higgins joined.

Overall, the consensus was that uncertainties remain around how best to advise clients aiming to avoid bad faith issues in a post-SkyKick world. To find out why, let’s look at the case.

Case Background and Overview:

In January 2016, SkyKick, a cloud management software and services provider, received a letter before claim alleging infringement of its registered trademarks. In response, SkyKick issued proceedings in the Intellectual Property Enterprise Court (IPEC) seeking a declaration of non-infringement.

Sky then initiated proceedings in the High Court alleging that SkyKick’s offer and supply of email migration and cloud storage products under the SkyKick brand constituted trade mark infringement and passing off. Sky used four EU-registered trade marks and one UK-registered trade mark as the basis for its arguments (the case started prior to the UK’s Brexit referendum).

SkyKick denied any likelihood of confusion among customers or any unfair advantage sought or gained. However, SkyKick also issued a counterclaim, that Sky had registered its marks in bad faith, because they covered goods and services that the company had no intention of using, and also in classes – notably “Computer Software” – where the company did intend to use its marks, but not in every good or service listed. This became a key point in the case.

The case was referred to the EU Court of Justice (CJEU) for clarification on bad faith. The CJEU determined that an application may be held to be in bad faith if the applicant intended it to undermine the interests of third parties or obtain an exclusive right for purposes outside the functions of a trade mark. The CJEU also determined that an application may be in bad faith in relation to certain goods and services within a broader classification.

As a result of this ruling, the High Court ordered that Sky’s goods and services description be revised to more closely describe its area of intended use.

The High Court’s judgement of bad faith was overturned in the Court of Appeal. The case then reached the Supreme Court.

At this point, it is notable that the parties agreed on a commercial settlement prior to the final judgement issued by the UK Supreme Court. However, the Comptroller-General of Patents, Designs and Trade Marks at the UK IPO believed it was important to gain clarity on bad faith, therefore the Court handed down its judgement.

The Supreme Court judgement confirmed the High Court judgement that the Sky marks were applied for in bad faith. The Supreme Court noted that Sky had originally “relied on the full range of goods and services for which each of the Sky marks was registered” and that  its analysis of the case “supported the argument that Sky had applied to register the marks in respect of a great range of goods and services they did not intend to sell or provide, and yet were prepared to deploy the full armoury of their trade mark rights against another trader.”

On the issue of infringement, the Supreme Court agreed with the Court of Appeal judgement that SkyKick’s Cloud Migration product did not infringe Sky’s trade marks, but that its Cloud Backup product did infringe.

UK IPO Guidance

Following the judgement, in June 2025, the UK IPO issued a Practice Amendment Notice(PAN) clarifying “the behaviour expected of trade mark applicants when filing specifications of goods and/or services”, and setting out what impact the judgement will have on IPO trade mark examiner practices when they are examining new applications.

The note emphasises that applicants must act in good faith, using the regime “for the manner and purpose that it is intended”, and that a good faith filing is unlikely to be achieved if there is no genuine intention to use the trade mark applied for in the classes – and sub-categories of those classes – applied for.

The practice note counsels against filing claims that cover “vast numbers of goods and services in large numbers of classes”. It advises applicants to consider whether broad terms like “Computer Software” or “Clothing” genuinely reflect intended use, or whether subcategories are more appropriate.

The key change from the trade mark examination perspective is that examiners will now routinely consider whether objections to applications should be made on the basis of bad faith when the specification is “manifestly and self-evidently broad.” As examples of this, at the INTA TMAP conference, the UK IPO provided details of a filing for a single classification, where the specification ran to 47 pages and the applicant gave no evidence of intention to use or current commercial use. This application was rejected as a filing made in bad faith.

Considerations for current and future filings

SkyKick vs Sky may be concluded, but the case has implications for future filing strategies, as the INTA TMAP conference session discussed.

The panel advised that when making a trade mark application, applicants should mitigate the risk of a bad faith objection by:

• Avoiding generic terms in favour of selecting specific subcategories within classification where you have a genuine commercial rationale for use.
• Keeping a record of internal business plans and marketing strategies that can prove genuine intent to use.
• Not relying on class headings alone. Be precise about what you are claiming.
• If there is uncertainty about future use in certain classes, consider narrowing the list to avoid risking partial invalidity – as happened to Sky – weakening your protection.  

The panel also warned that, post-Brexit, applicants should “potentially consider different specifications in the UK and EU”, as the Supreme Court judgement and subsequent PAN from the UK IPO point to the possibility of divergence between UK and EU law where the EU may be more lenient over broad category applications.

As commentators at the INTA TMAP meeting suggested, there is still uncertainty in this area that will only be resolved over time as the UK IPO’s examination practices reflect the changes and when new cases come to court. Should clients be advised to be highly specific, narrow, and detailed in their specifications to avoid bad faith objections, but risk not having the breadth of protection they might want? Or should clients continue with broader specifications, leaving the burden of proving there is no intention to use with a third party?

Certainly, with a great deal still to consider, it seems as though the SkyKick era will not be ending any time very soon!