Sky Plc & Ors v SkyKick UK Ltd & Anor

Court of Justice of the European Union - 29 January 2020

Bonita Trimmer and Giles Parsons, Browne Jacobson

The Court of Justice for the European Union’s (CJEU) decision in SkyKick has been welcomed by brand owners. The decision says that using broad terms in the specification is not itself a ground for invalidity. On bad faith, the court’s language is more restrained than the advocate general’s had been. Registrations are in bad faith if they were filed with an intention of undermining third-party interests in a manner inconsistent with honest practices, or if the purposes the mark was applied for were not those falling within the functions of a trademark. However, this could still be used to challenge broad specifications. Finally, the UK’s requirement for a declaration of intention to use is compatible with EU law. Below, we set out the factual background, and then deal with these three issues in turn. We finally consider the broader developments from the case.