The United Kingdom Supreme Court’s decision in SkyKick v Sky highlights a critical trademark risk: Registering a brand for an overly broad range of products and services without an intent to use it across all categories can constitute bad faith, potentially leading to loss of rights.
Much has been written about the decision’s impact on U.K. trademark law. But this ruling also creates new challenges for U.S. and global companies extending brand rights to the U.K. and European Union. By raising the bar on proving intent to use, the ruling disrupts the common strategy—especially for technology and life sciences brands—of filing broad registrations to protect future innovation and deter infringement. Below are key takeaways and best practices for brand owners to consider.
The Decision
Sky, a major media and telecom company, sued SkyKick, a cloud migration software provider, for trademark infringement. SkyKick counterclaimed, arguing that Sky’s trademark registrations were overly broad and filed in bad faith, particularly for broad terms such as “computer software.”
The court ruled that while broad claims such as “computer software" aren’t automatically bad faith, registrants must show a real plan to use the mark for the goods and services listed. If they can’t their registrations may be invalidated.
This ruling complicates global filing strategies, as most jurisdictions don’t require intent or proof of use at the time of filing. And in fast-moving industries like technology and life sciences—where product roadmaps evolve rapidly and infringement risks are especially high—it’s common to file broadly to protect future innovations and deter infringement. SkyKick increases the risk of this approach and emphasizes the need for a more tailored strategy.
Although the ruling applies to U.K. trademarks, it leaves open whether a similar standard could apply to E.U. trademark registrations, which protect a mark in all E.U. member nations (minus the U.K., post-Brexit) and historically have not required intent to use.
Best Practices for Brand Owners
- Tailor filing strategies to account for jurisdiction-specific rules, such as intent to use requirements. Brand owners should balance the risks of broad and narrow filings based on business plans, risk tolerance, and competitive landscape.
- Document intent at the time of filing, particularly when filing broader trademark applications, in case it is challenged later.
- Audit brand portfolios and consider proactively narrowing overbroad registrations that could be vulnerable to challenge.
- Be strategic with priority filings. When extending rights using the Madrid Protocol, consider narrowing U.K. designations in light of SkyKick.
- Assess M&A risks, particularly when acquiring U.K. or E.U. trademarks that may be vulnerable to challenge.
- Anticipate disputes. Brand owners enforcing rights in the UK and EU should prepare for counterclaims and be ready to defend the scope of their rights.
- Limit defensive or deterrence filings, as these now face greater risk of invalidation.
SkyKick is a significant development in international trademark law and reinforces the need for thoughtful and strategic filings, particularly for technology and life sciences companies seeking to protect their brands globally.
