Skykick v Sky – what has changed in practice

Following the Supreme Court’s judgment in SkyKick v Sky in December 2024, the UK Intellectual Property Office issued updated guidance for trade mark applicants (Practice Amendment Notice 1/25, published on 27 June 2025). This article examines the resulting changes in practice and considers their implications for trade mark owners.

To provide some background, Sky, a major media and telecommunications company, filed infringement and passing off proceedings against SkyKick, a cloud management software provider. Sky relied on registered trade marks covering a wide range of goods and services. Skykick, by way of counterclaim (amongst other lines of defence), challenged the validity of these registrations on the basis that the marks had been applied for in bad faith, arguing that Sky had no genuine intention to use the marks across all of the claimed goods and services (which included goods such as ‘whips’). 

While Skykick was found to be infringing, the Supreme Court also held that Sky’s registrations were partially invalid on the grounds of bad faith because Sky had applied for and secured registrations across a wide range of goods and services that Sky never had the intention of selling or providing.

What it means for trade mark applications 

Following this decision, the UK IPO may raise a bad faith objection upon the examination of a UK trade mark application if the Examiner considers the application to be overly broad. This will be done on a case-by-case basis, however, the UK IPO have outlined the following automatic triggers to bad faith objections: 

• Specifications covering all 45 classes of goods and services; and
• specifications covering all goods in Class 9 (owing to the range of goods in Class 9 being particularly broad).

In practice, we have not found there to be a significant increase in the number of bad faith objections raised by the UK IPO. 

To avoid bad faith objections being raised, applicants should only include within a trade mark application the goods and services for which they genuinely intend to use the mark and review very long specifications considering whether they “represent fair and reasonable claims” for their business. Note that there is no need for applicants to have used the trade mark for the claimed goods and services prior to filing. 

Applicants should be specific when drafting their specification of goods and services. While broad specifications are not automatically invalid, they may invite scrutiny and potential challenges. Further consideration should be given to whether broad terms such as “computer software” or “clothing” should be narrowed to sub-categories to reflect the true intended use of the mark, despite the UK IPO not automatically raising objections to these terms. The use of class headings should also be reviewed. 

Whilst an applicant is not required to know or indicate the precise use that will be made of a mark when it is filed or has been examined, it would be wise to make note of the commercial rationale behind the scope of an application, particularly if the specification covers an extensive range of goods and services. This will prepare applicants for defending any potential challenges raised by either the UK IPO at examination stage or third parties in opposition or infringement proceedings. 

What it means for registered trade mark owners 

Trade mark owners should review their current trade mark portfolios and consider if their existing trade mark applications or registrations are overly broad and risk inviting bad faith claims. If so, these should be narrowed in line with the current and intended offering of the business. 

If a trade mark owner is initiating infringement proceedings, consideration should be given to relying on overly broad specifications. We are likely to see a rise in the number of bad faith counterclaims raised based on a lack of a genuine intention to use. Following the decision in Skykick v Sky, these claims are more likely to successfully invalidate parts of the registration if no genuine intent to use can be determined.

Interpretation of specifications

The SkyKick decision is now frequently cited by the UK IPO in opposition proceedings when determining a fair specification and interpreting the meaning of a specification when comparing goods and services. Where a specification lacks clarity or precision, its interpretation will be confined to the core of its possible meanings and will not be construed broadly. If a specification is ambiguous, it will be limited to the goods and services that are clearly encompassed by the wording. In circumstances where the wording of a specification is so unclear as to be incapable of interpretation, the relevant terms may be disregarded altogether; however, it is recognised that this approach is likely to be adopted only in rare cases. This further underscores the importance of careful drafting, specificity, and close attention to the ordinary meaning of terms used in trade mark specifications.

Further impacts of the decision

The decision should make it more difficult for trade mark owners to obtain and use trade mark registrations as legal weapons against third parties. There is a five-year period from when a trade mark registers in which there is no requirement to prove use of the mark in order to rely on that mark in opposition or infringement proceedings. This period is intended to allow businesses time to set up and start use of their marks. However, this period can be abused by applicants gaining registered protection for broad ranges of goods and services that they never had the intention of providing and using these registrations to stop third parties from entering the market under the same or similar marks. The decision in Skykick v Sky should act to stop this practice.