Why charities need to review their trade mark registrations in light of recent developments

Think back to 1994. A year in which the Sony PlayStation is released in Japan, the 1994 FIFA World Cup is held in the US. Apple Computer Inc. releases its first Power Macintosh, and it was also the year which saw the introduction of the Trade Marks Act 1994 (TMA).

Historically, before the TMA was introduced, businesses were afforded very limited protection for trade marks (and modern trade marks were not protected such as, for example, the curved shape of the Coca-Cola botte). The TMA introduced a greater variety in marks and signs capable of registration, combined with wider infringement rights.

This change in the law saw a flurry of trade mark applications being made by established brands for trade marks which, before, would not have been allowed to proceed to registration. In an effort to protect their trade marks as widely as possible, a large number of these applications were made in a wide range of goods and services.

The decision in the case of Sky v SkyKick targets such wide applications. SkyKick has broadened the scope of bad faith in trade mark law, clarifying that overly expansive trade mark specifications can result in a finding of invalidity due to bad faith.

Background

The case was between Sky (the media and telecommunications company), and SkyKick (a tech company offering cloud management software). Sky alleged that SkyKick's application infringed on a number of Sky's trade marks.

SkyKick issued proceedings against Sky seeking a declaration of non-infringement in the IPEC. In response, Sky issued proceedings in the High Court.

The case proceeded in the High Court - Sky claimed trade mark infringement on the basis that the services offered by SkyKick overlapped with the services covered by the relevant trade mark registrations. SkyKick challenged the validity of Sky's marks, arguing that the goods and services were too broad and covering goods and services not provided by Sky.

The court had to decide two key things:

• Whether the broad wording could make the trade mark registration invalid.
• Whether applying for the trade marks across a very wide range of categories without the intention to use them amounts to bad faith, and if so, whether this affects the registrations, or just part of them.

The Court held that broad terms do not automatically make a trade mark invalid, but bad faith was different. If you file for goods and services with no genuine intention to use the mark, this would be considered bad faith. Therefore, Sky's registrations were held to be strategic (i.e. a legal weapon) rather than genuine. As a result, part of Sky's registrations were deemed invalid but the marks remained valid for core broadcasting services.

What does the decision mean for Charities?

Following the case of SkyKick, if trade marks are not genuinely being used for goods and services for which they were applied for, the risk is a counterclaim of invalidity. It is therefore important that Charities review the goods and services covered by the trade mark and ensure that they are being used. If not all goods and services are being used, charities may wish to consider narrowing their scope to protect against potential challenges.

The decision is not just theory – it is being applied in practice. The UKIPO has issued some guidance on the behaviour expected of anyone applying for a new trade mark following the SkyKick decision. Ultimately, applicants need to have an intention to use the trade mark in the goods and services applied for and be cautious about filing claims covering vast numbers of goods and services in large numbers of classes.

Trade mark examiners will now be expected to consider whether the specification of a particular mark is so broad that a bad faith objection should be raised. If they are taken to be of bad faith, an objection will be raised.

Of course, while charities should avoid filing for goods and services without genuine intention to use the mark, they should also carefully consider which goods and services are not covered by their registration. For example, if you have recently launched an app, is that included within your specification?

It is a delicate balance – ensuring your mark covers all intended goods and services without overreaching beyond genuine use.

Conclusion

Charities must heed the lessons from the SkyKick decision and consider adopting a more focused and intentional approach to trade mark filings to make sure it covers goods and services genuinely intended to be offered. On the same note, charities should ensure their goods and service specifications are comprehensive enough to cover both recent developments and any goods and/or services they expect to offer in the future.

In this way, charities can safeguard their brand assets while remaining compliant with the expectation of the UKIPO and the courts.

If you would like assistance with reviewing or updating your trade mark protection, our IP team would be happy to help guide you through the process.