Sky Plc v Skykick UK Ltd: Sky’s trademarks partly invalid for bad faith, but SkyKick still infringed

What happened

Sky holds a large portfolio of trademarks covering, among other things, "computer software", telecoms and electronic mail services. It sued SkyKick, a provider of cloud migration software, for infringement. SkyKick argued the registrations were invalid, partly because the wording was too vague, and partly because Sky had applied for protection across categories it never genuinely intended to use, which SkyKick said amounted to bad faith. The High Court sent key questions to the Court of Justice of the EU, which ruled in January 2020 that vague wording alone doesn't invalidate a trademark, but applying without any real intention to use it can count as bad faith.

What did the court decide in Sky v Skykick UK?

Applying the CJEU's answers, the judge found Sky had applied for its trademarks partly in bad faith, as part of a deliberate strategy to claim protection far wider than it intended to use. The judge declared the marks partially invalid for terms such as "computer software", narrowing the wording to reflect what Sky actually used or planned to use. Lack of clarity or precision in wording was not, on its own, a ground for invalidity. Because SkyKick had not challenged the "electronic mail services" wording on bad faith grounds, that part of the registration stayed fully valid, and the court held SkyKick infringed it by offering an identical email migration service.

What we learned from this

• What I'd take from this is that a trademark registration can be only partly sound. Sky still won on infringement for email services, even though other parts of its registration were cut back for bad faith.
• If you're filing a trademark application, think about whether the specification matches goods or services you actually supply or genuinely plan to supply, not just the widest category you can think of.
• Vague wording in a specification is not, by itself, a reason a trademark will be struck out. It's the absence of any real intention to use it that creates risk.
• Challenging a competitor's trademark on bad faith grounds has to be done specification by specification. SkyKick's win on software terms didn't help it on email services, which it hadn't challenged the same way.

Things to be aware of

The businesses involved

What happened next

• The dispute continued through the Court of Appeal and on to the UK Supreme Court, which in November 2024 ruled on the bad faith issues raised by SkyKick's challenge to Sky's trademarks.Source: Hogan Lovells Cadwalader, November 2024
• Following the Supreme Court's 2024 ruling, the UK Intellectual Property Office issued updated guidance for trademark applicants on how bad faith and overly broad specifications will be assessed.Source: Gov, June 2025
• Commentators noted that English courts have since begun applying the Supreme Court's approach by trimming overly broad trademark specifications in other cases.Source: The Global Legal Post, September 2025

What others said about it

• Practical Law noted the High Court limited the specification of goods and services in Sky's EU and UK trademarks following the CJEU's guidance on bad faith.Source: Practical Law (Thomson Reuters), April 2020