SkyKick UK Ltd and Another v Sky Ltd and Others

Why It Matters

The ruling narrows the scope of bad‑faith trademark claims, compelling companies to show genuine commercial intent before registering EU marks and limiting reliance on domain redirects for brand protection.

Key Takeaways

• Intervenor owned targetventures.com since 2002, used as redirect
• Applicant claimed EU venture activity from 2013, later than intervenor
• Court found trademark filing lacked intent to indicate origin
• Domain redirects alone insufficient to constitute trademark use
• Bad‑faith assessment hinges on objective evidence of commercial purpose

Summary

The UK Court of Appeal examined a trademark dispute between Target Partners GmbH, the proprietor of the domain names targetventures.com and targetventures.de, and Target Ventures Group, a BVI‑registered venture capital fund that began using the “Target Ventures” sign in the EU after 2012. The case centered on whether the intervenor’s 2015 EU trademark application for the contested mark was filed in bad faith, given its prior use of the domains solely as redirects to its main website, targetpartners.de.

Key facts reveal that the intervenor had owned the domains since 2002 and used them only to point visitors to its primary brand, while the applicant asserted commercial activity in the EU from late 2013 onward. After a cease‑and‑desist letter and an aborted injunction, the applicant sought invalidation of the trademark on bad‑faith grounds. The appeal board, however, interpreted “bad faith” narrowly, emphasizing the need for a dishonest intent to obtain exclusive rights beyond the essential function of a trademark—signalling origin.

The judgment quoted established case law, noting that “bad faith presupposes a dishonest state of mind” and that intent to protect a pre‑existing mark without genuine use for origin indication can constitute bad faith. It also highlighted that a domain name used merely as a redirect does not amount to trademark use in the commercial sense, diverging from earlier EU decisions such as Sky, Cotton, and Mitsubishi.

The decision clarifies that EU trademark applicants must demonstrate a bona‑fide intention to use the mark to identify the source of goods or services. Purely defensive filings aimed at preventing confusion, especially when the mark functions only as a web redirect, risk being deemed bad‑faith. This sets a higher evidentiary bar for venture‑capital firms and other entities seeking to protect brand elements through trademark registration.

Original Description

SkyKick UK Ltd and another (Appellants) v Sky Ltd and others (Respondents)

UKSC/2021/0181

https://www.supremecourt.uk/cases/uksc-2021-0181.html

Hearing date: 29 June 2023

Session: Afternoon session [Session 4 of 4]

Judgment date: 13 November 2024

Neutral citation: [2024] UKSC 36