News & Insights

If you run a small or medium size business, you have to work hard to become an established brand and part of your business is likely to rely on a distinctive name and / or logo,  which makes you stand out in your market. If you then receive a legal letter notifying you that this name is breaching an existing trade mark, what are your options?

While such situations can be intimidating, particularly when dealing with large, well-known companies, there are avenues to challenge these claims. The recent case of SkyKick UK Ltd v Sky Ltd demonstrates that not all trade marks, even when registered are necessarily filed with good intentions. A trade mark must be genuinely used within the area of business for the goods and or services which it is applied for and registered. Companies are not permitted to register trade marks with the sole intent of blocking competitors or monopolising the market.

It is important to seek legal advice promptly when you receive such a letter so your solicitor can look at whether the other organisation might have registered the trade mark in bad faith, or whether there is another reason that it cannot be enforced, even if registered.

We look at this case in more detail, and how it may be able to help you if you find yourself on the receiving end of a claim for breach of trade mark.

What happened in the SkyKick UK v Sky Ltd case?

SkyKick claimed that Sky’s trade marks covered overly broad categories of goods and services with little intention of actual use in many of them.

However, SkyKick denied on all counts, and challenged the claim by Sky Ltd to these trade marks.

SkyKick were partly successful in their challenge. The UK Supreme Court found that Sky Ltd had applied for some of the SKY trade marks in bad faith, because they covered goods and services which in fact they had never intended to use. The court found that some of the trade marks registered were so wide in their scope that they could not be commercially justified. This meant that they were found to be invalid.

This is an interesting judgment and may be helpful for any business that files a trade mark application but receives a notification from the UKIPO that it is similar to an earlier registration or application, or receives any correspondence from an existing owner later on down the line threatening to oppose or bring infringement proceedings against them because it infringes their trade mark for the goods and / or services their mark is protected. The point is to check whether the earlier mark (whether an ongoing application or even registered) has been made in bad faith, because if it has you can use this as a defence and invalidate that mark and have it removed from the register in whole or in part, allowing your application to proceed.

How can a trade mark be challenged?

If someone believes you are infringing their trade mark, you could be subject to one or more of the following:

Cease and desist letter – anyone who believes you are trading using what they have already registered as a genuine trade mark will normally first issue you with a ‘cease and desist’ letter, telling you to stop using their trade mark. They may also ask for damages (compensation) from you for the unlawful use of the trade mark to date.  A ‘cease and desist’ letter will state what action may be taken if you do not comply and stop the use of the trade mark immediately.

Claim and injunction – if you do not comply with a ‘cease and desist’ letter, then  the trade mark owner may issue a claim against you in court. However, these can take a long time to get to trial and, in the meantime, the owner may apply for an emergency injunction to stop you from continuing the breach until the trial can be heard.  This is used to stop what they will consider to be a dilution of their trade mark and prevent the damage that would occur as a result.

Claim in court – ultimately an entity who believes you have infringed their trade mark may decide to bring their claim to court to adjudicate if you do not stop the alleged  infringement seeking legal remedies such as damages, account of profit, injunction, deliver up or destruction of goods, however these are subject to the nature of the claim.

If you trade via an online platform, you might also receive a notice from them.

Takedown notice – an online sales platform, such as eBay or Amazon, may be served with a ‘takedown notice’ by a company that claims you are breaching their trade mark. Sites such as Amazon have to preserve their own legal position, and so may take down your site on the basis of an application by someone claiming a trade mark breach which looks reasonable.

If you find yourself subject to one or more of the above possible actions taken by a third party, you may be able to challenge a claim even if the trade mark was registered, using the same principles set out in Sky v SkyKick – that their trade mark was registered in bad faith and therefore is not valid and bring their claim to an end. This is of course, only applicable if this is in fact what has happened.

If you believe that trade mark action against you is brought using a trade mark created in bad faith, it is vital that you take legal advice at an early stage as a solicitor will be able to assess if bad faith has occurred and use it as a defence early on and minimise you being dragged through the legal process. If you are dragged through to legal proceedings, and their application was made in bad faith, you could be entitled to claim damages, but if you are not successful, there may be financial and other consequences.

If all of the above is as a result of a claim by a trade mark owner that should not have been able to register that trade mark at all, due to bad faith, this can be challenged and ultimately rectified. However, as stated above, it is vital you act quickly as soon as you are made aware of a potential problem to minimise disruption to your business and reputation.

How can we help?

Our solicitors have many years of experience in trade marks, carrying out searches, registering  and challenging them. For further information and assistance, please contact our Intellectual Property team or if you have a dispute regarding trade marks or other IP issues, please contact our Dispute Resolution team.

This article is for general information only and does not constitute legal or professional advice. Please note that the law may have changed since this article was published.