Bad Faith and the SkyKick Ruling: Why Broad Specifications Are Now Dangerous

For years, trade mark applicants routinely filed for entire class headings or broad descriptions of goods and services — often covering products they had no intention of selling. The landmark SkyKick ruling by the Court of Justice of the European Union (CJEU) changed this practice permanently. Filing for goods or services without any genuine intention to use the mark in relation to them can now be classified as bad faith, rendering the registration partially or wholly invalid.

What Is Bad Faith in Trade Mark Law?

Bad faith is a ground for invalidating a trade mark registration. It refers to conduct by the applicant at the time of filing that falls short of the standards of acceptable commercial behaviour. Unlike other grounds for invalidity, bad faith is assessed subjectively — it looks at the applicant’s state of mind and intentions at the moment the application was made.

Bad faith can take many forms: filing to block a competitor, seeking to extract licensing fees without genuine use, or — as clarified by the SkyKick case — filing for goods and services the applicant never intended to use.

The SkyKick Case: What Happened

The case involved Sky plc, the media and telecommunications company, which held broad trade mark registrations covering a wide range of goods and services in multiple classes. SkyKick, a US-based cloud migration company, challenged Sky’s marks on the grounds that the specifications were excessively broad and filed without any intention of using the marks for many of the goods listed.

The CJEU ruled that while a lack of clarity or precision in the specification of goods and services is not itself a ground for invalidity, filing an application without any intention to use the mark in relation to the specified goods or services can constitute bad faith.

The Key Legal Principle

The SkyKick ruling established a critical distinction. It is not bad faith to file broadly out of commercial caution or uncertainty about future business plans. However, it is bad faith to file for goods or services where the applicant had no intention whatsoever of ever using the mark.

The test is whether the application, in whole or in part, was filed with no prospect of the mark being used for those goods or services. If so, the registration can be declared invalid to that extent.

Partial Invalidity: The Surgical Approach

One of the most important practical consequences of SkyKick is that bad faith can lead to partial invalidity. A registration is not necessarily struck down entirely. Instead, the invalid portions — the goods or services for which there was no genuine intention to use — are removed, while the remainder of the registration survives.

This makes the remedy proportionate. A company that genuinely uses its mark for software but also filed speculatively for agricultural machinery will lose the agricultural machinery coverage, not the entire registration.

Why This Matters for Filing Strategy

Before SkyKick, it was common practice — and widely considered prudent — to file for as many goods and services as possible to maximise the scope of protection. Applicants would routinely claim entire class headings (such as ""all goods in Class 9"") without any realistic plan to use the mark across all those goods.

That practice is now risky. A competitor who is blocked by an overly broad registration can challenge it on bad faith grounds, forcing the trade mark owner to justify their intention to use at the time of filing. If they cannot, the specification will be trimmed.

The UK Position Post-Brexit

Although SkyKick originated as a CJEU decision, the UK courts — particularly the High Court, which referred the case — applied the ruling directly. Post-Brexit, UK trade mark law has retained the principle that bad faith can arise from filing without genuine intention to use.

The UK’s own case law, including decisions by the UKIPO and the Appointed Person, continues to scrutinise overly broad specifications. Applicants filing UK marks should apply the same discipline as they would for an EUTM filing.

How to File Defensively Without Bad Faith

There is a difference between defensive breadth and speculative overreach. Applicants can still file for goods and services they reasonably anticipate using in the near future, even if use has not yet commenced. Key practices include:

• File for goods and services you genuinely intend to use or have concrete plans to offer.
• Include reasonable extensions of your core business — for example, a software company filing for training services and consultancy.
• Avoid filing for unrelated classes purely to block competitors in industries you will never enter.
• Document your commercial intentions at the time of filing in case a bad faith challenge arises later.

Common Mistakes

• Filing for entire class headings without review: Claiming “all goods in Class 9” without a realistic intention to use the mark across electronics, software, scientific instruments, and safety equipment.
• Assuming broad filings are risk-free: Post-SkyKick, an overly broad specification is an invitation for a targeted invalidity action.
• Confusing broad filing with strong protection: A registration covering goods you do not use provides no enforcement advantage — and can now be invalidated.
• Failing to document intent: Without contemporaneous evidence of business plans, defending a broad specification against a bad faith challenge becomes very difficult.

Key Takeaway

The SkyKick ruling has fundamentally changed the economics of trade mark filing. Broad, speculative specifications are no longer a cost-free defensive strategy — they are a liability that competitors can attack. Applicants should file with precision, covering goods and services they genuinely intend to use, and maintain records of their commercial plans. In the post-SkyKick landscape, quality of specification matters more than quantity.