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Sky v SkyKick: Court finds infringement of Sky's mark

Posted on 11 June 2020

In January, the Court of Justice issued its decision in Sky v SkyKick providing guidance on a number of issues relating to the scope of protection of registered trade marks. The High Court has now implemented the Court's decision and determined that, whilst certain aspects of Sky's specification should be narrowed down, SkyKick infringed Sky's trade mark. 

Summary of the CJEU decision

The CJEU's findings, following the reference from the High Court, included that:

  1. It is not possible to challenge a registered EU or national trade mark for lack of clarity or precision.  Terms like 'computer software' in a trade mark specification cannot therefore be challenged on this ground.
  2. There is no per se rule that a lack of intention to use a mark amounts to bad faith.  Bad faith may however be established where there is "objective, relevant and consistent indicia" which tends to show that the trade mark applicant intended, when filing its application, to undermine, in a manner inconsistent with honest practices, third parties' interests or to obtain, without targeting a specific party, an exclusive right for purposes other than those falling within the function of a trade mark.  This requires an assessment of the facts in each case, but an applicant will not be acting in bad faith simply because it had no economic activity corresponding to the goods/services applied for when filing the application.
  3. Where bad faith is established, it applies only to those goods/services to which the finding attaches, and not all the goods and services of the mark. 

High Court decision

Lord Justice Arnold – who was the trial judge - has now delivered his final judgment on validity and infringement subsequent to the CJEU's ruling.  In a short judgment, at least by this Judge's standards, Arnold LJ held that Sky had partly acted in bad faith by applying broadly for protection covering goods and services which the judge held Sky had no intention to use. As a result Arnold LJ narrowed certain aspects of the registrations which Sky relied upon in its infringement claim; in particular, the judge narrowed the term "computer software" to cover what he considered to be a fair degree of protection for Sky in light of the use it had made. It is an interesting aspect of this judgment that the judge took an approach very similar to that employed when tribunals are re-crafting trade mark specifications following a finding of partial non-use. He did so even though the marks in issue were not the subject of any non-use challenge.  

Although the judge narrowed certain elements of Sky's registration, he ultimately determined that that SkyKick – a business which offers email migration services - had infringed "at least" in relation to "electronic mail services".

Mishcon de Reya act for Sky in these proceedings

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