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Sky is in fact the limit – High Court confirms SkyKick infringes Sky

5 May 2020

In the latest development in the SkyKick saga, the UK High Court has handed down its judgment, finding SkyKick liable for infringement of Sky’s trade marks.

Those following the case will be aware that the CJEU handed down its judgment earlier this year following a referral from the High Court on questions of the validity of broad specifications and bad faith. The CJEU ruled that a trade mark cannot be declared invalid on the ground that the terms of the specification lack clarity and precision, but that a trade mark application made without any intention to use the mark constitutes bad faith, if the applicant had the intention of undermining the interests of third parties or of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark.

On the case’s return to the High Court, Sky has succeeded in its infringement claim against SkyKick, though not without suffering some collateral damage, with several of its registrations having been found to be largely invalid.

Lord Justice Arnold had already held in his main judgment that Sky’s specifications included goods and services in respect of which Sky had no reasonable commercial rationale for seeking registration, and no intention to use its marks.  Thus, the High Court found that Sky had applied for its marks “purely as a legal weapon against third parties”.  Applying the guidance of the CJEU, the Court held that Sky’s registrations had been filed partly in bad faith, and Lord Justice Arnold therefore pared down Sky’s specifications to arrive at a fair level of protection.

Importantly, however, SkyKick had not alleged bad faith in relation to “telecommunications services” or “electronic mail services”.  SkyKick’s email migration service was identical to “electronic mail services”, and thus Sky’s remaining protection was sufficient for the Court to find SkyKick liable for infringement.

The High Court decision is the first direct application of the CJEU’s earlier judgment on bad faith and intention to use.  Of particular note are the comments on ‘computer software’.  Despite Sky’s use in relation to certain types of software, Lord Justice Arnold considered that bad faith had been proven insofar as Sky had applied for broad term ‘computer software’ without any commercial justification.  In the absence of any alternative proposal from Sky, Lord Justice Arnold limited the term as he saw fit.  In doing so, he noted that Sky should not be limited only to those goods in respect of which it had actually used its marks, but that a “modest penumbra of protection” may be justified.

In practice, it is unlikely that the decision will provide a significant disincentive for brand owners to continue to file broad specifications, though applicants may now think twice before covering “computer software” or other popular broad terms without any limitation.

Tania Clark
Trade Marks

If you require further information on anything covered in this briefing, please contact Tania Clark (tclark@withersrogers.com); +44 1926 310700) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP May 2020