Between two Skies

May 4, 2020, By

In a seminal update to current trade mark law, the Court of Justice of the European Union (CJEU) has recently issued its judgment in the long running case of Sky v Skykick which could have significant implications for trade mark practice in both the UK and EU.

By way of background, Skykick is a rapidly growing US company that provides global cloud management software for IT service providers. Sky is a household name which provides television and broadband services which will be familiar to the majority of our readers.

The issue

Sky owns a host of trade marks for the word “SKY” covering a broad spectrum of goods and services throughout the world. In proceedings that were originally brought before the UK High Court in 2016, Sky alleged that use of the name “Skykick” infringed four of its EU trade marks and one of its UK marks and that Skykick was also guilty of passing off (essentially taking unfair advantage of Sky’s reputation). Skykick in turn counterclaimed that Sky’s trade marks were so wide ranging as to effectively hamper competition and thus to have been made in bad faith.

The initial judgment

Mr Justice Arnold (the judge in the English proceedings) held that there was a likelihood for confusion between the two companies given the cross-over between goods and services being offered. However, he caveated that this would only translate into actual infringement of Sky’s marks if they were valid in the first place (i.e. having not been filed so broadly as to constitute bad faith). He subsequently referred the case to the CJEU for guidance on a number of issues.

The CJEU judgement

The CJEU was asked for guidance on the following issues:

1. Can a trade mark be revoked if its specification lacks clarity or precision?

2. If so, do general terms like “computer software” fall foul of the above?

3. Does it constitute bad faith to register a trademark without intention to use it?

In its decision dated 29 January 2020, the CJEU answered definitively ‘no’ in terms of questions 1 and 2. In question 3 meanwhile, the answer was ‘maybe’: dependant on whether the applicant intentionally wanted to undermine the legitimate interests of third parties.

The final ruling

The case was passed back to the English Court to determine and on 29 April 2020 it gave its ruling. In light of the CJEU judgement, the Court ruled that Sky had originally applied to register its trade marks in bad faith because it had tried to use them “purely as a legal weapon against third parties”. The court accordingly limited the specifications to much narrower terms which it judged they should have been to begin with. Nonetheless, luckily for Sky, these newly limited terms were still sufficient to find infringement on the part of Skykick.

Briffa comment

This case goes to show the importance of careful drafting in the selection of goods and services in your trade mark application from the outset. Whilst Sky was still able to achieve a finding of infringement, this comes at the end of a very long drawn out process which should hopefully be able to avoided by more tailored drafting in the future.

Here at Briffa, the team benefits from over 25 years’ experience filing in nearly every jurisdiction in the world and we are able to assist in all aspects of the trade mark process from initial filing to registration. If you need any further information in this regard please do feel free to get in contact with us on [email protected]

Written by Tom Synott, Solicitor

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