High Court ruling confirms SkyKick infringed Sky’s trade marks

Europe

On 29 April 2020, Lord Justice Arnold handed down his judgment in the High Court infringement proceedings in Sky Plc v Skykick UK Ltd [2020] EWHC 990 (Ch).  The decision applies the CJEU’s guidance on the clarity and precision requirements for trade mark specifications and the scope of bad faith, as set out in the Court’s judgment in Case C-371/18. A full commentary on the CJEU’s decision is in our earlier Law-Now article.  

The High Court decision confirms that SkyKick infringed Sky’s trade marks in so far as the marks are registered for “electronic mail services”. 

Background

This is the latest decision in proceedings involving household name Sky (Sky Plc and Sky International AG) and SkyKick Inc, a cloud migration IT company. Sky brought proceedings against SkyKick in 2016, alleging trade mark infringement and passing off in connection with SkyKick’s use of SKY-formative marks. 

At trial, Sky claimed infringement of a variety of SKY trade marks covering the goods and services listed below, pursuant to Article 9(2)(b) of the EU Trade Mark Regulation and Article 10(2)(b) of the EU Trade Mark Directive:

i) computer software (Class 9);

ii) computer software supplied from the internet (Class 9);

iii) computer software and telecoms apparatus to enable connection to databases and the internet (Class 9);

iv) data storage (Class 9);

v) telecommunications services (Class 38);

vi) electronic mail services (Class 38);

vii) internet portal services (Class 38); and

viii) computer services for accessing and retrieving information/data via a computer or computer network (Class 38).

SkyKick counterclaimed on the basis that the trade marks relied upon by Sky were wholly or partly invalidly registered on the grounds that (i) the specifications of goods and services lacked clarity and precision and (ii) the applications were made in bad faith. 

In 2018, Mr Justice Arnold (as he then was) referred several questions to the CJEU requesting guidance on the requirement for clarity and precision in trade mark specifications and the extent to which trade mark registrations can be invalidated for bad faith. 

High Court Decision

On 29 April 2020, the High Court held that it is clear from the CJEU’s ruling that Sky’s trade marks cannot be declared wholly or partly invalid on the ground that their specifications are lacking in clarity or precision. The Court therefore dismissed this part of SkyKick’s counterclaim.

This left SkyKick’s bad faith counterclaim. SkyKick accepted that, in light of the CJEU’s ruling, it was clear that Sky’s trade marks could not be declared wholly invalid on the basis of bad faith. There was only scope for the registrations to be declared partially invalid, i.e. in relation to those goods and/or services in respect of which it could be proven that the applications were made in bad faith. 

The parties disputed whether the CJEU’s ruling would lead to Sky’s trade marks being declared invalid at all and, if so, the extent to which the registrations should be cut back on the basis of bad faith.

SkyKick did not initially allege that Sky’s marks had been filed in bad faith in respect of the terms “telecommunications services” and “electronic mail services”. Although SkyKick attempted to amend its pleadings in this respect, Arnold LJ refused and so Sky’s trade marks remain validly registered for both of these terms (which ultimately led to the finding of infringement).

Arnold LJ did assess whether the CJEU’s ruling on bad faith meant that Sky’s registrations were invalid in respect of the other terms listed above. Referring back to his initial findings of fact, Arnold LJ concluded that Sky’s applications were partially filed in bad faith. Although SkyKick argued for certain terms (e.g. software) to be completely deleted from Sky’s specifications, or pared back to Sky’s actual use, Arnold LJ held that this would be inappropriate in the context of a bad faith (rather than non-use) claim. Arnold LJ held at paragraph 28 of the decision that:

“It is well established that trade mark proprietors have a legitimate interest in seeking protection in respect of goods or services in relation to which they may wish to use the trade mark in question in future. Furthermore, as the non-use cases show, even in that context proprietors also have a legitimate interest in seeking a modest penumbra of protection extending beyond the specific goods and services in relation to which use had been proved (but not to distinct categories or subcategories of goods and services).”

This recognises that an applicant may have commercial justification in seeking protection for goods and services which it may wish to offer under the mark in future, and in seeking a "modest penumbra of protection" extending beyond this.  As a result, Arnold LJ left the term “internet portal services” unchanged, but declared various terms in Sky’s specifications partially invalid, proposing the more limited terms set out in the table below:

Original term

Revised term

computer software

computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service; computer software supplied as part of or in connection with any telecommunications apparatus or service; electronic calendar software; application software for accessing audio, visual and/or audio-visual content via mobile telephones and/or tablet computers; games software

computer software supplied from the internet

computer software and telecoms apparatus to enable connection to databases of audio, visual and/or audiovisual content and documents; computer software and telecoms apparatus to enable connection to the internet

data storage

storage of audio, visual and/or audio-visual content and documents

computer services for accessing and retrieving information/data via a computer or computer network

computer services for accessing and retrieving audio, visual and/or audio-visual content and documents via a computer or computer network

The judgment does not deal with any other terms in Sky’s trade mark specifications as the infringement claim had been limited to the eight terms listed above.

Trade Mark Infringement

Notwithstanding the High Court’s decision to pare back certain terms in Sky’s specifications, Sky’s trade marks remain validly registered for inter alia “electronic mail services”. The Court therefore held that SkyKick have infringed Sky’s trade marks at least in so far as SkyKick have used the signs complained of in relation to their email migration service, which had already been held to be identical to e-mail services.