The Sky’s the limit? Sky v SkyKick referred to CJEU (Brands & IP Newsnotes - issue 7)

Background

Sky issued proceedings against SkyKick UK Limited, claiming that use of the sign “SkyKick” for cloud-based management services infringed four of Sky’s trade marks for “Sky”. SkyKick denied infringement, and counterclaimed for a declaration that Sky’s marks were either wholly or partly invalid, on the basis that the specifications lacked clarity and precision and that the applications had been made in bad faith.

Decision

Were the marks infringed?

It was held that SkyKick would have infringed Sky’s marks, if Sky’s marks were valid (see below); the distinctive character of Sky’s marks coupled with identity in goods/services meant the average consumer would be likely to be confused. However there was no misrepresentation which would result in passing off.

Were the marks valid?

1. “Clear and precise”?

SkyKick gave the example of “computer software” being covered by Sky’s marks; such a term, they argued, was “hopelessly broad”. Whilst High Court Judge Arnold J accepted the argument that the term could be considered too broad, this was not the same as lacking in clarity and precision and so the CJEU would need to give its view.

2. Bad faith?

SkyKick argued that Sky had no intention of using its marks in relation to all of the goods and services covered; even Sky’s own witness was unable to give a reason for including goods such as “fuel additives for enhancing combustion of fuels” and “whips”. The question for Arnold J was whether this amounted to bad faith, and if so whether this required invalidation of the whole or merely part of the marks. Again this issue was referred to the CJEU for clarification.

Comment

This referral has potentially wide-ranging impact, with the possible result that a lack of intention to use a mark for some goods or services could result in the whole mark being invalidated. It may also require rights owners to re-think the use of terms such as “computer software” in specifications, and whether these need to be expanded upon in order to be sufficiently precise.

A link to the judgment is here.