Intellectual property

SkyKick: High Court narrows Sky's trade mark protection and criticises the use of trade marks as a weapon

Published on 7th May 2020

What are the implications for brand owners?

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On 29 April 2020, the English High Court handed down its eagerly awaited judgment in Sky plc v SkyKick UK Ltd, holding that Sky has succeeded in its claim of infringement by SkyKick of its SKY trade marks. The judgment follows the Court of Justice of the EU's (CJEU) decision concerning the same case in January (click here for our Insight coverage including background to the UK proceedings).

The UK High Court's judgment is of immense significance to brand owners because:

  • The court has partially cancelled some of Sky's trade marks on the grounds that they had applied for them partly in bad faith. This follows the CJEU decision, which ruled that trade marks could be partially cancelled for those goods and services covered by the mark where the applicant had no intention to use the mark in relation to some of the goods and services covered.
  • However, this decision goes further than that of the CJEU because the UK court has ruled that broad terms in trade mark specifications can be cut down to specific goods and services for which there was intent to use.  Sky's coverage of "computer software" has accordingly been cut down to a more limited range of software.
  • It has been common practice to use very broad terms in trade mark specifications and many trade marks are probably now vulnerable to a claim that they have been partially filed in bad faith.
  • Brand owners should not lose trade mark protection for the goods and services for which they use their mark, but this decision will make it harder for them to enforce their rights against those using similar marks for other goods and services. We can expect claims of bad faith to become a common feature of trade mark disputes in the future.

The judgment in more detail

While Lord Justice Arnold found in favour of Sky on its infringement claim, he held that Sky had applied for its trade marks "pursuant to a deliberate strategy of seeking very broad protection of the trade marks regardless of whether it was commercially justified...with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely as a legal weapon against third parties...". Furthermore, he held that not only had Sky not intended to use its trade marks in relation to some of the goods and services covered by its specifications, but "there was no foreseeable prospect that [Sky] would ever intend to use the Trade Marks in relation to such goods and services".

He therefore held that Sky's registrations were partially invalid on the grounds that they had been filed in bad faith, and, importantly, that it was the task of the High Court to determine (in the absence of proposals from Sky) the extent to which the specifications of Sky's registrations should be reduced.

Included among the broad terms held to have been applied for in bad faith was "computer software", which Lord Justice Arnold decided was to be limited, as follows, so as to arrive at what he considered to be a fair specification:

“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”.

Crucially, Lord Justice Arnold made clear in his decision that while it was right that Sky's specification was to be narrowed to reflect the finding of bad faith, it was only to be narrowed to the extent of the bad faith proved, and no more. He went on to note that Sky's registrations should not necessarily be limited to the goods and services in respect of which Sky has actually used the trade marks, as this would ignore the fact that: (a) applicants may have justifiable commercial reasons for seeking to register trade marks for goods and services that may be offered under the mark in the future; and (b) applicants have a legitimate interest in seeking a modest penumbra of protection extending beyond the specific goods and services in relation to which they intend to use their mark.

Although the High Court held Sky's registrations to be partially invalid and limited Sky's protection accordingly, this did not change the overall result as Sky's registrations were deemed validly registered for "telecommunications services” and “electronic mail services”, in respect of which SkyKick had infringed Sky's registrations.

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* This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

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