Cloudy Skies: An In-Depth Look at the Landmark Trade Mark Dispute Between Sky v SkyKick

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After 7 years of litigation, in June 2023, Sky v SkyKick reached the Supreme Court, raising fundamental questions about the scope of trademark protection and the concept of "bad faith" trademark registration.

While we continue to wait for a judgment from the Supreme Court, our Dispute Resolution solicitors explore the potential implications of this case for businesses that rely on intellectual property protection.

The case started in 2016 when media and telecoms giant Sky held a registered trade mark for "SKY" across a broad spectrum of goods and services.

This trade mark encompassed everything from telecommunication services and set-top boxes to financial services and software.

However, their dominance was challenged when SkyKick, a US-based company offering cloud-based email migration and storage solutions, entered the scene.

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Cloudy Skies An In depth Look at the Landmark Trade Mark Dispute Between Sky v SkyKick

Infringement and invalidity

Sky argued that SkyKick's use of "SKYKICK" for its services infringed upon its trademark rights.

They contended that the visual and phonetic similarities between the two marks could cause confusion among consumers in the marketplace. SkyKick, however, mounted a robust defence.

They not only denied infringement but also challenged the very validity of Sky's trademarks. SkyKick's central argument centred on the concept of "bad faith" registration.

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The intricacies of bad faith registration

SkyKick's core argument hinged on the notion that Sky's trademark registrations for "SKY" were obtained in bad faith.

This accusation stemmed from the breadth of Sky's trademark claims, encompassing numerous goods and services far removed from their core telecommunications business.

SkyKick asserted that Sky had no genuine intention of using the trademark for all the claimed categories.

They argued that Sky's motivation was to stifle competition by securing overly broad trademark protection.

This accusation resonated with the concept of bad faith registration, which, according to EU trade mark law, occurs when an applicant files a trade mark application for reasons other than genuine use, such as hindering the activities of competitors.

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Round 1: The High Court

As proceedings commenced before Brexit, the High Court could refer the matter to the Court of Justice of the EU (CJEU).

The initial trial at the High Court saw a mixed outcome. While the court found SkyKick to be infringing upon Sky's trademark, it also partially invalidated Sky's trademarks due to bad faith registration.

The CJEU stated that applying for trade marks without any intention to use the trademark in relation to the goods and services specified will be considered to have been registered in 'bad faith' and subject to invalidation.

This decision highlighted the court's concern over Sky's seemingly excessive trademark claims, suggesting they were not based on a genuine intention to use the mark for all the registered goods and services.

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Round 1 The High Court

Round 2: The Court of Appeal

When Sky appealed to the Court of Appeal, in a significant turn of events, the court overturned the High Court's finding of bad faith.

The court determined that Sky's broad trademark registration strategy did not automatically constitute bad faith and could be justified by Sky's substantial business interests in the computer software sector, even if not directly linked to their core telecommunications offerings.

This decision emphasised the need for courts to consider the broader commercial context when evaluating claims of bad faith registration.

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The Final Round: The Supreme Court

SkyKick remained determined to have the bad faith registration issue definitively addressed, so they took the case to the highest court possible: the UK Supreme Court.

This final step in the legal saga promises to provide a definitive answer on whether Sky's trademark registrations were indeed in bad faith.

We are still awaiting a judgment from the Supreme Court, but this case's journey through the lower courts offers valuable insights into the legal considerations surrounding trade mark scope and bad faith.

The uncertainties that remain in this area of law highlight the importance of seeking specialist legal advice when contemplating registering a trademark and protecting your intellectual property in general.

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Contact Our Dispute Resolution Solicitors

If you have any questions or would like more information regarding registering a trademark and protecting your intellectual property in general get in touch with our Dispute Resolution Solicitors on:

01619414000