Those involved in the technology world may be aware of the ongoing dispute between the well-known Sky Group (the satellite and digital TV broadcasting company) and a cloud software start-up company called SkyKick. The dispute centres on Sky’s claim that SkyKick had infringed its registered trademarks in relation to the mark SKY. SkyKick’s defence and counterclaim to the proceedings were:
- Sky’s trademarks should be declared partially invalid as the trademarks covered goods and services which were not specified with sufficient clarity and precision;
- Sky’s trademark applications had been made in bad faith.
Court of Justice of the European Union (CJEU)
The CJEU clarified that a trademark “registered for a range of goods and services designated in a manner which lacks clarity and precision is, in any event, capable of being protected only in respect of the goods and services for which it has been put to genuine us”. This does not, therefore, prevent a trademark applicant from applying the terms “goods and services” broadly in its application. It should, however, be noted that if the applicant is not ready to identify those goods and services for which the trademarks have been genuinely used, the risk is that a bad faith argument may have some legitimacy, as the High Court later found:
High Court Decision
Applying the CJEU’s decision, Judge Arnold found that SkyKick had infringed Sky’s trademarks and he quickly dismissed SkyKick’s counterclaim that Sky’s trademarks lacked clarity and precision. However, on the matter of bad faith, Judge Arnold did find that Sky had applied for its trademarks partially in bad faith as there was no “foreseeable prospect” that Sky would use certain of its trademarks for some of the goods and services specified in its application. This was deemed to have been a “deliberate strategy” by Sky of obtaining trademark protection to use “as a legal weapon against third parties”.
Regarding the term “computer software”, the Judge defined this broadly as “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”.
In providing this definition, the Judge looked further than Sky’s actual use of its trademarks on the basis that:
- Sky could obtain protection for goods and services which they may wish to use in the future; and
- Sky could have a “legitimate interest in seeking a modest penumbra of protection extending beyond the specific goods and services in relation to which use has been proved”.
As a result of this, when considering whether SkyKick had infringed Sky’s trademarks, Judge Arnold found that SkyKick’s email migration service was identical to Sky’s email services. Furthermore, as “telecommunication services” included telephone, broadband, Wi-Fi, email and instant messaging, the Judge found there was some similarity between SkyKick’s products and some of Sky’s telecommunication services (this didn’t include Sky’s email services).
Developments after the High Court’s decision
Following Judge Arnold’s decision in April 2020, SkyKick tried to reposition itself in the market as a business providing cloud backup services. Unsurprisingly, Sky was not happy with this development and the matter came back before Judge Arnold who delivered another decision (not final) in late July 2020.
Judge Arnold held that SkyKick’s new cloud backup services infringed Sky’s trademarks as they were identical or very similar to Sky’s specification for “computer services for accessing and retrieving audio, visual and/or audio-visual content and documents via a computer or computer network”. As such, the Judge held there was a likelihood that members of the public would be confused that Sky and SkyKick were in some way associated with each other.
Based on the Judge’s finding of infringement, Sky sought an injunction to restrain SkyKick from providing cloud backup services which were upheld despite Skykick’s objections. The door has however been left open to the parties to appeal and until further judgments are rendered on the case, there will remain a degree of uncertainty for brand owners on whether to draft trademark applications broadly or narrowly as far as the coverage of goods and services are concerned.
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Myerson have a specialist intellectual property disputes team that routinely advises on a broad range of disputes relating to trademarks along with other intellectual property disputes relating to copyright, patents, confidential information and data protection. The team is also highly skilled at advising on design rights and reputation management issues and are regularly instructed by clients from the technology, arts, media, textile and clothing sectors in the UK and internationally.
If you need advice on trademark or other intellectual property infringements, please do not hesitate to contact a member of the team today.
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