An update regarding the trademark dispute

In a previous blog regarding Sky Vs SkyKick, we provided details of a trademark dispute between the satellite and digital TV broadcasting company Sky Group and a cloud software start-up company called SkyKick.  

Our previous blog dealt with the decisions made by both the High Court and the Court of Justice of the European Union (CJEU).

Court of Appeal decision

More recently, the matter has come before the Court of Appeal.  

Sky’s appeal was against the High Court’s finding that the trademarks were partially invalid. It also appealed against the dismissal of its action for passing off. SkyKick also appealed, contending for a more extensive restriction of the trademarks and challenging the High Court’s finding of infringement. 

The Court of Appeal allowed Sky’s appeal on validity but dismissed its appeal on passing off. The Court also dismissed SkyKick’s appeal. The reasons for this are as follows: 

1. In respect of the validity of Sky’s marks:

  • The Court of Appeal disagreed with the High Court’s conclusion that there was bad faith where a trademark applicant had no prospect of using the mark in relation to every conceivable sub-division of particular goods or services listed in the specification.  
  • The Court of Appeal held that the absence of any commercial strategy to use a mark for all goods or services within a category was not relevant when assessing bad faith. 
  • The Court of Appeal held that the High Court judge had failed to undertake a fresh assessment of bad faith by merely saying that Sky had applied for its trademarks purely as a legal weapon to use against third parties. The Court of Appeal said this was with the High Court Judge’s finding that the marks were only partially invalid. The Court of Appeal also held that it had not been open to the High Court Judge to hold that any of the goods or services in question were applied for in bad faith.  
  • The Court of Appeal held that Sky had not been able to identify its legitimate interest in applying for marks covering the contested goods and services.  
  • Finally, the Court of Appeal held that the High Court Judge had erred in relying on the conclusion that the declaration of intention to use contained in Sky’s trademark application was partly false. The Court of Appeal said that the declaration was not false as Sky had intended to use the marks in relation to each type of good or service covered.  

 2. In terms of trademark infringement, the Court of Appeal held that if the trademarks were validly registered in respect of the contested goods and services, they had been infringed because members of the public were likely to be confused that Sky and SkyKick were in some way associated with each other. The Court of Appeal held that as there was no appeal against that conclusion, it was unnecessary to consider any further issues relating to infringement. 

What does the Court of Appeal’s decision mean?

The Court of Appeal’s decision will provide some comfort to owners of UK trademark registrations that cover very broad specifications of goods and/or services. This is because the Court of Appeal rejected the High Court’s decision that Sky had deliberately obtained trademark protection in order to use this as a weapon against third parties.  

The Court of Appeal’s decision emphasises that the Courts will only make a finding of bad faith where the trademark applicant’s conduct is inconsistent with honest practices or acceptable commercial behaviour.  

More guidance on the doctrine of bad faith may be given as it has been reported that SkyKick intends to appeal to the Supreme Court.  

Here to help

We 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 our Intellectual Property Disputes Team on 0161 941 400 or you can email the Intellectual Property Disputes Team.