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SKY v SKYKICK: Part 2 – The Clouds Part…

by | May 13, 2020

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Following the CJEU greatly anticipated judgement to questions raised to it, the UK High Court has now issued Lord Justice Arnold’s concluding decision, in the Sky v SkyKick case.

 

As reported previously, Justice Arnold had requested the CJEU provide clarity on a number of pertinent issues to the case; namely, the legitimacy of wide-reaching specifications, and the associated issue of ‘bad faith’ being pleaded in Trade Mark invalidation proceedings.

 

Now armed with the CJEU’s judgement, Justice Arnold’s ruling provides brand owners and practitioners with well-drawn conclusions, and strategic guidance.

 

Application of CJEU Judgment

 

The High Court mostly followed the CJEU judgment:

 

  • Confirming “Trade Marks cannot be declared wholly or partly invalid on the ground that their specifications are lacking in clarity or precision” [1]; and

 

  • “Trade Marks can only be declared invalid in relation to those goods and/or services in respect of which the Court finds that the applications were made in bad faith, and not totally invalid” [2].

 

  • However, Sky had applied for its Trade Marks “with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely purely as a legal weapon against third parties” [3]. Thus, limitations were applied to most of the relied upon goods and services, these being so broad Sky could not conceivably be using their Trade Marks to the full breadth of what these terms entail.

 

  • Extraneous to the CJEU judgment, Justice Arnold supplied the limitation wording himself in absence of Sky providing their own.

 

  • Limitations aside, Skykick were still found to have infringed Sky’s earlier rights. Justice Arnold concluded, “[t]he fact that [Sky’s] Trade Marks are partially invalid on the ground that they were applied for partly in bad faith does not affect [the finding of infringement]” [4].

 

Conclusion

 

Foremost, it is worth stressing that a finding of bad faith is not concluded lightly. In the context of Sky v SkyKick, it had to be demonstrated that Sky “had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark” [5]. Justice Arnold concluded these criteria were met. Sky had included terms that could not be conceivably supplied, in full, ‘in the course of trade’. The decision in Sky v SkyKick leaves us with a few points of particular note:

 

  • Where broad terms are used, a specification drafted defensively could now be vulnerable to an invalidation action. However, brand owners need not panic in that it cannot be assumed that Registrations will be invalidated in their entirety, even where an invalidation action succeeds.

 

  • When drafting a specification, use of broad terms such as “computer software”, should not be included without limitation as to the specific purpose that the software will be put to. On the basis of the agreed wording of Sky’s limitations, we now at least have Court-approved wording for certain broad terms. For example, “computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service”.

 

  • Justice Arnold resorted to limiting Sky’s specifications because they had not proposed any wording as a fall-back position. In future invalidation proceedings, it may be worth Applicants, or their counsel, devising their own fall-back wording, lest the Court’s wording be imposed upon them.

 

Whilst the conclusion of Sky v Skykick has not met the initial expectations, our previous advice remains current:

 

  • Avoid extending protection beyond the list of goods and services that are realistically likely to be provided, when filing a new trade mark application.

 

  • Avoid the temptation of filing for a list of speculative goods and services, that may be introduced at a future date, simply as a way of gaining ‘more value’ out of an application. Ultimately, instructing a second application, if and when use expands to other areas, will be far more useful and cost effective, than fighting an invalidation action that could result in having goods/services struck through.

 

  • Do contact us should you require advice on how to best protect your Trade Marks. As always, our highly experienced team of Attorneys will be pleased to advise further, and share their expertise in the drafting of an appropriate specification.

 

Bibliography

[1] Sky Plc & Ors v Skykick UK Ltd & Anor [2020] EWHC 990 (Ch) (29 April 2020). Paragraph 12.

[2] Sky v Skykick. Paragraph 13.

[3] Sky v Skykick. Paragraph 21.

[4] Sky v Skykick. Paragraph 62.

[5] Sky v Skykick. Paragraph 11.