Skykick liable for infringement of Sky’s trade mark registrations even after they are held to be partially invalid

Posted: 06/05/2020

The High Court of England and Wales has now issued its judgment in the case of Sky v SkyKick following the guidance handed down by the Court of Justice of the European Union (CJEU).

To recap, in 2018 Sky brought trade mark infringement and passing off proceedings in the High Court against Skykick, the US cloud management and email migration software specialist. Mr Justice Arnold sought guidance from the CJEU on a series of questions regarding the validity of Sky’s registrations. 

Applying the CJEU’s guidance, Mr Justice Arnold has held as follows:

• As he had previously found at trial that Sky had applied for its registrations "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..." and made a partly false section 32(3)declaration of intention to use, he pared down Sky's registrations to achieve a fair level of protection.
• However, SkyKick did not allege that Sky’s trade mark registrations covering "telecommunications services" and "electronic mail services" were applied for in bad faith. As a result, these terms survived unamended.
• Even though Sky's registrations were pared down, this did not alter the final result. SkyKick's email migration service was held to be identical to "electronic mail services", and similar to "telecommunications services", thereby infringing Sky’s registrations.
• As Sky’s claim at trial was based on an abbreviated list of eight goods/services that were closest to SkyKick's activities, Mr Justice Arnold did not have to consider whether Sky had applied for goods such as "whips” or "bleaching preparations" in bad faith.

Advice for brand owners

In practice, and in the knowledge that bad faith registrations are partially cancellable, it is unlikely that the decision will deter brand owners from continuing to file broad specifications and ever-greening dormant brands.

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