After the CJEU’s decision now there is a final High Court judgment in the Sky v SkyKick case
After the CJEU’s ruling earlier this year (as discussed here), the Sky v Skykick case has now returned to the English High Court and Lord Justice Arnold on 29 April 2020 issued a final judgment in the case (see full text of the judgment here).
Although Sky’s trade marks were found to be partially invalid on the ground that they were applied for in bad faith, Sky was still ultimately successful in establishing infringement.
The Judgment
In light of the CJEU’s ruling, the Court held that:
- Sky had originally applied for its trade marks partly in bad faith, because they “did not intend to use the trade marks” when they applied for them in relation to some goods and services;
- Sky made the applications pursuant to a deliberate strategy of seeking very broad protection regardless of whether it was commercially justified; and
- Sky had applied for the trade marks “for purposes other than those falling within the functions of a trade mark, namely purely as a legal weapon against third parties”.
Accordingly, with respect the various claims of goods and services at his, his Honour ordered that the claims be limited as follows:
| Original claim | Limited claim |
| “computer software” in class 9 | “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” |
| “computer software supplied from the internet” in class 9 | “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” |
| “computer software and telecoms apparatus to enable connection to databases and the internet” | “computer software and telecoms apparatus to enable connection to databases of audio, visual and/or audiovisual content and documents; computer software and telecoms apparatus to enable connection to the internet” |
| “data storage” | “storage of audio, visual and/or audio-visual content and documents” |
| “internet portal services” | No limitation necessary |
| “computer services for accessing and retrieving information/data via a computer or computer network” in class 38 | “computer services for accessing and retrieving audio, visual and/or audio-visual content and documents via a computer or computer network” |
Despite the limitation of Sky’s trade marks, the remaining protection was sufficient for a finding that SkyKick had still infringed the marks. The fact that the trade marks are partially invalid on the grounds that they were applied for partly in bad faith did not affect this.
Implications
As this is the first direct application of the CJEU’s decision in Sky v SkyKick, it is positive for brand owners that despite the risks of partial invalidation it is apparent that any limitations will be applied by the Court in targeted manner, and infringement can still be established in such cases. However, the approach of different courts in the EU may differ and we expect to see further application of the bad faith principles in other EU national courts, especially in relation to software and related goods and services.
The way the bad faith arguments have played out does, however, cause concern for older registrations where a broad range of goods and services may have been claimed beyond core products and services. So this remains a live issue for future enforcement and litigation and is likely to be a focus in counter-claims and cancellation actions where a counterparty is seeking to find vulnerabilities in otherwise valid registrations.
The “limited claims” listed above are also helpful guidance on how to construct claims for goods and services in classes 9 and 38 going forward. References to software being “supplied as part of” another product or service, or software that serves a particular function or purpose seems to be the acceptable way forward. As these claims have been endorsed by an authoritative court (rather than a registry or examiner) they will carry significant weight.
By Arthur Artinian and Simon Casinader