Eli Lilly and Company Ltd v Human Genome Sciences Inc. (No 2)

JurisdictionEngland & Wales
JudgeMrs Justice Asplin
Judgment Date28 June 2013
Neutral Citation[2013] EWHC 1826 (Ch)
Docket NumberCase No: HC11C01968
CourtChancery Division
Date28 June 2013

[2013] EWHC 1826 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY

COMMUNITY TRADE MARK COURT

Rolls Building, 7 Rolls Building,

Fetter Lane, London, EC4A 1NL

Before:

Mrs Justice Asplin

Case No: HC11C01968

Between:
(1) British Sky Broadcasting Group Plc
(2) Sky IP International Limited
(3) British Sky Broadcasting Limited
(4) Sky International Ag
Claimants
and
(1) Microsoft Corporation
(2) Microsoft Luxembourg Sarl
Defendants

Iain Purvis QC and Brian Nicholson (instructed by SJ Berwin LLP) for the Claimants

Michael Bloch QC, Anna Carboni and Stuart Baran (instructed by Redd Solicitors LLP) for the Defendants

Hearing dates: 12, 15 – 19, 23 – 24 April 2013

Mrs Justice Asplin
1

This is an action for passing off and for infringement of two registered Community trade marks (CTMs) and two UK registered trade marks (UKTMs) for the mark 'SKY' by which the Claimants seek to prevent the Defendants from using "SkyDrive" as the name for their cloud storage service throughout the European Union.

2

By way of counterclaim the Defendants seek a declaration of partial invalidity in respect of all four SKY trade marks on the grounds of descriptiveness for cloud storage services and a declaration of invalidity in respect of CTM 411 in the light of what is alleged to have been its impermissible amendment.

3

The counterclaim for the revocation of UKTM 176 on the grounds of lack of genuine use in relation to "receipt, storage and provision of computerised business information data" is no longer pursued.

The Parties

4

There are four Claimants for reasons connected with the ownership and licensed use of the various marks in issue. They are British Sky Broadcasting Group plc, Sky IP International Limited, British Sky Broadcasting Limited and Sky International AG. The first Claimant, British Sky Broadcasting Group plc owns and ultimately controls the activities of the others and nothing turns for present purposes on any distinction between them. Accordingly, I shall refer to the Claimants together as 'Sky'.

5

The Defendants, Microsoft Corporation and Microsoft Luxembourg Sarl are members of the world-renowned computing and software group, Microsoft, which is responsible for the Windows operating system, the Microsoft Office suite and the Bing internet search engine, as well as SkyDrive. The First Defendant is the parent corporation and the Second Defendant sells and markets its products within Europe. Nothing turns on the distinction between them and I shall refer to them together as 'Microsoft'.

6

Sky is a provider of television and communication products and services including broadband in the United Kingdom. In 2001, it produced a set-top box (Sky+) which includes digital storage for recording and replaying content. In 2005–6, it started transmitting its content over the Internet, available both through home broadband and mobile devices which include smart phones, iPads and similar devices. From 2006, it has itself been an Internet service provider. By the end of 2010, its broadband service was being used by over 3 million households and by 2012, the number of households had increased to 4.1 million.

7

Over the years, Sky has adopted a whole series of trade marks, comprising the mark 'Sky' followed by a descriptive element. This practice has been followed not only for its channels such as Sky Movies and Sky Sports, but also for its platforms such as Sky+, Sky Digital, Sky Broadband and for its computer software running on such platforms such as Sky Go, Sky Mobile, Sky Bet and Sky Photos. Two typical presentations of Sky's sign are:

8

Between 2008 and 2011, Sky provided 'Sky Store & Share', which was an online storage service available for customers to upload and share their digital files and photos, and information about events and appointments. Sky Store & Share is no longer available to the public having been discontinued in December 2011.

The Acts complained of

9

Microsoft's SkyDrive product was launched in the UK, the USA and India in August 2007 and in the rest of the EU during 2008. The product provides users with an online storage facility for document files, photos and the like which they can then access from anywhere on the internet and make available for sharing with others. It formed part of the "Windows Live" online services alongside Hotmail email and the Messenger messaging service. Its logo was:

10

Microsoft's use of the SkyDrive sign has since developed into what Sky characterises as a major stand-alone brand. Since 2012, SkyDrive has started to feature as one of the main start-up tiles on the Defendants' Windows 8 operating system and SkyDrive apps are now available for platforms including Windows Desktops, Macs, iPhones, iPads, Android Phones, Windows Phones and the Xbox games machine.

11

By June 2011 when this action was commenced, SkyDrive had over 3 million users in the UK, nearly 20 million in the EU and 92 million worldwide. The SkyDrive sign is now in the following form:

12

Copies of the sign used in relation to SkyDrive in all of the forms in which it has appeared are set out in appendix 1 to this judgment. As I have already mentioned, Sky contends that Microsoft's use of the signs in all their forms in relation to cloud storage services has amounted to an infringement of their UKTMs and CTMs and amounts to passing off.

The Trade Marks

13

Sky relies on the following UK registered trade marks:

i) UK 2 415 829 ('UKTM 829') for the word 'SKY', was effective as of 6 March 2006. The mark is registered for a very large spectrum of goods and services. Although a wider variety were set out in the Particulars of Claim, Sky relied specifically, on the following:

"Class 9 (goods): 'computer software to enable searching of data; computer programs; computer software; computer software to enable connection to databases and the Internet; computer software supplied from the Internet.

Class 38 (services): 'communications by means of or aided by computers; transmission of text, messages, sound and/or pictures; computer aided transmission of messages or images; telecommunication services relating to the Internet; telecommunication of information (including web pages); provision of telecommunications links to computer databases and websites on the Internet."

ii) UK 2 302 176E ('UKTM 176') for the word 'SKY', effective as of 5 June 2002. This mark is also registered for a range of goods and services. However, for the purposes of this action, Sky relied on:

"Class 35 (services): 'receipt, storage and provision of computerized business information data."

14

In relation to UKTM 829, Microsoft challenges its validity on the basis that it is 'invalid insofar as [it is] held to cover goods and services pertaining to cloud storage', the assertion being that the mark is devoid of distinctive character or consists exclusively of descriptive matter. In relation to UKTM 176 the same challenge is made as to validity.

15

Sky also relies on the following Community Trade Marks (CTMs):

CTM 3,203,411

16

CTM 3 203 411 ('CTM 411') for the word 'SKY', effective date 30 April 2003, registered on 14 October 2008. This mark is registered in a series of classes. As originally granted, the specification listed all the goods and services in the class headings published by WIPO under the Nice Classification of Trade Marks for classes 9, 35, 38 and 42.

17

However, by a letter dated 12 April 2010, from Sky's solicitors to the Office for Harmonization in the Internal Market (OHIM) Sky requested the amendment of classes 9, 35, and 42 pursuant to Article 50 of Council Regulation No: 207/2009. Article 50 reads as follows:

"1. A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered.

2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register.

3. Surrender shall be entered only with the agreement of the proprietor…"

18

A Notification of Deficiency of what was termed an "Application to Register a Declaration of Partial Surrender" was issued by OHIM on 6 July 2010 in which it was stated that "the proposed amendments are not acceptable as they are considered as being a widening of the specification of the list of goods and services." Two months was given in which to submit any observations. In the event, an extension of that period was granted until 6 November 2010 and after the receipt of a further Notice of Deficiency dated 14 October 2010, a further extension was granted. Following telephone discussions with the examiner, Soledad Palacia Montilla, in order to understand the objections raised and further discussions with Thom Clarke, changes were made to the initial application for amendment in the form set out in a letter from Sky's solicitors to OHIM of 11 January 2011. The relevant passage in the letter is as follows:

"In our telephone discussion with Mr Clarke, we agreed that the following changes would be made (the changes insofar as they offer from the initial amendment request are indicated in capitals)

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; including data storage apparatus and instruments, software and data storage software, and software for video-conferencing, but excluding car...

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