Sky Ltd (Formerly Sky Plc) v Skykick UK Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold |
| Judgment Date | 02 July 2020 |
| Neutral Citation | [2020] EWHC 1735 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC-2016-001587 |
| Date | 02 July 2020 |
[2020] EWHC 1735 (Ch)
Lord Justice Arnold
Case No: HC-2016-001587
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
Rolls Building
Fetter Lane, London, EC4A 1NL
Geoffrey Hobbs QC and Philip Roberts QC (instructed by Mishcon de Reya LLP) for the Claimants
Simon Malynicz QC, Tom Hickman QC and Stuart Baran (instructed by Fieldfisher LLP) for the Defendants
Hearing date: 19 June 2020
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
On 6 February 2018 I handed down my judgment following the trial of these proceedings ( [2018] EWHC 155 (Ch), [2018] RPC 5, “the Main Judgment”). For the reasons given in that judgment, I concluded that it was necessary to refer five questions to the Court of Justice of the European Union in order to resolve some of the issues between the parties, although I was able to determine a number of other issues. On 27 April 2018 I handed down a second judgment dealing with certain matters arising out of the Main Judgment ( [2018] EWHC 943 (Ch), [2018] RPC 12, “the Second Judgment”), and I made the order for the reference. On 29 January 2020 the CJEU handed down its judgment on the reference in Case C-371/18 ([EU:C:2020:45], [2020] ETMR 24). On 29 April 2020 I handed down a third judgment applying the rulings given by the CJEU to the facts of the case ( [2020] EWHC 990 (Ch), “the Third Judgment”).
It is now necessary for me to determine a number of issues between the parties as to the appropriate orders to be made as a consequence of my previous judgments. In order to shorten this judgment, I will assume that the reader is familiar with the Main Judgment, the Second Judgment and the Third Judgment. I will continue to use the same defined terms as in those judgments.
Before proceeding further, I should record that, by letter dated 30 April 2020, Sky formally withdrew their infringement claim save in so far as it was based on the Selected Goods and Services. Accordingly, as indicated in the Third Judgment at [35], I shall make no order on SkyKick's counterclaim for a declaration of invalidity in respect of the other goods and services.
Infringement by Cloud Backup
I concluded in the Third Judgment at [39] that SkyKick had infringed the Trade Marks “at least in so far as SkyKick have used the signs complained of in relation to their email migration service [Cloud Migration] and in so far as the Trade Marks are registered in relation to ‘electronic mail services’”. I went on at [42] to express the view that that conclusion was “for practical purposes, determinative of the dispute between the parties.” I nevertheless went on at [43]–[60] to consider Sky's infringement case based on the registrations of the Trade Marks for “telecommunications services” and concluded, in essence, that this added nothing to the case based on “electronic mail services”. At [61] I concluded that the case based on the remainder of the Selected Goods and Services again added nothing.
It is clear from the issues between the parties which have subsequently arisen for decision that what I said at [42] was a misconception, or at least over-optimistic. Whereas Sky approached the hearing on the footing that “at least” meant just that, SkyKick approached the hearing on the footing that the remainder of Sky's infringement claim had been dismissed. This had significant implications for the parties' respective cases with respect to, in particular, Sky's claim for an injunction and the incidence of costs.
In those circumstances it is now clear that it is necessary for me to determine whether or not SkyKick have infringed the Trade Marks in so far as SkyKick have used the signs complained of in relation to their backup service, Cloud Backup (as to which, see the Main Judgment at [97(ii)]). Whereas the majority of SkyKick's revenue in 2017 derived from Cloud Migration, the majority of SkyKick's revenue now derives from Cloud Backup.
For these purposes it is sufficient to consider Sky's case based on the last of the Selected Goods and Services as cut down in the light of my conclusions as to bad faith, namely “computer services for accessing and retrieving audio, visual and/or audio-visual content and documents via a computer or computer network” in Class 38. In my judgment Cloud Backup is identical to those services, at least in so far as documents are concerned. In other words, my conclusion in the Main Judgment at [297] in this respect is unaffected by the subsequent cutting down of the specification. In saying this, I must acknowledge that what I said at [61] of the Third Judgment appears to suggest otherwise; but my attention there was focused on Cloud Migration. In any event, as counsel for Sky submitted, even if Cloud Backup is not identical to those services, it is very similar indeed.
Given the identity or very close similarity of services, it follows from the reasoning in the Main Judgment that use of the signs complained of in relation to Cloud Backup also gives rise to a likelihood of confusion. Thus SkyKick have also infringed the Trade Marks by using those signs in relation to Cloud Backup pursuant to Article 9(2)(b) of the Regulation and Article 10(2)(b) of the Directive.
Recital, declarations and formal orders
SkyKick seek the inclusion in the order of a recital and certain declarations which Sky oppose. Counsel for SkyKick did not press for these at the hearing. In my view the complexity of this case means that declaratory relief is inappropriate save in so far as it is necessary to give effect to SkyKick's partial success on their counterclaim.
SkyKick also seek an order dismissing Sky's infringement claims pursuant to Article 9(2)(c) of the Regulation and Article 10(2)(c) of the Directive. This is incorrect. Those claims have technically succeeded, albeit that they added nothing to the claims pursuant to Article 9(2)(b) of the Regulation and Article 10(2)(b) of the Directive.
Finally, SkyKick seek an order that three of the Trade Marks “be partly invalidated”. This is unnecessary and inappropriate given the declaratory relief to which SkyKick are entitled.
Injunction
Sky seek an injunction to restrain SkyKick from continuing to infringe the Trade Marks. SkyKick oppose the grant of an injunction on two main grounds. The first is that an injunction should be refused in order to sanction Sky's partial bad faith in applying for the Trade Marks and to deter third parties from such conduct. The second is that an injunction would be disproportionate. Although SkyKick's primary case is, somewhat optimistically, that an injunction should simply be refused, in the alternative SkyKick contend that the Court should accept undertakings designed to minimise the damage which could be caused to Sky by continuing infringement and/or award damages in lieu of an injunction.
These contentions require the Court to consider the application of a number of different legal principles deriving from different legal sources.
The law
TRIPS. Article 21 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) annexed to the World Trade Organisation Agreement (as amended on 23 January 2017) provides (so far as relevant) that “the compulsory licensing of trademarks shall not be permitted”.
The relevance of this is that the Court of Justice of the European Union has repeatedly held that, in a field of intellectual property law where the European Union has legislated, such as trade marks, national courts must interpret both European and domestic legislation as far as possible in the light of the wording and purpose of relevant international agreements to which the EU is a party, and in particular TRIPS: see Case C-53/96 Hermès International v FHT Marketing Choice BV [1998] ECR I-3603 at [28]; Joined Cases C-300/98 and C-392/98 Parfums Christian Dior SA v Tuk Consultancy BV [2000] ECR I-11307 at [47]; Case C-89/99 Schieving-Nijstad VOF v Groeneveld [2001] ECR I-5851 at [35]; Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-6152 at [20]; Case C-245/02 Anheuser-Busch Inc v Budejovicky Budvar NP [2004] ECR I-10989 at [55]–[57]; Case C-431/05 Merck Genéricos – Produtos Farmacêuticos Lda v Merck & Co Inc [2007] ECR I-7001 at [35]; and Case C-275/06 Productores de Música de España (Promusicae) v Telefónica de España SAU [2008] ECR I-271 at [60].
It is convenient to note here that, consistently with Article 21 of TRIPS, neither the Regulation nor the Directive nor domestic law provide for the compulsory licensing of trade marks.
The Regulation. Article 130 of the Regulation provides:
“ Sanctions
1. Where an EU trade mark court finds that the defendant has infringed or threatened to infringe an EU trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the EU trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.
2. The EU trade mark court may also apply measures or orders available under the applicable law which it deems appropriate in the circumstances of the case.”
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