Sky Ltd (formerly Sky Plc) v Skykick, UK Ltd
| Jurisdiction | England & Wales |
| Judge | Sir Christopher Floyd,Lord Justice Nugee,Lord Justice Newey |
| Judgment Date | 26 July 2021 |
| Neutral Citation | [2021] EWCA Civ 1121 |
| Docket Number | Case Nos: A3/2020/1374 A3/2020/1370 |
| Court | Court of Appeal (Civil Division) |
[2021] EWCA Civ 1121
Lord Justice Newey
Lord Justice Nugee
and
Sir Christopher Floyd
Case Nos: A3/2020/1374 A3/2020/1370
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Rt Hon Lord Justice Arnold
Royal Courts of Justice
Strand, London, WC2A 2LL
Geoffrey Hobbs QC and Philip Roberts QC (instructed by Mishcon de Reya llp) for the Appellants
Simon Malynicz QC and Stuart Baran (instructed by Field Fisher LLP) for the Respondents
Hearing dates: 25–27 May 2021
Approved Judgment
The issue underlying these proceedings can be shortly stated. It is whether the appellants, who are are well-known for broadcasting, telephony and broadband provision (and to whom I will refer collectively as “Sky”) can, by use of their EU and UK registered trade marks for SKY (“the trade marks”), or by a common law action in passing off, prevent the respondents (together “SkyKick”) from using the sign SKYKICK in relation to email migration and cloud storage services. The journey towards a resolution of that issue has thus far entailed no less than four first instance judgments and a judgment of the Court of Justice of the European Union (“CJEU”). On the way, the judge and the CJEU have explored the limits of recognised grounds of invalidity of trade marks, as well as an entirely novel one.
The two appeals before this court are from the order of Arnold LJ sitting at first instance (“the judge”) dated 2 July 2020. By that order, the judge (i) declared the trade marks to be invalid to the extent specified in a Schedule to the order; (ii) dismissed Sky's claim for passing off; (iii) dismissed SkyKick's counterclaim alleging lack of clarity and precision in the wording of the lists of goods and services covered by the trade marks; and (iv) (save to the extent provided for in the Schedule referred to in (i)) made no order on SkyKick's counterclaim alleging bad faith in filing the trade marks. Notwithstanding this restriction of Sky's rights, the judge considered that SkyKick's email migration and cloud storage services did infringe the trade marks in their restricted form. He accordingly granted Sky an injunction to restrain SkyKick from infringing the trade marks (as well as any post-Brexit UK trade mark equivalent to any of the EU trade marks), and monetary relief for past infringement. In short, Sky emerged from the battle bruised (in that their registered trade mark rights had been cut down, and they had lost on passing off), but overall the victors.
Sky appeals against the finding of partial invalidity and consequent restriction of the trade marks, and the dismissal of the passing-off action, with permission granted partly by the judge and partly by me. SkyKick cross-appeals with the judge's permission against the findings of infringement, and contends for a more extensive restriction of the trade marks.
The trade marks
Sky International AG is the registered proprietor of the following EU Trade Marks:
1. No. 3 166 352 filed on 14 April 2003 and registered on 12 September 2012 (“EU 352”) for the figurative mark shown below in respect of goods and services in Classes 9, 16, 18, 25, 28, 35, 38, 41 and 42, including “apparatus for recording, transmission or reproduction of sound or images” (Class 9), “telecommunications” (Class 38) and “entertainment” (Class 41).
2. No. 3 203 619 filed on 30 April 2003 and registered on 6 September 2012 (“EU 619”) for the figurative mark shown below in respect of goods and services in Classes 9, 16, 18, 25, 28, 35, 38, 41 and 42, including “apparatus for recording, transmission or reproduction of sound or images” (Class 9), “telecommunications” (Class 38) and “entertainment” (Class 41). Unlike EU 352, this trade mark is registered in black and white, without any indication of colour.
3. No. 5 298 112 filed on 6 September 2006 and registered on 18 June 2015 (“EU 112”) for the word SKY in respect of goods and services in Classes 9, 16, 28, 35, 37, 38, 41 and 42, including “apparatus for recording, transmission, reproduction or reception of sound, images or audiovisual content; computer software; computer software and telecommunications apparatus to enable connection to databases and the Internet; computer software supplied from the Internet; data storage” (Class 9), “telecommunications services; electronic mail services; internet portal services” (Class 38) and “entertainment services” (Class 41).
4. No. 6 870 992 filed on 18 April 2008 and registered on 8 August 2012 (“EU 992”) for the word SKY in respect of goods and services in Classes 3, 4, 7, 9, 11, 12, 16, 17, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, including “apparatus for recording, transmission, reproduction or reception of sound, images or audiovisual content; computer software; computer software and telecommunications apparatus to enable connection to databases and the Internet; computer software supplied from the Internet; data storage; all the aforesaid including remote and computer apparatus and instruments” (Class 9), “telecommunications services; electronic mail services; internet portal services; computer services for accessing and retrieving information, messages, text, sound, images and data via a computer or computer network” (Class 38) and “entertainment services” (Class 41).
Sky plc is the registered proprietor of UK Trade Mark No. 2 500 604 filed on 20 October 2008 and registered on 7 September 2012 (“UK 604”) for the word SKY in respect of goods and services in 3, 4, 7, 9, 11, 12, 16, 17, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45, including “apparatus for recording, transmission, reproduction or reception of sound, images or audiovisual content; computer software; computer software and telecommunications apparatus to enable connection to databases and the Internet; computer software supplied from the Internet” (Class 9), “telecommunications services; electronic mail services; internet portal services; computer services for accessing and retrieving information, messages, text, sound, images and data via a computer or computer network” (Class 38) and “entertainment services” (Class 41).
Although not every trade mark was registered for all these goods and services, Sky relied for their infringement claim on the registrations of the trade marks for the following, referred to as “the Selected Goods and Services”:
i) computer software (Class 9);
ii) computer software supplied from the internet (Class 9);
iii) computer software and telecoms apparatus to enable connection to databases and the internet (Class 9);
iv) data storage (Class 9);
v) telecommunications services (Class 38);
vi) electronic mail services (Class 38);
vii) internet portal services (Class 38); and
viii) computer services for accessing and retrieving information/data via a computer or computer network (Class 38).
The signs complained of
Sky complain of the use of the signs “SkyKick”, “skykick” and the figurative signs shown below.
SkyKick's attacks on the trade marks
SkyKick's first ground of attack on the trade marks was that they should be declared invalid on the ground that they are registered for goods and services that are not specified with sufficient clarity and precision. That ground is no longer live following the ruling of the CJEU in this case, in which it was held that lack of clarity and precision is not a ground on which a trade mark can be declared invalid, but some of Sky's arguments seek to make use of the CJEU's conclusions on this issue in support of their case in response to SkyKick's second ground of attack.
SkyKick's second ground of attack was that the trade marks were all applied for in bad faith because they were all applied for without any genuine intention to use them in relation to all of the goods and services within the registrations. Although SkyKick accept that Sky did intend to use the trade marks in relation to some of the goods and services covered by their registrations, their primary case was that the marks are wholly invalid on this ground. SkyKick's secondary case was that the trade marks were invalid to the extent that they cover goods and services in relation to which Sky had no intention to use the trade marks. It is important to note that SkyKick did not advance a specific case of bad faith in relation to two of the Selected Goods and Services, namely “telecommunications services” and “electronic mail services”.
Sky's infringement case
Sky advanced separate cases of infringement under Article 9(2)(b) of the Regulation 1/Article 10(2)(b) of the Directive 2 and under Article 9(2)(c) of the Regulation/Article 10(2)(c) of the Directive. The former type of infringement arises where the sign complained of is one where, because of its identity with or similarity to the trade mark and the identity or similarity of the goods or services covered by the mark, there exists a likelihood of confusion on the part of the public. I will refer to this first type of infringement as “Type (b) infringement” (“(b)” referring to the common sub-paragraph lettering in each of the relevant instruments). The latter type of infringement is different in two respects from Type (b) infringement. First, it can arise even if the sign is used in relation to goods or services which are not identical with or similar to those for which the...
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