Sky Plc v Skykick UK Ltd

JurisdictionEngland & Wales
JudgeMr Justice Arnold
Judgment Date06 February 2018
Neutral Citation[2018] EWHC 155 (Ch)
CourtChancery Division
Docket NumberCase No: HC-2016-001587
Date06 February 2018
Between:
(1) Sky Plc
(2) Sky International AG
(3) Sky UK Limited
Claimants
and
(1) Skykick UK Limited
(2) Skykick Inc
Defendants

Neutral Citation Number: [2018] EWHC 155 (Ch)

Before:

Mr 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

Philip Roberts and Jeremy Heald (instructed by Mishcon de Reya LLP) for the Claimants

Simon Malynicz QC, Tom Hickman and Stuart Baran (instructed by Dentons UKMEA LLP) for the Defendants

Hearing dates: 16–19, 23 January 2018

Judgment Approved

Mr Justice Arnold

Contents

Topic

Paragraphs

Introduction

1

The Trade Marks

2–7

The signs complained of

8–9

The witnesses

10–22

Sky's witnesses

10–16

SkyKick's witnesses

17–22

Factual background

23–113

Sky's business and use of the SKY trade mark

24–68

Television

27–36

Telephony

37

Internet

38–43

Email

44

Online data storage

45–48

Online music downloads and streaming

49

Other online services

50–51

Computer software

52–54

Merchandising and promotional goods

55

Betting services

56

Tickets

57

Games

58

Magazines

59

Financial services

60

Insurance

61

Educational services

62

Travel

63

Installation services

64

Transport

65

The scale of Sky's business and its advertising and promotion

66

Sky Business

67

The geographical extent of Sky's use of the SKY trade mark

68

Sky's enforcement of their trade mark

69–72

SkyKick and their business

73–103

The idea for the business

73–76

The choice of the name SkyKick

77–79

Trade mark clearance and filing

80–88

Launch in the USA

89

Warnings about Sky

90–93

Expansion into the EU

94

Another warning about Sky

95–96

SkyKick's products

97–98

Partners, Customers and End Users

100–103

The scale of SkyKick's business in the EU

104

The proceedings

105–107

Third party SKY formative marks

108–113

Key legislative provisions

114–119

Relevant dates for assessment

120–123

The law

120–121

The present case

122

The NICE Agreement and Classification

124–139

The NICE Agreement

126–128

The NICE Classification

129–131

Legislative framework concerning the use of the Nice

132–135

Classification for Community and EU trade marks

Legislative framework concerning the use of the Nice

136–139

Classification for UK trade marks

The IP TRANSLATOR case and its aftermath

140–153

Validity of the Trade Marks: clarity and precision of the specification of goods and services

154–174

Can lack of clarity and precision of the specification be asserted as a ground of invalidity?

158–161

Are the specifications of the Trade Marks lacking in clarity orprecision?

162–173

Conclusion

174

Validity of the Trade Marks: bad faith

175–257

TRILLIUM

178–179

Case law of the CJEU

180–189

Case law of the General Court

190–207

The UK legislative framework

208

Case law of UK courts and tribunals

209–223

Summary of the present state of the law on lack of intent to use

224–229

Extent of invalidity

230–234

The facts in the present case

235–257

Conclusion

258

Territorial aspects of Sky's claim for infringement of the EU Trade Marks

259–267

Contextual assessment of Sky's infringement claims

268–273

The average consumer

274–283

The law

274

The present case

275–283

Infringement under Article 9(2)(b) of the Regulation/Article 10(2)(b) of the Directive

284–303

The law

285–290

Comparison of goods and services

286

Likelihood of confusion

287–290

Assessment

291–303

The distinctive character of the Trade Marks

292–294

Comparison of goods and services

295–298

Comparison of the Trade Marks and the sign

299

Absence of evidence of actual confusion

300–301

Overall assessment

302

Conclusion

303

Infringement under Article 9(2)(c) of the Regulation/Article 10(2)(c) of the Directive

304–322

The law

305–316

Reputation of the trade mark

307–308

Link

309

Detriment to the distinctive character of the trade mark

310–312

Unfair advantage

313–315

Due cause

316

Assessment

317–321

Reputation

317

Link

318

Detriment to the distinctive character of the Trade Marks

319

Unfair advantage

320

Due cause

321

Conclusion

322

Own name defence

323–355

Is SkyKick's use of the sign in accordance with honest practices?

327–335

The law

325–333

Assessment

334–335

Was the amendment to Article 12(a) of Regulation 207/2009 invalid?

336–353

The legislative history in more detail

337–347

Relevant provisions of the Charter

348–349

Relevant principles

350–352

Assessment

353–355

Passing off

356

Reference to the CJEU

357

Summary of principal conclusions

358

Introduction

1

In this case the Claimants (collectively “Sky”) contend that the Defendants (collectively “SkyKick”) have infringed four European Union trade marks owned by the Second Claimant (“Sky AG”) and one United Kingdom trade mark owned by the First Claimant (Sky plc) comprising the word SKY (“the Trade Marks”) by use of the sign “SkyKick” and variants thereof, and have committed passing off. SkyKick deny infringement and passing off, and counterclaim for a declaration that the Trade Marks are wholly or partly invalidly registered on the grounds that the specifications of goods and services lack clarity and precision and that the applications were made in bad faith. The allegations of infringement of the EU Trade Marks cover the whole of the EU, whereas the allegations of infringement of the UK Trade Mark are necessarily confined to the UK. The case raises some important issues of European trade mark law.

The Trade Marks

2

Sky AG is the registered proprietor of the following EU Trade Marks:

i) No. 3 166 352 filed on 14 April 2003 and registered on 12 September 2012 (“EU352”) 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).

ii) No. 3 203 619 filed on 30 April 2003 and registered on 6 September 2012 (“EU619”) 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 EU352, this trade mark is registered in black and white, without any indication of colour.

iii) No. 5 298 112 filed on 6 September 2006 and registered on 18 June 2015 (“EU112”) 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).

iv) No. 6 870 992 filed on 18 April 2008 and registered on 8 August 2012(“EU992”) 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).

3

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 (“UK604”) 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).

4

For reasons that will appear, I must describe the specifications of goods and services of the Trade Marks, both as applied for and as registered, in a little more detail:

i) When the application for EU352 was filed, the specification of goods and services consisted of the class headings of the 8th edition of the Nice Classification (as to which, see below) for each of the classes in question. The specification which was ultimately registered consisted of the class headings, but with two qualifications. The first was to “printed matter” in the Class 16 specification:...

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