Sky Plc v Skykick UK Ltd
Jurisdiction | England & Wales |
Judge | Mr Justice Arnold |
Judgment Date | 06 February 2018 |
Neutral Citation | [2018] EWHC 155 (Ch) |
Court | Chancery Division |
Docket Number | Case No: HC-2016-001587 |
Date | 06 February 2018 |
Neutral Citation Number: [2018] EWHC 155 (Ch)
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
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 |
| 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
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
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).
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).
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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