Sky Plc v Skykick Uk Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 27 April 2018 |
| Neutral Citation | [2018] EWHC 943 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC-2016-001587 |
| Date | 27 April 2018 |
[2018] EWHC 943 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Justice Arnold
Case No: HC-2016-001587
Geoffrey Hobbs QC and Philip Roberts QC (instructed by Mishcon de Reya LLP) for the Claimants
Simon Malynicz QC, Tom HickmanandStuart Baran (instructed by FieldFisher LLP) for the Defendants
Hearing date: 23 April 2018
Judgment Approved
Introduction
This judgment deals with a number of issues arising out of the judgment which I handed down on 6 February 2018 (“the Main Judgment”).
Sky's application dated 16 April 2018
The trial of this action took place over the period from 16 to 23 January 2018. The parties were sent the Main Judgment in draft in order that they could notify the Court of typographical and other obvious errors on 1 February 2018. Both parties duly submitted lists of proposed corrections. The final version of the Main Judgment was handed down 6 February 2018. On 16 April 2018, without prior warning to SkyKick, Sky issued an application requesting that “the Court (i) reconsider the Conclusions in paras [174], [258] and [358] of the Judgment and the reasoning on the basis of which they were reached; and/or (ii) provide amplification of the reasons on the basis of which the Conclusions in paras [174], [258] and [358] of the Judgment were reached”.
This application was made on the advice of counsel newly instructed on behalf of Sky following the handing down of the Main Judgment to draft grounds of appeal. He told me that he gave that advice as a result of formulating the draft grounds of appeal which form the basis of Sky's alternative application for permission to appeal. I am doubtful that this justifies the lateness of the application; but I will let that pass.
Limb (ii) of Sky's application is advanced on the basis that it is well established that a party should not seek to appeal to the Court of Appeal on the basis that a judge which has given insufficient reasons for the conclusions he has reached in a judgment which has been delivered without first inviting the judge to amplify his reasons. I find it remarkable, and troubling, that it can be suggested that a judgment that runs to no less than 358 paragraphs contains insufficient reasons. It is fair to say that parts of the Main Judgment are directed to issues other than those which are the focus of Sky's application; but on any view a large part of the Main Judgment deals with the issues with which Sky's application is concerned. I can see no basis for the suggestion that the Main Judgment contains insufficient reasons for the conclusions reached. I would make the obvious point that a judge cannot (or at least, should not) be criticised for not addressing arguments which were not advanced before him or for not considering authorities which were not cited to him.
Limb (i) of Sky's application is advanced on the basis that a judge of the High Court has the power to reconsider his judgment at any time up until the order giving effect to it has been perfected by being sealed and that the exercise of this power is not restricted to exceptional circumstances: see In re L (Children) (Preliminary Finding: Power to Reverse) [2013] UKSC 8, [2013] 1 WLR 634. The only basis on which it is suggested that I should reconsider the conclusions reached in the Main Judgment, however, is that they are wrong. In my judgment that is not a sufficient justification. The proper course in such circumstances is to seek permission to appeal.
For the reasons given in the two preceding paragraphs, I consider that Sky's application should be dismissed. Nevertheless, I cannot ignore the fact that Sky's new counsel has made arguments in support of the application which develop the contentions advanced by Sky at the trial and, perhaps more importantly, has cited a number of authorities which had not previously been cited. In those circumstances, I propose briefly to explain why the new arguments and new authorities have not caused me to change my mind. I shall not address every point made by counsel for Sky, but only those points which appear to me to warrant comment beyond what is contained in the Main Judgment.
Can lack of clarity and precision in the specification be asserted as a ground of invalidity?
Counsel for Sky made two points in relation to this issue which I propose to comment on.
First, he pointed out that the CJEU had held in Case C-421/04 Matratzen Concord AG v Hukla Germany SA [2006] ECR I-2303:
“19. As is clear from the seventh recital in the preamble, the Directive lists in an exhaustive manner the grounds for refusal or invalidity of registration concerning the trade mark itself.
20. According to settled case-law, in a field which has been exhaustively harmonised at Community level, a national measure must be assessed in the light of the provisions of that harmonising measure and not of those of primary law (see, in particular, Case C-352/95 Phytheron International [1997] ECR I-1729, paragraph 17; Case C-324/99 DaimlerChrysler [2001] ECR I-9897, paragraph 32; and Case C-210/03 Swedish Match [2004] ECR I-11893, paragraph 81).
21. Consequently, it is the Directive, and in particular Article 3 thereof, on the absolute grounds for refusal or invalidity of registration, and not Articles 28 EC and 30 EC, which must be assessed to determine whether Community law precludes the registration of a national trade mark such as that at issue in the main proceedings.
22. Article 3 of the Directive does not include any ground for refusal to register specifically aimed at trade marks constituted by a term borrowed from the language of a Member State other than the State of registration in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought.”
He submitted that this reasoning supported the view that lack of clarity and precision in the specification of goods and services was not a ground of invalidity which could be asserted against a trade mark after registration. I accept this. Nevertheless, he did not seek to withdraw the limited concession by Sky recorded in the Main Judgment at [161].
Secondly, he drew attention to a series of decisions of the General Court which he submitted stood as authority for the proposition that terms in specifications of goods and services which were not sufficiently clear and precise were to be disregarded in any claim for infringement or opposition on relative grounds, namely Case T-162/08 Frag Commercio Internacional SL v Office for Harmonisation in the Internal Market [2009] ECR II-212 at [31], Case T-571/11 El Corte Inglés SA v Office for Harmonisation in the Internal Market [EU:T:2013:145] at [23]–[24], [51]–[56], Case T-229/12 Advance Magazine Publishers Inc v Office for Harmonisation in the Internal Market [EU: T:2014:95] at [33]–[42], Case T-39/16 Nanu-Nana Joachim Hoepp GmbH & Co KG v European Intellectual Property Office [EU:T:2017:263] at [40]–[49] and Case T-102/17 Cantina e Oleificio Sociale di San Marzano v European Intellectual Property Office [UE: T:2018:50] at [28]–[40]. He further submitted that, if objectionable terms were disregarded, a finding of invalidity would add nothing.
I am not convinced that these decisions are authority for the proposition stated. Rather, they appear to me to show that, absent an attack on the validity of the trade mark, an unclear or imprecise term will be narrowly interpreted as extending only to such goods or services as it clearly covers. Certainly, I am not persuaded that they show that a term in a specification which lacks clarity and precision cannot be invalid.
Are the specifications of the Trade Marks lacking in clarity and precision?
Counsel for Sky made five points in relation to this issue which I propose to comment on.
First, he submitted that (i) breadth of a term in a specification of goods and services was not the same thing as lack of clarity and precision and (ii) the Court of Justice had held in IP TRANSLATOR in its answer to the third question that the use of broad terms was unobjectionable provided that the applicant made its intentions clear. I addressed these points in the Main Judgment at [146], [149] and [164]–[172]. I would add, in case I did not make it sufficiently clear, that the Court of Justice stated in IP TRANSLATOR at [54] that some of the general indications in the class headings of the Nice Classification are not sufficiently clear and precise to allow the competent...
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