Sky Plc v Skykick UK Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold |
| Judgment Date | 29 April 2020 |
| Neutral Citation | [2020] EWHC 990 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC-2016-001587 |
| Date | 29 April 2020 |
[2020] EWHC 990 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
Rolls Building
Fetter Lane, London, EC4A 1NL
Lord 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 Hickman QC and Stuart Baran (instructed by Fieldfisher LLP) for the Defendants
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, in particular an application by Sky for reconsideration and/or amplification of aspects of the Main Judgment ( [2018] EWHC 943 (Ch), [2018] RPC 12, “the Second Judgment”), and I made the order for the reference. An application for permission to appeal against that order was dismissed by the Court of Appeal on 30 July 2018 for reasons given on 6 September 2018 ( [2018] EWCA Civ 2004, [2019] RPC 3).
In order to shorten this judgment, I will assume that the reader is familiar with the Main Judgment and the Second Judgment and I will continue to use the same defined terms as in those judgments. It may nevertheless be of assistance if I recapitulate the following points.
First, as noted in the Main Judgment at [6], for the purposes of their infringement claim under Article 9(2)(b) of the Regulation/Article 10(2)(b) of the Directive, Sky relied at trial upon the registrations of the Trade Marks in respect of the following goods and services (“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).
Secondly, SkyKick contended that the Trade Marks were wholly or partly invalidly registered on the grounds that (i) the specifications of goods and services lacked clarity and precision and (ii) the applications were made in bad faith. I was not able to reach a final conclusion in relation to these contentions due to the legal issues which formed the subject of the reference, but I did make relevant findings of fact.
Thirdly, I concluded that, if the Trade Marks were validly registered in relation to the Selected Goods and Services, then SkyKick had infringed them pursuant to Article 9(2)(b) of the Regulation/Article 10(2)(b) of the Directive unless SkyKick could rely upon the own name defence, but I went on to conclude that SkyKick could not rely upon that defence.
Fourthly, I concluded that, absent a likelihood of confusion, Sky's case under Article 9(2)(c) of the Regulation/Article 10(2)(c) of the Directive was not made out. In other words, the paragraph (c) case added nothing to the paragraph (b) case.
Fifthly, I dismissed Sky's claim for passing off.
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). Although a hearing had been arranged for further argument on the outstanding issues in the light of the CJEU's judgment on 2 April 2020, in the light of the Covid-19 pandemic the parties sensibly agreed to dispense with oral argument and to confine themselves to written submissions.
Although I have read and considered all of the written submissions filed by the parties with care, I do not intend to address all of them in this judgment. Even leaving aside submissions concerning two applications by SkyKick which were withdrawn, some of the submissions concern points which are no longer live following the CJEU's ruling and some amount to attempts to re-argue points which were decided in the Main Judgment.
The questions referred to the CJEU
The questions which I referred to the CJEU were as follows:
“(1) Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark?
(2) If the answer to question (1) is yes, is a term such as ‘computer software’ too general and covers goods which are too variable to be compatible with the trade mark's function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark?
(3) Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services?
(4) If the answer to question (3) is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services?
(5) Is section 32(3) of the UK Trade Marks Act 1994 compatible with Parliament and Council Directive 2015/2436/EU and its predecessors?”
The CJEU's rulings
The CJEU's rulings were as follows:
“1. Articles 7 and 51 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, as amended by Council Regulation (EC) No 1891/2006 of 18 December 2006, and Article 3 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a Community trade mark or a national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision.
2. Article 51(1)(b) of Regulation No 40/94, as amended by Regulation No 1891/2006, and Article 3(2)(d) of First Directive 89/104 must be interpreted as meaning that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, within the meaning of those provisions, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services.
3. First Directive 89/104 must be interpreted as not precluding a provision of national law under which an applicant for registration of a trade mark must state that the trade mark is being used in relation to the goods and services in relation to which it is sought to register the trade mark, or that he or she has a bona fide intention that it should be so used, in so far as the infringement of such an obligation does not constitute, in itself, a ground for invalidity of a trade mark already registered.”
Validity of the Trade Marks: clarity and precision
It is clear from the CJEU's first ruling that the Trade Marks cannot be declared wholly or partly invalid on the ground that their specifications are lacking in clarity or precision. It follows that that part of SkyKick's counterclaim must be dismissed.
Validity of the Trade Marks: bad faith
SkyKick accept that, in the light of the CJEU's second ruling, the Trade Marks can only be declared invalid in relation to those goods and/or services in respect of which the Court finds that the applications were made in bad faith, and not totally invalid. Apart from that, there is a substantial dispute between the parties as to the consequences which flow from applying the CJEU's statement of the law to the facts found in the Main Judgment.
In considering this dispute, it is necessary for me to start by acknowledging an important point which I appear partly to have overlooked in the Main Judgment at [251] and [257]. This is that SkyKick did not allege that the Trade Marks had been applied for in bad faith in relation to two of the Selected Goods and Services, namely “telecommunications services” and “electronic mail services”. (SkyKick nevertheless contended that the Trade Marks were wholly invalid, but that was on the basis of their argument that bad faith in relation to some goods and services tainted the whole registration.)
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