SKY v SKYKICK – Lessons from Europe

The recent case of the Court of Justice of the European Union (CJEU) Sky v SkyKick[1] is being touted as one of the most important decisions for trade mark law out of Europe in the last couple of years. 

We discuss what all the fuss is about and what lessons can be learnt from this decision:

The Facts

Sky Plc and the related group of companies (“Sky”) is well-known for its range of broadcasting services provided under the trade mark SKY.  SKY is a registered trade mark in many countries, and has been successfully enforced throughout the years.

In 2012, SkyKick UK and SkyKick Inc (SkyKick) launched a range of cloud-based software services under the trade mark SKYKICK, starting in the US and extending internationally.

In 2016, Sky sued Skykick for trade infringement, relying on its United Kingdom (UK) and European Union (EU) registrations for SKY.

SkyKick did not take this lying down.  SkyKick attacked Sky’s trade mark registrations as invalid because the registrations included terms such as “computer software” which lacked clarity and precision, and included broad areas in which Sky could not reasonably claim any intention to use.

The first case Sky Plc & Ors v SkyKick UK Ltd & Anor[2]

In this 2018 decision the Court held that, on the face of it, there was trade mark infringement, but if the counterattack to Sky’s trade mark registrations succeed, the outcome of the proceeding may be significantly different.

In view of the potential effect of this decision on the parties and on other EU and UK trade mark registrations, Mr Justice Arnold referred the issue of validity of the SKY trade mark registrations to the CJEU for determination. 

The CJEU case

The key questions under consideration by the CJEU were:

  • Can an EU or a national EU Member State trade mark be declared partially or wholly invalid because some terms lack clarity or precision and third parties cannot identify the extent of protection?
  • If the answer to this is yes, is “computer software” one such imprecise and unclear term?
  • Is it bad faith to file for broad goods or services where there is no intent to use the trade mark on all those goods and services?
  • If the answer to this is yes, can an application made with certain broad terms be deemed filed in bad faith just for those broad terms?

In its decision issued January 2020, the CJEU confirmed:

  • EU or national EU Member State registrations cannot be declared partially or wholly invalid on the grounds that some terms lack clarity or precision.
  • However, an application made without intent to use can constitute bad faith if the application was filed either with an intent to undermine third party rights or in a manner inconsistent with honest business practice.  There is no need for a third party to be specifically targeted.
  • If the lack of intention to use only relates to some goods and services, then the bad faith only relates to those claimed areas.

This is good news for the owners of the many EU and UK trade mark registrations where the description of goods includes terms like “computer software” – an acceptable term in trade mark applications for many years!  It may however be bad news for owners of registrations secured with broad terms filed as a defensive measure and with no true intent to use the trade mark for those broad goods and services

What does this mean for new trade mark applications?

It is often thought of as best practice when filing an application to claim the broadest right allowable under the law of the country in which the application is lodged. 

However, it is a balancing act between covering a broad area and ensuring the described area is still within the area of intended use, particularly where a country requires a declaration of intention to use at the time of filing.

It is also risky to use the same filing method for applications over the years as cases are continually being decided which modify the parameters of what is best practice.

A trade mark professional will be aware of up to date cases as well as the technical aspects of filing a trade mark application. With this knowledge, an experienced professional will be able to tailor an application so that the trade mark owner has the advantage of the best filing at the time the application is lodged for the specific country of interest.

What does this mean for your registered trade marks?

Once a trade mark is registered, it should not simply be left on the register with no attention beyond renewal every ten years. 

As you nurture and grow your business, so too should you care for your trade mark registrations.

Depending on the nature of the business, trade mark registrations should be routinely reviewed to assess compliance with any new laws and to ensure registered coverage reflects the area of use and best practice for registered rights.

What does this mean if you are getting ready to sue someone?

The first step to any infringement action is do your homework! 

Having a trade mark registration is not a magic bullet to stop third parties. 

Before raising an objection, you should conduct careful investigations into the offending company.   It may have trade mark registrations or common law rights that would affect the strength of your position.

Of no less importance, you should carefully check your own trade mark registrations and common law rights.  Any vulnerabilities should be identified and fixed, preferably before raising an objection.  Such preliminary steps will help ensure you have the strongest position from which to objection and help avoid counter-attacks that can delay an outcome in own infringement action for years.

Time and money spent in preparing to object can save you time and money in the long run.

Worried about your trade mark protection?  Talk to us today.

[1] Case C‑371/18

[2] Sky Plc & Ors v Skykick UK Ltd & Anor [2018] EWHC 155 (Ch)