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7 February 2018Trademarks

English court refers Sky trademark questions to CJEU

The English High Court referred a series of questions to the Court of Justice of the European Union (CJEU) yesterday, in a dispute involving media company Sky.

In the opening paragraph of the ruling, Mr Justice Arnold noted that the case between Sky and SkyKick, a cloud management provider, “raises some important issues of European trademark law”.

Sky argued that SkyKick had infringed four European trademarks and one UK trademark comprising the word ‘Sky’ via the ‘SkyKick’ trademark, and had committed passing off.

SkyKick denied infringement and passing off, and counterclaimed for a declaration that Sky’s marks were invalidly registered because the specifications for the goods and services lack clarity and precision. It added that the applications were made in bad faith.

The contention that the specifications lack clarity derives from the ruling in the IP Translator case, which established that a trademark applicant must specify its mark with “sufficient clarity and precision” so that the extent of the protection can be determined.

Arnold explained that this argument raises two issues. First, whether the invalidity ground may be asserted against a registered trademark and whether, if the ground can be asserted, the specifications of any of Sky’s trademarks are objectionable.

“These are important issues of European trademark law, for reasons that I believe will be fairly obvious from IP Translator and its aftermath,” he said.

Arnold asked Europe’s highest court to answer the question of whether a trademark can be declared wholly or partially invalid if some or all of the terms in the specification are lacking sufficient clarity or precision.

He added that if the answer to that question is in the affirmative, he queried whether a term such as “computer software” (one of the classes for Sky’s trademarks) is lacking clarity to enable others to determine the extent of the protection.

SkyKick’s argument that Sky’s trademarks were registered in bad faith because Sky didn’t intend to use the marks for all the goods and services specified also raised a question of European law.

“To date, the CJEU has had relatively little opportunity to consider what constitutes filing a trademark application in bad faith and has not had occasion directly to address the question of whether it is bad faith to apply to register a trademark without a genuine intention to use the trademark in relation to the goods and/or services specified in the application,” said Arnold.

The CJEU was asked to answer whether it can constitute bad faith to apply to register a mark without any intention to use it in relation to the specified goods or services. If the answer is yes, the CJEU was asked whether it is possible to conclude that the application was made partly in good faith and partly in bad faith if the applicant had an intention to use the mark for some of the specified goods and services.

Arnold concluded that if Sky’s trademarks are valid then there is a likelihood of confusion and SkyKick does not have an own name defence.

Sky’s claim for passing off was dismissed.

A spokesperson for Sky said that the company welcomes the decision that SkyKick infringes Sky’s trademarks.

“The Sky brand is a significant commercial asset, particularly in the UK, where we spend more on marketing than anyone else. Diversification is a core part of Sky’s business model and we aim to protect our brand in markets that either overlap with our own or are natural markets for Sky to expand into,” they added.

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