Sky v SkyKick goes to appeal
Sky v SkyKick will head to the English Court of Appeal, Lord Justice Richard Arnold has ruled, while the judge also found SkyKick to have further infringed the UK telecoms provider’s trademarks.
The long-running case, which has been followed closely for its impact on the scope of trademark registrations, will now likely be heard by the English Court of Appeal next year.
Today’s ruling is the fourth first-instance judgment to be issued by Lord Justice Richard Arnold of the English High Court in the case. The third, issued in April, found that SkyKick, a US cloud storage provider, had infringed Sky’s trademarks covering “electronic mail services”.
The April decision was notable for Arnold’s decision to trim back Sky’s trademark registrations for goods and services like “computer software”, which he said were too broad and had been registered in bad faith.
Arnold ordered that Sky’s trademarks be refined to cover more specific forms of computer software.
The decision was received by lawyers as the “death of computer software trademarks”, that would cause a “significant rethink for trademark owners”.
Sky has now been granted permission to appeal the finding of bad faith, in a development that will be keenly followed by UK and EU trademark lawyers.
But just as significant for SkyKick, if not the trademark and legal industries, was the finding that the US company infringed Sky’s trademarks.
SkyKick at the time claimed that it was “delighted with almost every aspect of the judgment,” but requested permission to appeal the finding that it infringed for “electronic mail services”.
That has now been granted, but in an unexpected development, Arnold has also ruled that SkyKick further infringed Sky’s marks, for “cloud backup” services.
Arnold gave SkyKick permission to appeal that new finding, in addition to April’s infringement findings.
The judge also granted SkyKick’s request for a stay of an injunction preventing the US company infringing Sky’s trademarks, pending conclusion of the appeal process.
But this is conditional on SkyKick paying 2% of its EU revenues into a joint account, on a monthly basis. Sky had argued that there was a risk SkyKick could become insolvent and be unable to pay damages for infringing its trademarks.
Todd Schwartz and Evan Richman, co-CEOs of SkyKick, said: “We look forward to taking our legal arguments in this important trademark case to the English Court of Appeal. We are hopeful that we will ultimately succeed in obtaining the right to use our SkyKick trademark in Europe.”
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