29 April 2020TrademarksRory O'Neill

SkyKick infringed Sky TMs despite bad faith, rules court

The English High Court has trimmed  Sky’s trademarks down to cover more specific types of computer software, but US company SkyKick is still liable for infringing the IP.

In a  ruling issued this morning, Lord Justice Richard Arnold found that Sky had partially registered some of its UK and EU trademarks in bad faith.

But Arnold said that software company  SkyKick had still infringed the Sky trademarks covering “electronic mail services”, and the bad faith finding did not affect this.

SkyKick sells cloud management software that can be used by companies switching to Office 365. The UK company accused SkyKick of infringing its trademarks for ‘Sky’, covering areas including computer software and electronic mail services.

“I consider that bad faith has been proved in so far as Sky applied to register the trademarks for ‘computer software’ as part of their strategy without any commercial justification,” Arnold wrote in today’s judgment.

Arnold said that the Sky trademarks should be amended to cover more specific goods and services, including computer software in connection with televisions, home entertainment devices, mobile phones, and video games.

SkyKick had originally argued that the trademarks should be cancelled.

SkyKick claimed victory in a press release, focusing on the finding that Sky had partially registered the marks bad faith.

“We are delighted with almost every aspect of the judgment,” SkyKick Co-CEO Evan Richman said.

“Of course we need to carefully consider the finding on electronic mail services, and the impact of that on our business,” added co-CEO Todd Schwartz.

“We are in consultation with our lawyers on potential next steps on this point, including the possibility of appeal,” Schwartz said.

The decision follows the highly anticipated judgment from the  Court of Justice of the European Union (CJEU) in January. Arnold had referred the case to the CJEU, seeking clarification on whether trademarks could be invalidated for lacking clarity, and whether marks for ‘computer software’ were too broad.

Lawyers had speculated whether the CJEU’s subsequent ruling could overturn normal practice in EU trademark filing, by finding trademarks for broad terms like “computer software” to be invalid.

SkyKick had argued that Sky’s trademarks for “computer software” should be declared totally invalid, on the grounds that they did not intend to use it in relation to all of the applied for goods and services.

But the CJEU said the marks should only be invalidated in relation to those specific goods and services. One lawyer told WIPR at the time that the CJEU’s judgment was much more “conservative” than expected.

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