30 April 2020TrademarksRory O'Neill

SkyKick ruling the 'end of computer software' TMs

Yesterday’s  Sky v SkyKick ruling will spell the end of broad trademark specifications like ‘computer software’ and force a major rethink for brand owners, lawyers have told WIPR.

Lord Justice Richard Arnold of the English High Court  ruled yesterday, April 29, that telecoms provider Sky had acted in bad faith when registering overly broad trademarks for ‘computer software’, when it had no intention of using the full breadth of the specification.

Arnold cut Sky’s trademarks for ‘computer software’ down to cover more specific contexts, like use of computer software in televisions and mobile phones.

US cloud management provider SkyKick wanted Sky’s trademarks for computer software cancelled altogether. But in February, the  Court of Justice of the European Union (CJEU) said that trademarks could not be entirely invalidated because they were partially registered in bad faith.

At the time, the decision was seen as a win for Sky, as it followed an  advocate general opinion that urged the CJEU to go much further and rule that broad registrations for computer software granted an unfair monopoly.

But according to Peter Brownlow, partner at  Bird & Bird, yesterday’s High Court ruling highlighted what the “real implications” of the CJEU ruling were—that filing for goods and services without intention to use is in bad faith.

“It will cause a significant rethink for trademark owners who have usually filed broadly for terms such as computer software and data storage,” Brownlow said.

But the ramifications of the decision go much further than just computer software and telecommunications, he said.

“Computer software is a paradigm example because it contains such a massive range of products, but this will also apply to other specifications,” he said.

Bonita Trimmer, legal director at  Browne Jacobson, said the case “may not be over yet” given that both parties might potentially want to appeal parts of the judgment—SkyKick was found to have infringed Sky trademarks covering ‘electronic mail services’.

But as it stands, she said, the decision will “absolutely be the death of computer software registrations in the UK”.

Filing strategies would need to be revised, she said, and trademark owners with broad specifications should be wary of enforcing them, given that they would now be vulnerable to SkyKick-based counterclaims.

Brownlow agreed that brand owners should now “think carefully and make sure that they don’t enforce overly broad specifications in circumstances where they never had any intention to use”.

The ramifications of the decision are not limited to just the UK, Brownlow cautioned.

“This ruling is only the application of a CJEU decision,” he said, adding: “I think there will be resistance by practitioners in other European jurisdictions to the idea that broad specifications can be attacked, but I think the law in Europe says they can.”

Ben Mark, partner at  RPC and member of the Law Society’s IP committee, said that while the decision “may initially trouble brand owners,” it would not affect their ability to protect “core goods and services”.

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More on this story

15 June 2020   Simon Clark, Lucie Fortune and Elisa Lindemann of Bristows unpick the English High Court’s ruling in Sky v SkyKick, one of the most significant trademark decisions of the year.
18 May 2020   Toyota has been blocked from registering its flying car brand as an EU trademark by UK telecommunications provider Sky, which said it could be mistaken as being the company behind the products.
2 July 2020   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.