27 July 2021TrademarksAlex Baldwin

SkyKick to appeal Sky TM dispute to the Supreme Court

Cloud management company  SkyKick will take an  English Court of Appeal judgment in favour of UK broadcast giant  Sky to the Supreme Court.

In the latest decision in the long-running case, Sky managed to convince the court to appeal a ruling that found it had acted in bad faith and “abused” the European trademark system in applying for its own marks, as well as reinstating its partially invalidated trademarks.

SkyKick, which saw the court dismiss its cross-appeal against the findings of infringement, and for a more extensive restriction of the trademarks, said that it was “disappointed” with the  ruling and will be taking “the next steps in the legal process” to appeal the decision to the UK Supreme Court.

Todd Schwartz and Evan Richman co-founders and CEOs of SkyKick said: "We are disappointed in the English Appeal Court’s decision to reverse the trial judge’s finding that Sky had acted in bad faith.

“SkyKick believes in its legal case to keep our name in Europe and will continue the legal process with an appeal to the UK Supreme Court. SkyKick is of the view that important issues of European trademark law remain to be resolved.”

‘Most important UK TM case’ in years

Sky had sought to block the company from using the sign ‘SkyKick’ in relation to “email migration and cloud storage services”, kickstarting an international dispute between the two companies.

Sky argued that SkyKick’s cloud migration and cloud backup products could pose a likelihood of confusion with the internet services it offers, including its Sky Broadband and Sky Photos.

Prior to arriving at the English Court of Appeals, the dispute had been subject to “no less than eight judgments and five rounds in court,” according to Joel Smith, partner at  Hogan Lovells.

It is, Smith added, “arguably the most important UK trademark case in the last five years.”

The appeal court ruled that the partial invalidity ruling against Sky be reversed for the Selected Goods and Services—including class 9 and 38 of the Nice Agreement—and denied SkyKick’s cross-appeal on partial validity.

A Sky spokesperson told WIPR: “We welcome the Court of Appeal’s judgment. At Sky, we always act in accordance with our understanding of trademark law and normal commercial practices regarding the protection of valuable trademarks.”

‘A win for brand owners’

Although the case could be heading to the Supreme Court, lawyers consider the appeals court ruling a boon for brands.

Sahira Khwaja, partner in the brands group at Hogan Lovells added: “The Court of Appeal has implicitly endorsed a sensible and proportionate approach to trademark filings, which will reassure brand owners.”

Smith added: “The decision will come as a welcome clarification to aid future strategy for filing for new trademarks by major brands.

“It will also play an important part in decisions by brands whether to enforce or not through litigation, making it less likely for brands to be concerned at attempts by infringers to invalidate their trademarks on grounds of bad faith.”

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28 June 2023   As the landmark case reaches the UK’s highest court, trademark lawyers tell WIPR that the unexpected is to be expected in this most unpredictable of disputes.
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.
28 July 2022   Bad faith registrations and overly broad trademarks under review | ‘Good news’ say lawyers | Potter Clarkson.