28 July 2022TrademarksStaff Writer

UK Supreme Court to hear major trademark clash

Bad faith registrations and overly broad trademarks under review | ‘Good news’ say lawyers | Potter Clarkson.

The UK Supreme Court has granted leave to appeal the English Court of Appeal’s ruling in Sky v SkyKick, one of the most important UK trademark decisions in recent years.

In July last year, following the Court of Appeals’ decision, WIPR reported that cloud management company SkyKick would take the Court of Appeal judgment in favour of UK broadcast giant Sky to the Supreme Court.

At the time, Justice Arnold of the Court of Appeal said that he was “in no doubt that Sky's appeal on the issue of bad faith should be allowed”. Additionally, Arnold reinstated Sky’s partially invalidated trademarks.

The long-running clash stems back to a time when 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.

SkyKick denied the allegations, counterclaiming that Sky’s marks were partially invalid because they had been applied for in bad faith.

The English High Court  found that 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.

The court cut down Sky’s trademarks for ‘computer software’ to cover more specific contexts, such as uses of computer software in televisions and mobile phones. However, the court also found that SkyKick had infringed Sky’s trademarks on a limited basis.

Both companies were granted leave to appeal. Sky emerged victorious, with the Court of Appeal ruling that the partial invalidity finding against Sky be reversed for the selected goods and services and denied SkyKick’s cross-appeal on partial validity.

Now, the UK Supreme Court will review this decision.

Dispute ‘lives to fight another day’

Mark Kramer, solicitor and partner at Potter Clarkson, said: “Everyone thought there was a good chance that this case had been put to bed once and for all when the Court of Appeal handed down its decision a year ago, but it lives to fight another day.”

He said that the case making it to the Supreme Court says a lot about its significance which “cuts to the heart of trademark specifications and filing practices”.

Although there is currently no concrete information about the basis of appeal, Kramer expects that it will likely relate to how broad a specification may be before risking bad faith.

“Either way, it is good news that we will eventually get clarity on the points at issue but this clarity will take some time to arrive, and meanwhile the uncertainty for rights continues,” he said.

“Another point to consider is that the UK is in a very different position to where it was earlier in this case and much further down the road from Brexit. This case may provide an early opportunity to diverge from EU law and set new parameters for the scope of trademarks in the UK?”

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