Sky Plc & Ors v Skykick UK Ltd & Anor

Factual and Procedural Background

This case involves Claimants, a group of companies collectively referred to as Sky, asserting that Defendants, collectively referred to as SkyKick, infringed four European Union trade marks and one United Kingdom trade mark owned by the Claimants. The marks consist of the word SKY and related figurative elements (the Trade Marks). The Claimants allege infringement through the Defendants' use of the sign SkyKick and variants thereof, and also claim passing off. The Defendants deny infringement and passing off, and counterclaim that the Trade Marks are wholly or partly invalid due to lack of clarity and precision in the goods and services specifications and bad faith in the applications. The infringement claims concerning the EU Trade Marks cover the entire European Union, while the UK Trade Mark claims are confined to the UK.

The Defendants commenced their business in the USA and expanded into the EU around November 2014. The proceedings began with a letter before claim in January 2016 and were formally commenced in May 2016. The case proceeded to trial in January 2018 after a pre-trial application for a reference to the Court of Justice of the European Union was dismissed. The Defendants also made cancellation applications against the Claimants’ EU Trade Marks, all of which were abandoned. The Defendants filed an international trade mark application for SKYKICK but withdrew the EU designation following opposition by the Claimants.

Legal Issues Presented

1. Whether the specifications of goods and services for the Trade Marks are sufficiently clear and precise to be valid under European trade mark law.
2. Whether the Trade Marks were applied for in bad faith due to the Claimants' alleged lack of intention to use the Trade Marks for all specified goods and services.
3. The extent to which partial bad faith in the application affects the validity of the Trade Marks—whether partial or total invalidity applies.
4. The territorial scope of the Claimants’ infringement claims for the EU Trade Marks, including whether EU-wide relief is appropriate.
5. Whether the Defendants’ use of the sign SkyKick infringes the Trade Marks under Article 9(2)(b) and/or Article 9(2)(c) of the Regulation and corresponding provisions of the Directive.
6. Whether the Defendants can rely on the own name defence under Article 12(a) of the Regulation and Article 6(1)(a) of the Directive, particularly in light of amendments restricting this defence to natural persons.
7. Whether the Defendants’ use of the sign SkyKick amounts to passing off.
8. Whether the amendments to Article 12(a) of Regulation 207/2009 restricting the own name defence to natural persons are valid in light of EU fundamental rights.

Arguments of the Parties

Claimants' Arguments

• The Trade Marks are validly registered and have a moderately high inherent distinctive character.
• The specifications of goods and services are clear and precise, or at least not lacking to an extent that invalidates the marks.
• The Defendants’ use of SkyKick is infringing due to likelihood of confusion with the Trade Marks, particularly among Customers and End Users.
• The Defendants do not have an honest practices defence and cannot rely on the own name defence.
• The Claimants seek EU-wide relief for infringement of the EU Trade Marks.
• The Defendants’ bad faith allegations are unfounded as the Claimants had reasonable commercial rationale for broad specifications.
• The passing off claim should be dismissed.

Defendants' Arguments

• The specifications of the Trade Marks lack clarity and precision, particularly broad terms such as "computer software".
• The Trade Marks were applied for in bad faith as the Claimants did not intend to use them in relation to all specified goods and services.
• Partial bad faith should lead to partial or total invalidity of the Trade Marks.
• The Defendants’ use of SkyKick is their own name and should be permitted under the own name defence, including arguments that the amendment restricting this defence to natural persons is invalid.
• The Defendants contend that the Claimants’ case for infringement and passing off is unsubstantiated, particularly due to the absence of evidence of actual confusion.
• The territorial scope of the infringement claim should be limited to the UK, Ireland, Germany, and Italy.
• The Defendants relied on searches and evidence showing widespread use of SKY formative marks by third parties.

Table of Precedents Cited

Court's Reasoning and Analysis

The Court conducted a detailed examination of the factual background, the specifications of the Trade Marks, and the legislative and case law framework governing trade mark validity, bad faith, infringement, and defences.

Regarding the clarity and precision of the specifications, the Court recognized the tension between broad class headings and the need for sufficient specificity to define the scope of protection. The Court acknowledged the IP TRANSLATOR judgment and subsequent communications clarifying that specifications must be sufficiently clear and precise, but noted uncertainty whether lack of clarity post-registration is a ground for invalidity. The Court found that terms like "computer software" are broad and potentially overbroad, raising issues requiring guidance from the Court of Justice of the European Union (CJEU).

On bad faith, the Court reviewed extensive CJEU and General Court case law, concluding that applying to register a trade mark without intent to use for all specified goods and services may constitute bad faith in certain circumstances. The Court found that the Claimants had a reasonable commercial rationale for broad specifications in some respects but also included goods and services for which there was no reasonable intention to use the marks. The Court concluded that the applications were partly made in bad faith, warranting referral to the CJEU on whether partial bad faith leads to partial or total invalidity.

The Court considered the territorial scope and held that EU-wide relief is generally appropriate unless the Defendants can show no likelihood of confusion in parts of the EU. As no such evidence was presented, the Court accepted EU-wide relief if infringement is established.

In assessing infringement under Article 9(2)(b), the Court found that the Defendants’ goods and services are identical or similar to some of the goods and services covered by the Trade Marks. The sign SkyKick was found to be perceived as a sub-brand of SKY by the average consumer. The Court concluded there is a likelihood of confusion among Customers and End Users, despite the absence of evidence of actual confusion, due to the lower degree of care exercised by these groups.

Regarding infringement under Article 9(2)(c), the Court found that the Trade Marks have a reputation in certain fields but not others. It concluded that there was no established case of unfair advantage or detriment to the Trade Marks’ distinctive character arising from the Defendants’ use.

On the own name defence, the Court found that the Defendants’ use of SkyKick is not in accordance with honest practices in industrial and commercial matters, considering factors such as knowledge of the Claimants’ rights, absence of competent legal advice, and the potential for future confusion. The Court rejected the Defendants’ argument that the amendment restricting the own name defence to natural persons is invalid, holding that the measure is justified and not manifestly inappropriate.

Finally, the Court addressed passing off and found that the Claimants failed to establish a misrepresentation given the actual extent of use and absence of confusion, leading to dismissal of the passing off claim.

Given the complexity and importance of the issues, the Court exercised its discretion to refer key questions relating to specification clarity and bad faith to the CJEU for guidance.

Holding and Implications

The Court referred key questions of law to the Court of Justice of the European Union concerning:

• Whether an EU or national trade mark can be declared wholly or partly invalid due to lack of clarity or precision in the specification of goods and services;
• Whether terms such as "computer software" lack sufficient clarity or precision;
• Whether applying to register a trade mark without intent to use it in relation to all specified goods and services constitutes bad faith;
• Whether partial bad faith can lead to partial invalidity;
• The compatibility of section 32(3) of the UK Trade Marks Act 1994 with EU law.

Direct rulings:

• If the Trade Marks are validly registered, the Defendants have infringed them under Article 9(2)(b) of the Regulation/Article 10(2)(b) of the Directive.
• The Defendants do not have an own name defence as their use is not in accordance with honest commercial practices.
• The Claimants’ passing off claim is dismissed.

Implications: The decision establishes that validity of trade marks with broad specifications and bad faith allegations require careful legal consideration and may necessitate CJEU guidance. It confirms that broad specifications without intent to use may constitute bad faith, with potential partial invalidity. The ruling clarifies that own name defences for legal persons are restricted and must be exercised honestly. The dismissal of the passing off claim indicates that actual use and confusion evidence remain critical. The Court’s referral ensures that these important legal questions will be authoritatively resolved, affecting future trade mark registration and enforcement strategies. No new precedent is set by the Court itself, but the referral signals significant forthcoming guidance.