SkyKick UK Ltd & Anor v Sky Ltd & Ors

Factual and Procedural Background

The proceedings concern alleged infringement and validity of certain European Union trade marks. They were instituted in the High Court of The United Kingdom before 31 December 2020, i.e., before the end of the Brexit transition period. After several procedural stages—including a preliminary reference to the Court of Justice of the European Union and an appeal—the matter reached the Supreme Court. The key question addressed in this judgment is the domestic effect of the United Kingdom’s withdrawal from the European Union on those pending trade-mark proceedings.

Legal Issues Presented

1. Whether United Kingdom courts continue to be “EU trade mark courts” with jurisdiction under Chapter 10 of Regulation (EU) 2017/1001 in respect of legal proceedings instituted before the end of the Brexit transition period.
2. Whether section 7A of the European Union (Withdrawal) Act 2018, when read with the Withdrawal Agreement, gives primacy to directly applicable remedies and procedures over incompatible domestic legislation.
3. Whether paragraph 20 of Schedule 2A to the Trade Marks Act 1994 preserves the full range of remedies—including cross-EU injunctions—available under EU law for those pending cases.
4. Whether subordinate UK legislation, in particular paragraph 7(2) of Schedule 5 to the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, limits that jurisdiction to acts occurring only within The United Kingdom.

Arguments of the Parties

Company A’s Arguments

• The repeal of section 52 of the Trade Marks Act 1994 impliedly repealed domestic regulations that had designated UK courts as EU trade-mark courts, thereby removing any post-transition jurisdiction.
• Paragraph 7(2) of Schedule 5 to the 2019 Regulations saves jurisdiction solely “in the United Kingdom,” restricting the court to enforcement of EU trade marks only within UK territory.
• The explanatory memorandum to the 2019 Regulations confirms that any post-transition actions or remedies are confined to the comparable UK right, not to the EU trade mark as a unitary right.
• It would be legally anomalous and surprising for UK courts to retain EU-wide jurisdiction once the UK has left the EU and EU trade marks have been converted into comparable domestic rights.

Table of Precedents Cited

Court's Reasoning and Analysis

The Court, speaking through Judge Reed and concurring with Judge Kitchin, proceeded in five analytical stages:

1. European Union (Withdrawal) Act 2018. Section 7A, inserted by the 2020 Act, reproduces the direct applicability and supremacy mechanisms formerly found in section 2 of the European Communities Act 1972. Under section 7A(2)–(3), any rights, remedies or procedures that the Withdrawal Agreement requires to have domestic effect must prevail over inconsistent national legislation.
2. Withdrawal Agreement. Article 67(1) makes Chapter 10 of the EU Trade Mark Regulation applicable to proceedings instituted before 31 December 2020. Article 4(1)–(2) mandates that such Union law produces the same legal effects in the UK as in EU Member States and requires UK courts to disapply incompatible domestic provisions.
3. EU Trade Mark Regulation. Chapter 10 vests exclusive jurisdiction in “EU trade mark courts” for infringement and validity actions with unitary effect across all Member States. Because the action here commenced pre-transition, those jurisdictional provisions remain directly applicable.
4. Trade Marks Act 1994, Schedule 2A paragraph 20. Parliament expressly continued the designation and powers of UK courts as EU trade-mark courts for proceedings “pending” on IP completion day. The schedule allows full EU-level remedies while adding powers to grant relief concerning the new “comparable” UK marks.
5. Refutation of Company A’s statutory arguments. The Court held that (a) paragraph 7(2) of Schedule 5 to the 2019 Regulations cannot override primary legislation or section 7A’s supremacy clause; (b) even if the enabling power in section 52 was repealed, paragraph 20 independently maintains court designation; and (c) the explanatory memorandum carries no weight, especially as it pre-dated the Withdrawal Agreement.

Holding and Implications

The appeal was ALLOWED to the extent proposed by Judge Kitchin.

The Supreme Court confirmed that UK courts remain EU trade-mark courts, with EU-wide jurisdiction and remedies, in actions instituted before the end of the Brexit transition period. The decision secures continuity and legal certainty for litigants caught in transition and ensures that withdrawal legislation is interpreted in harmony with the Withdrawal Agreement. No new precedent was set beyond clarifying the interaction between domestic Brexit legislation and existing EU-derived rights.