The Sky™ has limits

The High Court in London recently gave judgement on foot of a ruling by the European Court of Justice (CJEU) concerning the registration of trademarks for the mere sake of it.

The Claimant, Sky Plc, had adopted a broad-brush approach in filing trademarks with extensive specifications to cover a plethora of goods and services – some of which, it transpired, they had no intention of using.  This was pursuant to a deliberate strategy of seeking broad protections regardless of any real commercial justification.

The Defendant cloud computing company, Skykick, argued that this constituted bad faith.

The CJEU largely agreed, before referring the matter back to the High Court.

Giving judgement, Lord Justice Arnold went further and was critical of trademark applications made ‘purely as a legal weapon against third parties’ in declaring large aspects of Sky’s trademark registrations to be invalid.  That said, he did find that SkyKick had:

…infringed the Trade Marks at least in so far as the Trade Marks are registered for “electronic mail services”. The fact that the Trade Marks are partially invalid on the ground that they were applied for partly in bad faith does not affect this.

The decision, although not dissimilar to the ‘use it or lose it’ approach of the EU Intellectual Property Office (EUIPO), represents a significant shift in thinking for UK courts more akin to the jurisprudence of the USA.

For brand owners, the key takeaway should be that if you actually use your trademark for its specified purpose, then you should not be unduly concerned.  It is with broad specifications used ‘purely as a legal weapon’ that difficulties may arise.  

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