A Skykick in the Teeth - Arnold LJ holds Sky's Trade Marks applied for in bad faith

Published

Apr 28 2020

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Partner
UK

I work as a partner here at Bird & Bird in London, specialising in intellectual property. Over the years, I have helped build a market leading practice in trade mark, copyright, design and database rights.

Practices

Trade Marks & Brands

Sectors

Media, Entertainment and Sport

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Today Lord Justice Arnold handed down Judgment in the important case of Sky v Skykick. The Judgment applies the CJEU's decision of January 2020 discussed in our article here.

He found that the inclusion of the term "computer software" in Sky's trade mark specification did amount to bad faith as at the date of filing Sky had had no intention of using the mark in relation to all computer software. He therefore narrowed the specification to software for which Sky did have an intention to use. There were also findings of bad faith in relation to other terms such as "data storage" and "computer services for accessing and retrieving information/data via a computer or computer network" which were also narrowed in scope.

The Defendant, Skykick, were however still found liable for infringement. Their services were found to be identical with Sky's registration for "electronic email services" which had not been challenged on the basis of bad faith.

Implications

The decision is likely to have important implications for trade mark owners with broad trade mark specifications, especially specifications including terms such as "computer software", "data services" or "computer services for accessing and retrieving information/data via a computer or computer network".

Further analysis will follow shortly.