Sky's Defensive Filings Partially Succumb To Skykick's Bad-faith Claims

Published date19 January 2021
Subject MatterIntellectual Property, Trademark
Law FirmFross Zelnick Lehrman & Zissu, PC
AuthorMr Sahil Yadav

Sky Plc & Ors v SkyKick UK Ltd & Anr;[2020] EWHC 990 (Ch)

The UK High Court recently heard the Sky v. Skykick case ([2018] EWHC 155 (Ch)) case again after it had earlier referred it to the Court of Justice of the European Union ("CJEU") to decide the validity of Sky's registrations. The CJEU had held that inclusion of broad terms in identifications of goods ("computer software" in this case) is not grounds for invalidity, but that bad faith can be a ground for invalidity where there is no bona fide intention to use a mark.

The UK High Court applied the law clarified by the CJEU's judgment (which we discussed earlier here) to the facts of the case to reach its decision.

Background and Procedural History

Sky, Plc ("Sky") brought suit against Skykick, Inc. ("Skykick") at the UK High Court for infringement of several of its trademark registrations for SKY-formative marks.

In defense, Skykick alleged that Sky's registrations were invalid on the basis that Sky's trade mark specifications lacked clarity and precision because they were too broad, that the specifications included certain goods for which there was a clear lack of intention to use the marks, and such lack of intention constituted bad faith.

The UK High Court concluded that Skykick infringed Sky's trademarks if these trademarks were determined to be validly registered. However, on the question of the validity of Sky's trademarks, it sought the guidance of the CJEU on the following questions:

  • Can a trade mark be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision?
  • If yes, whether certain terms commonly used in trade mark specifications, e.g., 'computer software' are invalid on the ground they lack clarity and precision?
  • Whether there should be a finding of bad faith when an application is made covering a wide list of goods and services with no intention to use the mark for all the specified goods and services?
  • Whether a mark found invalid because the application was made in bad faith due to lack of intention to use the mark in relation to all the specified goods/services should be struck down in its entirety, or only for the affected goods/services?

On October 16, 2019, the Advocate General of the CJEU ("AG") issued a non-binding opinion on these questions and stated that although a lack of clarity and precision was not a ground for invalidity of a registered trade mark...

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