Skyscape Cloud Services Ltd v Sky Plc & Ors

A declaration of non-infringement is discretionary and should be granted only where it serves a useful purpose and the underlying issue is sufficiently clearly defined to be justiciable. A claimant seeking a detailed declaration must identify the relevant acts and combinations of signs and goods or services in a form enabling the defendant fairly to prepare its case. In assessing trade mark infringement, similarity of mark and sign and similarity of goods or services are threshold requirements. The likelihood of confusion must then be assessed globally through the eyes of the average consumer, taking account of the sign’s context and the imperfect recollection of the earlier mark. A declaration of non-infringement was refused where use of the sign for email services was likely to cause confusion and would probably cause dilution and unfair advantage.

Skyscape supplied cloud-computing services to public-sector bodies under the G-Cloud scheme. Following correspondence alleging infringement of Sky Group trade marks, Skyscape sought declarations that its use of the signs Skyscape, Skyscape Cloud Services and associated logos did not infringe four EU trade marks and one UK trade mark.

Sky brought no infringement counterclaim. The principal issue was whether the proposed declaration, which covered numerous signs, presentations, services and future uses, was sufficiently defined and, if so, whether use of “Skyscape” for email services would infringe the SKY mark under art.9(1)(b) or art.9(1)(c) of the Trade Mark Regulation.

1. Declaration of non-infringement. The jurisdiction to grant a negative declaration was discretionary. The court should reject its use where it serves no useful purpose, but may grant it where it assists the achievement of justice. The underlying issue must be sufficiently clearly defined to be properly justiciable, as explained in Nokia Corp v InterDigital Corp [2006] EWHC 802 (Pat).
2. Skyscape’s proposed declaration covered a large number of combinations of signs, presentations, services and trade mark specifications. It was not fair to require Sky to address every possible subset, particularly where the relevant alternatives had not been identified in good time or tested in evidence. The fall-back drafts were also uncertain or served too late. They were therefore not considered.
3. For art.9(1)(b), similarity between mark and sign and similarity between goods or services were threshold requirements. In a declaration claim the practical burden was correspondingly heavy: Skyscape had to establish that there was not even faint similarity. Those threshold requirements were satisfied.
4. The average consumer was to be identified by reference to the services described in the proposed declaration, not merely Skyscape’s typical customers. The relevant consumer could be a person within a small public-sector entity with no specialist IT knowledge. The assessment had to consider the sign in context and the consumer’s imperfect recollection of the earlier mark.
5. There was a likelihood that a significant proportion of the relevant public would regard “Skyscape” used for email services as another service offered by Sky, or as a replacement or modified Sky email service. Skyscape therefore failed to establish non-infringement under art.9(1)(b).
6. Under art.9(1)(c), use of “Skyscape” for email services would call the SKY mark to mind. Skyscape failed to establish that the use would not cause detriment to the distinctive character of the mark or that it would not take unfair advantage of its distinctive character or repute. There was no sufficient basis for finding detriment to reputation, and no due-cause case was advanced.
7. The application for a declaration of non-infringement was dismissed.

Not stated in the judgment.