Sky Plc & Ors v Skykick UK Ltd & Anor

A trade mark specification must identify goods and services with sufficient clarity and precision to define the protection sought. Whether failure to satisfy that requirement can invalidate a registered mark, and whether computer software is sufficiently clear, required a reference to the CJEU. Applying without any intention to use a mark for specified goods or services may constitute bad faith, although a broad specification or contingent future intention is not enough where there is a reasonable commercial rationale. If the marks were valid, use of SkyKick would create a likelihood of confusion and would not qualify for the own-name defence. The passing-off claim failed.

Sky alleged that SkyKick infringed four EU trade marks and one UK trade mark comprising or incorporating SKY, by using SkyKick and related signs, and committed passing off. SkyKick denied liability and counterclaimed that the marks were wholly or partly invalid because their specifications lacked clarity and precision and because the applications were made in bad faith.

A pre-trial reference application had been dismissed by Birss J: [2017] EWHC 1769 (Ch). The central issues were whether the registrations were valid, whether SkyKick’s use caused confusion or took unfair advantage, whether the own-name defence applied, and whether the parties’ evidence established passing off.

1. Validity and clarity. Under Regulation 2017/1001 and the corresponding Directive, goods and services must be specified with sufficient clarity and precision. The court considered registration for computer software unjustifiably broad, although the term appeared sufficiently clear to permit comparison. Whether lack of clarity or precision could invalidate a registered mark, and whether that term failed the requirement, were not acte clair and were referred to the CJEU.
2. Bad faith. The authorities indicated that applying without any intention to use a mark for specified goods or services may constitute bad faith. A broad specification alone, or a contingent intention to use in the future, was insufficient where the applicant had a reasonable commercial rationale. The evidence showed that Sky intended to obtain protection extending beyond any commercially justified use, but the extent and legal consequence of invalidity required CJEU guidance. The court considered partial invalidity legally possible, although not acte clair.
3. Territory and confusion. If confusion was established in part of the EU, EU-wide relief followed unless SkyKick showed that confusion could not arise elsewhere. Assuming validity, SkyKick’s goods and services were identical or similar to several registered goods and services. The sign SkyKick could be perceived as a SKY sub-brand. Partners were unlikely to be confused, but Customers and End Users were. Article 9(2)(b) infringement was therefore established conditionally.
4. Reputation and own name. In the absence of confusion, Sky had not shown detriment to distinctive character or unfair advantage under Article 9(2)(c). SkyKick’s use was not in accordance with honest practices: it knew of Sky’s rights, should have appreciated the risk of confusion, lacked sufficient justification, and interfered with Sky’s legitimate expansion. The restriction of the own-name defence to natural persons was valid.
5. Passing off and order. Passing off was assessed by reference to Sky’s actual use, although Sky could rely on its SKY formative marks. The issue was finely balanced, but the absence of actual confusion and the limited overlap in actual trading favoured SkyKick. The claim for passing off was dismissed. Questions on validity and bad faith were referred to the CJEU.

This was a first-instance decision. The judgment records that SkyKick’s application for a pre-trial reference had been dismissed by Birss J in [2017] EWHC 1769 (Ch).