Sky Plc & Ors v Skykick UK Ltd & Anor

A High Court judge should not generally reconsider a judgment merely because a party says that it is wrong. The proper course is to seek permission to appeal. Reconsideration may be available before the order is perfected, but the power is subject to proper justification.

Terms in a trade mark specification may be invalid for lack of clarity and precision. The fact that an unclear term may receive a narrow interpretation in infringement or opposition proceedings does not establish that it cannot be invalid. Questions concerning the validity of broad terms such as computer software, the effect of bad faith, and the compatibility of section 32(3) of the Trade Marks Act 1994 required reference to the CJEU.

The proceedings concerned claims by Sky against SkyKick for trade mark infringement and passing off, together with SkyKick’s counterclaim challenging the validity of Sky’s trade marks. Following the main judgment, Sky applied for reconsideration or amplification of the reasons, and sought permission to appeal and a stay of the order referring questions to the CJEU.

SkyKick sought an extension of time to appeal the conclusion that it had no defence under Article 12(a) of the Regulation and Article 6(1)(a) of the Directive. The court determined whether reconsideration was justified, whether permission to appeal or a stay should be granted, and how the reference should proceed.

1. Reconsideration. Sky’s application was dismissed. Although a High Court judge may have power to reconsider a judgment before the order giving effect to it is sealed, the mere assertion that the judgment is wrong is insufficient justification. The appropriate course is to seek permission to appeal. The court also rejected the suggestion that the main judgment lacked adequate reasons.
2. Trade mark specifications. The court accepted that lack of clarity and precision could be asserted as a ground of invalidity. Decisions concerning the narrow interpretation of unclear terms in infringement or opposition proceedings did not establish the contrary. The court considered that computer software might be too general and variable to satisfy the requirements of clarity and precision, but required further guidance from the CJEU.
3. Bad faith. The court was not persuaded that the earlier authority relied on established that bad faith affecting some goods or services could not affect the whole registration. It remained arguable that bad faith could include an application made without any intention to use the mark, and that bad faith in relation to some goods or services might taint the entire application.
4. Reference and appeals. The court settled five questions for reference to the CJEU, including the validity of unclear specifications, the treatment of computer software, bad faith, partial good faith, and section 32(3) of the Trade Marks Act 1994. Permission to appeal was refused because the proposed appeals did not have a real prospect of success. A stay was refused because it would cause further delay.
5. SkyKick’s appeal. The court declared that it had made an appealable decision adverse to SkyKick concerning the Article 12(a) and Article 6(1)(a) defence. No extension of time was granted. Any application for permission had to be made promptly.

This was a first-instance judgment dealing with applications arising from the court’s earlier judgment and order for reference. The judgment refers to the main judgment handed down on 6 February 2018, but no citation for that judgment is stated.