Sky Plc & Ors v Skykick UK Ltd & Anor

A trade mark specification cannot be invalidated merely because its terms lack clarity or precision. Bad faith invalidity is assessed only in relation to goods or services for which bad faith is proved. The court must cut down a broad specification only to the extent justified by the proven bad faith, leaving unaffected goods and services where bad faith is not established. A broad category is not automatically invalid merely because the proprietor did not intend to use the mark across its whole breadth. General terms are construed by their literal meaning; services are confined to their core meanings; unclear terms are narrowly construed; and wholly uninterpretable terms are disregarded.

The judgment followed an earlier trial judgment and a reference to the Court of Justice of the European Union. The CJEU ruled that lack of clarity and precision was not a ground of trade mark invalidity, but that an application made without an intention to use the mark could constitute bad faith in defined circumstances, including only for particular goods or services.

The court then applied those rulings to Sky’s registrations and SkyKick’s counterclaim. The issues included the extent of partial invalidity, the proper construction of broad specifications, the effect on infringement, and the meaning of “telecommunications services”.

1. Partial invalidity. The specifications could not be invalidated for lack of clarity or precision. The bad-faith counterclaim succeeded only to the extent that bad faith was proved. Sky had deliberately sought excessively broad protection without commercial justification, including as a legal weapon against third parties. In the case of UK604, a partly false declaration under UK Trade Marks Act 1994, section 32(3), strengthened the conclusion of bad faith.
2. Extent of reduction. The court rejected the submission that “computer software” was wholly invalid merely because Sky did not intend to use the mark across the entire category. Sky had used the marks for some software and had a legitimate interest in protection wider than actual use, including a modest penumbra of protection. The specifications were therefore cut down only to the extent required by the bad faith proved.
3. Interpretation of specifications. General terms cover goods and services clearly within their literal meaning. Services are confined to their core meanings. Unclear or imprecise terms are construed narrowly, and a term which cannot be interpreted is disregarded. “Telecommunications services” meant services consisting of or relating to telecommunication per se. Email services fell within that expression, but the term added nothing to the separate infringement case based on “electronic mail services”.
4. Infringement. The registrations remained valid for “telecommunications services” and “electronic mail services”, because bad faith had not been pleaded in relation to those services. SkyKick’s email migration service was identical to “electronic mail services”, and the likelihood of confusion requirement was satisfied. SkyKick therefore infringed the marks at least in relation to those services.
5. The specifications for “computer software”, “computer software supplied from the internet”, computer software and telecoms apparatus, data storage, and computer services for accessing and retrieving information were limited as specified in the judgment. No limitation was required for “internet portal services”.

• Court of Appeal dismissed permission to appeal against the reference order: [2018] EWCA Civ 2004, reported at [2019] RPC 3.
• High Court (Chancery Division) earlier trial judgment: [2018] EWHC 155 (Ch), reported at [2018] RPC 5; second judgment: [2018] EWHC 943 (Ch), reported at [2018] RPC 12.