Sky Plc & Ors v Skykick, UK Ltd & Anor, Court of Appeal - Civil Division, September 06, 2018, [2018] EWCA Civ 2004

Resolution Date:September 06, 2018
Issuing Organization:Civil Division
Actores:Sky Plc & Ors v Skykick, UK Ltd & Anor

Neutral Citation Number: [2018] EWCA Civ 2004

Case No: A3/2018/1026







[2018] EWHC 155 (Ch)

Royal Courts of Justice

Strand, London, WC2A 2LL

Date: 06/09/2018

Before :


- and -


- - - - - - - - - - - - - - - - - - - - -

Between :

- - - - - - - - - - - - - - - - - - - - -

- - - - - - - - - - - - - - - - - - - - -

Geoffrey Hobbs QC (instructed by Mishcon de Reya LLP) for the Appellants

Simon Malynicz QC (instructed by FieldFisher LLP) for the Respondents

Hearing date: 30 July 2018

- - - - - - - - - - - - - - - - - - - - -

Lord Justice Floyd:

  1. This is an adjourned application for permission to appeal from two judgments of Arnold J in an action for passing off and trade mark infringement. In the course of his main judgment Arnold J decided certain questions of fact and law, but referred questions of EU law to the Court of Justice of the European Union (``CJEU''). Those questions have been transmitted to the CJEU, who have registered the reference as Case C-371/18. At the conclusion of the oral hearing we announced our decision that permission to appeal would be refused. These are my reasons for joining in the decision to refuse permission to appeal.

  2. In order to understand how the appeal comes to this court at this stage it is necessary to set out the issues, which I shall attempt to do as concisely as possible.

  3. The applicants (together Sky) have made extensive use of the trade mark SKY in relation to a large range of goods and services, and in particular, in relation to (i) television broadcasting (ii) telephony and (iii) broadband provision. The mark SKY is very well known in the UK, at least in relation to those goods and services. The judge made extensive findings as to the breadth of Sky's use of the marks, in relation to television, telephony, internet, email, online data storage, online music downloads, computer software, betting services, tickets, games, magazines, financial services, insurance, educational services, travel, installation services, and transport. By 30 June 2006 the turnover of Sky's business was over £4.1 billion.

  4. Sky own, between them, four registered EU trade marks and one registered UK trade mark either for the word SKY or for figurative depictions of that word. These marks were registered for a wide range of goods and services, either by reference to class headings of the Nice classification, or by reference to those class headings supplemented by a series of increasingly detailed descriptions of more specific goods and services.

  5. For the purpose of their infringement claim Sky relied on the registration of their marks in eight descriptions of goods and services, namely:

    i. computer software (Class 9);

    ii. computer software supplied from the internet (Class 9);

    iii. computer software and telecoms apparatus to enable connection to databases and the internet (Class 9);

    iv. data storage (Class 9);

    v. telecommunications services (Class 38);

    vi. electronic mail services (Class 38);

    vii. internet portal services (Class 38); and

    viii. computer services for accessing and retrieving information/data via a computer or computer network (Class 38).

  6. The respondent, SkyKick, is a small to medium sized enterprise which was set up in 2010. Its core idea was to develop a product which would largely automate the process of migrating from Microsoft Office to Office 365. As Office 365 provides access to cloud based productivity services, SkyKick considered the name SKYKICK to be appropriate, because the company's service would ``kick'' i.e. migrate the client's data into the ``sky'' i.e. the cloud.

  7. Sky took objection to that choice of name and commenced these proceedings in May 2016. They complained of infringement under what were Articles 9(2)(b) and 9(2)(c) of Regulation 207/2009. In return, SkyKick contended that the marks should be declared partly invalid on the ground that they were registered for goods and services that are not specified with sufficient clarity and precision. This is a contention which derives from the decision of the CJEU in Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks (IP Translator) [2013] Bus LR 740, but it has never been recognised that the contention gives rise to a ground of invalidity. SkyKick also contended that the trade marks were registered in bad faith because, at the date of the application for registration, Sky did not intend to use the marks for all the goods and services which fell within the specification. The consequence was that the marks were either invalid in their entirety, or alternatively invalid to the extent that there was no genuine intention to use. Although a trade mark can be declared invalid for non-use when five years have elapsed from the date of registration, there is no express ground of invalidity based on lack of intention to use at the date of registration.

  8. SkyKick's first point, based on IP Translator, raised two issues. The first was whether lack of clarity or precision could be a ground of invalidity of a mark once registered. The second was whether the specification of any of the marks were objectionable on that ground. Sky accepted that the first point was not acte clair. They contended, however, that the present case was one where it could be decided that the specifications were not objectionable on this ground, even if such a ground were available.

  9. The judge considered the second issue at [162] to [173] of his first judgment. He recited SkyKick's contention that the terms ``computer software'', ``computer software supplied from the internet'', and ``computer software and telecoms apparatus to enable connection to databases and the internet'' were lacking in clarity and precision, and Sky's contrary contention that they were not. He accordingly decided to refer two questions to the CJEU:

    ``(1) Can an EU trade mark or a national trade mark registered in a Member State 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...

To continue reading