In a case where Sky alleged that use of Skykick infringed its SKY marks, Arnold J referred the following questions to the CJEU: (i) can a registered EU trade mark be declared invalid on the ground that it is registered for goods and services that are not specified with sufficient clarity and precision (and does "computer software" lack sufficient clarity or precision); and (ii) can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services. Hilary Atherton reports.
Sky alleged that Skykick had infringed four of its EU trade marks and one UK trade mark comprising the word SKY by use of the sign 'SkyKick' and variants thereof, and that it had committed passing off. SkyKick used the sign 'SkyKick' in relation to a product which automated the process of migrating a business's email accounts from Microsoft Office to Microsoft Office 365. It provided this product to Microsoft 'partners' who were specialised IT providers and acted as re-sellers of Microsoft products. SkyKick denied infringement and passing off and counterclaimed for a declaration that the SKY marks were wholly or partially invalid because their specifications lacked clarity and precision and that the marks were registered in bad faith.
Can lack of clarity and precision of the specification be asserted as a ground of invalidity?
The Judge noted that the CJEU's decision in IP TRANSLATOR (Case C-307/10) required that an applicant for a trade mark must specify the goods and services in respect of which registration was sought with sufficient clarity and precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the mark. However, it did not necessarily follow that, if the applicant failed to do so and the office failed to ensure that the applicant rectified the lack of clarity or precision during the course of examination, the mark could be declared invalid on that ground after registration. He therefore referred this question to the CJEU.
The Judge was of the view that "computer software" for which Sky's marks were registered was too broad and conferred too broad a monopoly on a proprietor. However, he said that it did not necessarily follow that the term was lacking in clarity and precision, and he therefore also referred this question to the CJEU.
Validity of the SKY marks: bad faith
SkyKick contended that the SKY marks were registered in bad faith because Sky did not intend to use the marks in relation to all of the goods and services specified in their specifications. The Judge therefore referred to the CJEU the questions: (i) can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services?; (ii) if the answer is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services?; and (iii) is Section 32(3) (which requires a declaration of intention to use a UK trade mark to be made on application) compatible with the Directive?
Territorial aspects of Sky's claim for infringement of its EU marks
Arnold J said that, if Sky were able to establish a likelihood of confusion under Article 9(2)(b) in at least part of the EU, then it would be entitled to EU-wide relief unless SkyKick demonstrated that there was no likelihood of confusion in other parts of the EU. Although the Judge thought there was more room for a different conclusion under Article 9(2)(c), it was not necessary for him to consider the point.
Infringement under Article 9(2)(b)
Arnold J was of the view that, if the SKY marks were validly registered in respect of the goods and services relied on by Sky, then they were infringed. This was in view of the distinctive character of the SKY marks, the identity of the goods and services, and the similarity between the signs which meant that the average consumer was capable of perceiving the 'SkyKick' signs as a sub-brand of SKY. However, only customers and end users of SkyKick's goods and services were likely to be confused, not Microsoft partners who would pay a high degree of care and attention.
Infringement under Article 9(2)(c)
The Judge found no infringement under Article 9(2)(c). In the absence of a likelihood of confusion, he was not persuaded that there was any real risk of detriment to the distinctive character of the SKY marks. It was not suggested that SkyKick intended to take advantage of the reputation of SKY marks and no reason for believing that there was likely to be any transfer of image from SKY to SkyKick.
Own name defence
The Judge was not satisfied that SkyKick's use of its name was in accordance with honest commercial practices because SkyKick had not acted fairly in relation to Sky's legitimate interests. In particular, he considered that Sky was justified in their concern that confusion may yet occur in the future.
The Judge dismissed Sky's passing off claim. Although Sky's extensive actual use of SKY formative marks supported the existence of a misrepresentation, it also militated against there being a misrepresentation, particularly given the absence of evidence of actual confusion.