BREAKING: Sky's the limit for CJEU references in Sky v SkyKick trade mark battle

Arnold J kicks off CJEU references in Sky v SkyKick 

After five days in court and 358 paragraphs, Mr Justice Arnold has just handed down his decision in Sky v Skykick [2018] EWHC 155.  The claimants, Sky, argued that SkyKick infringed four of their EU trade marks (a mixture of "SKY" figurative and word marks), one UK trade mark (a "SKY" word mark) and committed passing off by use of the sign "SkyKick".  SkyKick argued that the marks were wholly or partly invalid on the grounds that the specifications of the goods and services lacked clarity and precision and that the applications were made in bad faith.  As Mr Justice Arnold said in paragraph 1 "[t]he case raises important issues of European trade mark law", which necessitates references to the CJEU on issues relating to (i) bad faith for filing with no intention to use and (ii) IP TRANSLATOR clarity issues.  

The AmeriKat has not yet had any time to digest the 94 pages of trade mark prose, but here is a summary, as provided for by Arnold J at [358]:

"i) SkyKick’s contention that the Trade Marks are partly invalid because the relevant parts of the specifications of goods and services lack clarity and precision raises issues upon which guidance from the CJEU is required; 

ii) SkyKick’s contention that the Trade Marks are wholly or partly invalid because the applications were made in bad faith since Sky did not intend to use the Trade Marks in relation to all of the specified goods and services also raises issues upon which guidance from the CJEU is required; 

iii) I shall therefore refer questions along the lines set out in paragraphs 174 and 258 above to the CJEU; 

iv) If the Trade Marks are valid, then there is a likelihood of confusion within Article 9(2)(b) of the Regulation/Article 10(2)(b) of the Directive as a result of SkyKick’s use of the SkyKick sign; 

v) If the Trade Marks are valid, and there is a likelihood of confusion within Article 9(2)(b) of the Regulation/Article 10(2)(b) of the Directive, SkyKick’s use of the SkyKick sign is not in accordance with honest practices in industrial and commercial matters and therefore SkyKick do not have an own name defence; and 

vi) Sky’s claim for passing off is dismissed."

The questions referred to the CJEU are as follows:

"(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 are lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark? 

(2) If the answer to (1) is yes, is a term such as “computer software” lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark?

(3) 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? 

(4) If the answer to question (3) 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?

(5) Is section 32(3) of the 1994 Act compatible with the Directive and its predecessors?"

The IPKat will be back with further analysis and insight once the decision has had a chance to sink in further.