SkyKicked: High Court confirms trade mark infringement

The SkyKick saga continues. Decision number three by Mr/Lord Justice Arnold in the High Court [2020] EWHC 990 (Ch), this time to apply the law (as clarified by the CJEU's January 2020 judgment - KatPosts here, here and here) to the facts (as found by the judge at first instance - KatPost here; not forgetting a clarification of the terms of reference to the CJEU here and a failed application for permission to appeal in relation to this). [Whew. Doesn't seem as long-running as a pandemic-related lockdown, but we are getting there.] 

To avoid burying the lede (or dragging things out when we all think we know the result): the court confirmed that SkyKick infringed Sky's trade marks.

Sorry - spoiler alert. But a brief judgment from Arnold LJ [yes, you read correctly - a succinct 62 paragraphs] contains some further catnip for the interested reader...

Key points

• The original plan was for oral argument at a hearing on 2 April 2020, but this planned hearing was replaced with written submissions (for relatively obvious reasons).
• Unsurprisingly (in light of the CJEU's judgment), SkyKick's invalidity counterclaim in relation to (lack of) clarity and precision was dismissed in short order. 
• There was a "judicial realisation" that SkyKick has never alleged that the trade marks were applied for in bad faith specifically in relation to "telecommunications services" and "electronic mail services" (instead, only as a general pleading that partial bad faith should infect and invalidate an entire trade mark registration - an argument which failed before the CJEU). Far too late to raise this as a separate line of attack now, so these terms survived unamended. 
• On the facts found at trial, Sky applied for the relevant trade marks "pursuant to a deliberate strategy of seeking very broad protection of the trade marks regardless of whether it was commercially justified...with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely as a legal weapon against third parties..." and made a partly false section 32(3) declaration of intention to use. 
• Therefore, with the exception of "telecommunications services" and "electronic mail services", and "internet portal services" (in respect of which no limitation was required), the judge pared down Sky's registrations to achieve a fair level of protection. 
• In doing this, the judge noted that Sky's registrations should not necessarily be limited to the goods and services in respect of which Sky has actually used the trade marks since the date of registration. At the point of filing, an applicant may have commercial justification in seeking protection for goods/services which it may offer under the mark in future, and a "modest penumbra of protection" which may extend further (provided that the penumbra does not extend to new distinct categories or subcategories of goods/services).  
• Although the majority of Sky's registrations were partially valid and therefore subject to limitation, this did not matter for the final result. SkyKick's email migration service is identical to "electronic mail services". The judge (dismissing an argument that "telecommunications services" is so imprecise that it is incapable of interpretation) also found a degree of similarity between this term and SkyKick's services. 

The eagle-eyed among you will have noticed the lack of reference to "whips", "bleaching preparations" and so on. The claim that was heard at trial was based on an abbreviated list of eight goods/services that were closest to SkyKick's activities. Therefore, the question of bad faith in relation to other parts of Sky's trade mark specifications did not need to be decided. However, it seems that Sky never formally withdrew its allegation of infringement based on the broader specifications, so the judge gave Sky seven days from the date of the judgment to withdraw the relevant elements of its claim (failing which the court would proceed to determine validity in relation to the other goods/services in issue). 

Comment

As alluded to above, in this GuestKat's view, following the first instance decision and the CJEU's judgment, the result was never seriously in doubt. It was an impossible struggle for SkyKick somehow to avoid a finding of infringement in one form or another. 

It is interesting to see the application of the CJEU's judgment in practice. The advantage of the CJEU's decision, which was less shocking than the AG's preceding Opinion may have suggested, is that it does not immediately render many existing trade mark registrations invalid. The disadvantage is that it does not provide much of a disincentive for brand owners to continue to file broad specifications (especially given that making a section 32(3) declaration in relation to an application made partially in bad faith does not seem to "infect" the entire filing with bad faith), at least unless and until the trade mark offices start to take more interest in the commercial rationale for protecting certain goods/services. (Presumably this would be challenging for them to do, given limited resources). Whether the CJEU's judgment achieves a fair balance - between the interests of trade mark owners, potential applicants for trade marks and potential infringers - is very much up for debate. 

Perhaps unwise to speculate, but it would not be surprising if this decision were to be appealed.