Businesses will need to avoid scattergun approaches to registering trade marks following an eagerly awaited High Court ruling. In Sky plc v SkyKick UK Ltd, Lord Justice Arnold ruled that a software company had infringed a trade mark of broadcaster Sky – but strongly criticised Sky for filing trade mark applications as a weapon. IP experts said the ruling would significantly change trade mark practice. The ruling in the Business and Property Courts followed a referral to the Court of Justice of the EU on points of EU law – perhaps one of the last to be made by a court in England and Wales. The action began when Sky brought proceedings against Skykick, a supply of cloud computer systems, alleging infringement of trade marks. SkyKick hit back saying that Sky’s registration of its trade mark on products it had no intention of supplying constituted bad faith. The CJEU judgment broadly agreed. In the latest ruling Arnold LJ declared many of Sky’s trade marks invalid, but found that SkyKick had infringed trade marks registered for ‘electronic mail services’. ‘The fact that the trade marks are partially invalid on the ground that they were applied for partly in bad faith does not affect this.’Ben Mark, a partner at City firm RPC and a member of the Law Society’s intellectual property committee, said the judgment takes further the CJEU’s ruling that applying to register a trade mark without any intention to use it for specified goods or services may constitute bad faith.’The decision may initially trouble brand owners. However, it will not affect a trade mark’s ability to protect core goods and services or goods and services that brand owners believe they may use their marks for.’Going forwards, a trade mark filing strategy that reflects this should avoid similar judgments. For existing trade mark registrations, the court made clear that a mixed specification (containing goods and services that the applicant both did and did not intend to use its mark for) will not taint the registration, as a whole.’Aaron Wood, chartered trade mark attorney and partner at Keystone Law, said the decision marks ‘a substantial change in practice in EU trade mark law, which will move it significantly closer to US trade mark practice and create a potential breaker to the barrier of broad EU trade marks.’ Geoffrey Hobbs QC and Philip Roberts QC, instructed by Mishcon de Reya LLP, appeared for Sky; Simon Malynicz QC, Tom Hickman QC and Stuart Baran, instructed by Fieldfisher LLP, for SkyKick.
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