Back to the High Court of England & Wales – infringement

Lord Justice Arnold quickly dismissed SkyKick’s claim (a) regarding lack of clarity and precision, following the CJEU ruling. SkyKick’s claim (b) on bad faith attracted a longer commentary.

It followed from the CJEU that Sky’s marks could be held partly invalid. It is worth noting (Arnold LJ admitted that he himself may have overlooked it previously) that SkyKick did not allege that Sky’s registrations were invalid on the grounds of bad faith insofar as they covered “telecommunication services” and “electronic mail services”. This oversight on SkyKick’s part seems to have been as a result of their arguing that if any of the goods/services were deemed to have been filed in bad faith, that finding would taint the marks as a whole (that is, all goods/services). However, the CJEU judgment confirmed that a registration can be partially held invalid on the grounds that certain goods/services were included in bad faith. SkyKick tried to amend their case to include those services in their bad faith attack. The judge refused permission for this, saying that he thought that would be an abuse of process (for various reasons), but that he felt it would not assist SkyKick’s case in any event (paragraphs 14 and 15 the UK decision).

Arnold LJ then assessed whether any of the goods/services covered by Sky’s registrations could be considered to have been filed in bad faith, applying the CJEU’s guidance. In particular, the CJEU had held that a bad faith finding applies where:

it is apparent from relevant and consistent indicia that the proprietor… has filed the application… not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin.

If a trade mark owner includes in an application goods/services in relation to which it does not intend to use the mark, that may constitute bad faith “where there is no rationale for the application” in light of the aims referred to in relevant law (that is, the functions of a trade mark noted above, in particular the origin function). The CJEU had made it clear that bad faith cannot be presumed merely because, at the time of filing of the application the owner has no economic activity corresponding to the goods/services in question (paragraph 78 of the CJEU judgment).

The UK judge had already held, based on the evidence before him, that there were some goods/services in relation to which Sky had no reasonable commercial rationale for seeking registration. He was forced to conclude that Sky had included these goods/services with a view to seeking extremely broad protection, regardless of whether it was commercially justified. Sky had no intention to use the mark in three different ways:

1. there were goods in relation to which Sky never had an intention to use (for example, “bleaching preparations”);
2. those that were so broad that Sky could never hope to make use across the whole spectrum (for example, “computer software”); and
3. the specifications were intended to cover all the goods/services in relevant classes.

Arnold LJ had held that Sky had applied for its registrations partly in bad faith in each of these three ways. Not merely was there no intent to use in relation to some goods/services, there was no “foreseeable prospect” that it would ever intend to use the marks in relation to such goods/services. Sky had thus applied for the marks, in relation to at least certain goods/services, with a view to obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely “purely as a weapon against third parties”, whether in infringement or opposition proceedings. The judge had also held that Sky had made a partly false declaration of an intention to use the mark as regards one UK registration (an applicant for a UK national mark – but take note, not an applicant for an EU trade mark – must sign a declaration that the mark is being used, or that the applicant has a genuine intention to use it, for the goods/services covered) – which also suggested an element of bad faith.

SkyKick had argued that the broad term “computer software” should be cut down to software enabling access to, or relating to the uploading, storing and sharing of, audio-visual content; software relating to the sending/receipt of emails, for set-top boxes, and so on. Sky resisted this, but did not put forward an alternative limitation to the term, which the judge found unhelpful. He found that bad faith had been proven insofar as Sky had applied for the term “computer software” as part of its commercial strategy without any commercial justification – but that SkyKick’s suggested limitation had been based solely on the actual use in relation to specific software that Sky had made of its marks. Arnold LJ held that that would be an unfair limitation, since Sky was entitled to file for a broader scope of protection than its actual use on the marketplace reflected. In the absence of an alternative from Sky, the judge had to make a suggested limitation himself. He went with:

Computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service; computer software supplied as part of or in connection with any telecommunications apparatus or service; electronic calendar software; application software for accessing audio, visual and/or audio-visual content via mobile telephones and tablet computers; games software.

The judge’s thought processes here, and in relation to other good/services (paragraphs 30-33 of the UK decision) are quite useful in that they will likely inform similar assessments by the courts/tribunals going forwards in similar cases. Sky failed to supply its own suggested limitations, which likely did not assist its case (and an appeal may follow).

Since Sky’s trade marks were deemed validly registered in relation to “telecommunications services” and “electronic mail services” in any event, infringement was found as a result.

Commentary

The High Court of England & Wales held that Sky had applied for at least certain goods/services with a view to obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely “purely as a weapon against third parties”, whether in infringement or opposition proceedings.

Whether we will now see the UK Registry (and possibly other EU registries) objecting during the course of examination to broad terms such as “computer software” (unless an applicant specifies the intended uses for that software) remains to be seen. It is possible that current European practice could move towards the US model, where specifying the nature and intended purpose of terms such as "computer software" is necessary in order for an application to be accepted.