Lifestyle Equities CV and another v Amazon UK Services Ltd and others
[2024] UKSC 8
SkyKick UK Ltd and another v Sky Ltd and others
13 November 2024
[2024] UKSC 36
Supreme Court
Sky tried to block SkyKick from using a similar name, but SkyKick fought back, saying Sky didn't plan to actually use their name for everything they registered it for. The court agreed with SkyKick, saying Sky acted in bad faith. SkyKick still had to pay for some misuse of the name, but not for everything.
Key Facts
- •Sky claimed SkyKick infringed their registered trade marks by using the mark "SkyKick" for email migration and cloud storage products.
- •SkyKick counterclaimed that Sky's trade mark applications were made in bad faith due to lack of intention to use the marks for all specified goods and services.
- •The case involved four first instance judgments, a CJEU judgment, and a Court of Appeal appeal before reaching the Supreme Court.
- •Sky's trade marks included EU trade marks and a UK trade mark; after Brexit, comparable UK trade marks (EU) were created.
- •The Supreme Court considered whether lack of intention to use a trade mark could invalidate a registration, and the UK's jurisdiction post-Brexit regarding EU trade marks.
Legal Principles
A trade mark application made without any intention to use the mark constitutes bad faith if the applicant intended to undermine third parties' interests or obtain an exclusive right for purposes outside the functions of a trade mark.
CJEU in Sky plc v SkyKick UK Ltd (C-371/18)
Lack of clarity and precision in the specification of goods and services is not a ground for invalidity of a trade mark registration.
CJEU in Sky plc v SkyKick UK Ltd (C-371/18)
An applicant's lack of intention to use a mark for some goods/services renders the application bad faith only in relation to those goods/services; it doesn't invalidate the whole registration.
CJEU in Sky plc v SkyKick UK Ltd (C-371/18)
UK courts retain jurisdiction to hear cases concerning EU trade marks pending before them on IP completion day (31 December 2020), in accordance with Article 67 of the Withdrawal Agreement.
Supreme Court in SkyKick UK Ltd v Sky Ltd
Outcomes
Supreme Court allowed SkyKick's appeal partially.
The trial judge correctly found Sky's trade mark applications were partly made in bad faith due to lack of intention to use the marks for certain goods and services. The Court of Appeal wrongly reversed this finding. The Supreme Court clarified the test for bad faith and found that the judge was entitled to the conclusions he reached regarding invalidity and the modifications to the specifications.
The Court of Appeal's decision to restore the specifications to their full width was reversed.
The Supreme Court held that Arnold J was correct in his assessment of bad faith, and the Court of Appeal wrongly reversed the judge's findings.
SkyKick's infringement in relation to Cloud Migration was not upheld.
The Supreme Court agreed with the Court of Appeal that Cloud Migration was not an electronic mail service, thus not infringing Sky’s trade mark.
SkyKick's infringement in relation to Cloud Backup was upheld.
The Supreme Court agreed with the Court of Appeal that Cloud Backup was a service similar to "computer services for accessing and retrieving information/data via a computer or computer network", and thus constituted infringement.