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Counterfeiting and trademark registration in bad faith: the decision in the Sky vs. SkyKick case

Sky Plc & Ors vs. Skykick UK Ltd & Anor [2020] EWHC 990 (Ch), 29 April 2020

data: 07.05.2020
Area: Proprietà Intellettuale

On 29 April 2020, the English High Court issued an important decision in the context of European Union trademark law. The judgment, delivered in a trademark infringement case between the well-known company, Sky Plc, and the defendant, SkyKick Inc., ruled that, Sky’s British and European trademarks should be declared partially invalid because they were registered in bad faith. Sky did not intend to use the trademarks for certain goods or services at the time of application but had filed the relative applications as part of a deliberate strategy to seek broad protection, not supported by any commercial justification. Therefore, Sky applied for purposes other than those falling within the objective of the protection offered by trademark law, specifically to use those trademarks purely as a ‘legal weapon against third parties’. These statements are consistent with the previous decision of the EU Court of Justice in the same case (C-371/18), which held that the criterion of bad faith in an application for registration of a trademark applies (leading to invalidity of the trademark), when the owner of the design filed the application with the intention of dishonestly prejudicing the interests of third parties or for purposes other than those falling within the functions of a trademark. Furthermore, the ECJ has specified that where bad faith is concerned, only the part of the claim regarding the bad faith, should be invalidated.

On this basis, with regards to Sky’s claims relating to the goods and services covered by the registration of trademarks (including “computer software”, “computer software supplied from the internet” and so on), the Judge established their excessive scope and thus imposed strong targeted limitations. Nonetheless, the remaining protection was sufficient to equally affirm the liability of the other party, SkyKick, for infringement of Sky’s trademarks, as amended. In other words, the partial invalidity of the trademarks due to bad faith did not affect the decision on the infringement.

The full decision of the English Court is available on the following link:
https://www.bailii.org/cgi-in/format.cgi?doc=/ew/cases/EWHC/Ch/2020/990.html

Counterfeiting and trademark registration in bad faith: the decision in the Sky vs. SkyKick case

Sky Plc & Ors vs. Skykick UK Ltd & Anor [2020] EWHC 990 (Ch), 29 April 2020

data: 07.05.2020
Area: Proprietà Intellettuale

On 29 April 2020, the English High Court issued an important decision in the context of European Union trademark law. The judgment, delivered in a trademark infringement case between the well-known company, Sky Plc, and the defendant, SkyKick Inc., ruled that, Sky’s British and European trademarks should be declared partially invalid because they were registered in bad faith. Sky did not intend to use the trademarks for certain goods or services at the time of application but had filed the relative applications as part of a deliberate strategy to seek broad protection, not supported by any commercial justification. Therefore, Sky applied for purposes other than those falling within the objective of the protection offered by trademark law, specifically to use those trademarks purely as a ‘legal weapon against third parties’. These statements are consistent with the previous decision of the EU Court of Justice in the same case (C-371/18), which held that the criterion of bad faith in an application for registration of a trademark applies (leading to invalidity of the trademark), when the owner of the design filed the application with the intention of dishonestly prejudicing the interests of third parties or for purposes other than those falling within the functions of a trademark. Furthermore, the ECJ has specified that where bad faith is concerned, only the part of the claim regarding the bad faith, should be invalidated.

On this basis, with regards to Sky’s claims relating to the goods and services covered by the registration of trademarks (including “computer software”, “computer software supplied from the internet” and so on), the Judge established their excessive scope and thus imposed strong targeted limitations. Nonetheless, the remaining protection was sufficient to equally affirm the liability of the other party, SkyKick, for infringement of Sky’s trademarks, as amended. In other words, the partial invalidity of the trademarks due to bad faith did not affect the decision on the infringement.

The full decision of the English Court is available on the following link:
https://www.bailii.org/cgi-in/format.cgi?doc=/ew/cases/EWHC/Ch/2020/990.html