Cloud watching: is a storm brewing for trademark owners?

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Cloud watching: is a storm brewing for trademark owners?

Drumming up anticipation ahead of the European Court of Justice (CJEU) ruling (not expected until 2020), Mr Justice Arnold gave a key note address at the end of March which delved into his 2018 decision in SKY v SkyKick. In that case, telecommunications provider Sky brought a claim for trademark infringement against the American-based company SkyKick’s use of “SkyKick” for B2B provision of cloud management software.

In their defence, SkyKick ran two notable arguments:

 

  • Firstly, that SKY’s four European trademarks (EUTMs) and one UK-registered trademark (UKTM) for SKY word and figurative marks were invalidly registered because the specifications lacked precision and clarity (e.g. ‘computer software’); and
  • Secondly, that SKY registered the marks in bad faith as they never had any intention to use some of the specified goods or services (e.g. ‘whips’ and ‘bleaching preparations’) and their registrations should be invalidated as a result.

 

Arnold J has sought guidance on both issues from the CJEU and has referred five questions for a preliminary hearing.

 

If SKY’s trademarks are found to be valid, SkyKick has infringed SKY’s rights due to the likelihood of confusion arising from the partially identical goods and services and identical first component of SkyKick to SKY’s registered marks.  However, if the marks are held to be invalid or partially invalid, then trademark owners across the board may have to re-examine their portfolios and ensure that their specifications are clear and precise enough to render their meaning plain – as well as potentially needing to demonstrate intention to use the marks at the time of filing the trademark.  All will, hopefully, be revealed in due course when the CJEU hand down their judgement.

 

Until these issues are resolved, we recommend clients seeking to register new UK or EU marks should carefully consider the goods and/or services they wish to cover before making applications.  In particular, they should consider how their marks are actually likely to be used and avoid including goods or services in a trademark specification which they cannot demonstrate that they provide or have an intention to provide.  

  

PDT can provide clearance and filing advice and help craft a specification which provides ample protection for the desired mark, whilst also avoiding any potential pitfalls highlighted by this ongoing case. 

 

Contact our commercial team to see how we can assist you. 

   

The content of this webpage is for information only and is not intended to be construed as legal advice and should not be treated as a substitute for specific advice. PDT Solicitors LLP accepts no responsibility for the content of any third party website to which this webpage refers.

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