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:
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.
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