Adrian Speck KC appeared for the successful Appellants (“SkyKick”) in the proceedings issued by the Respondents (“Sky”) alleging infringement of several SKY marks, and passing off, by SkyKick’s use of SKYKICK for email migration and cloud storage services.
In this landmark decision, the Supreme Court held that the registration of a trade mark can be invalidated in whole or in part on the basis that the application to register the mark was made in bad faith, because the applicant did not, at the time the application was made, have a genuine intention to use the mark in relation to some or all of the goods or services for which it sought protection. It discussed factors from which bad faith can be inferred, though, where such inference can be properly drawn will depend on the circumstances of the case.
Accordingly, the Supreme Court held that the High Court was entitled to find that, as alleged by SkyKick, the SKY marks were filed in bad faith and that the trade mark specifications should be restricted accordingly. On infringement, it held that while there was no infringement by email migration services, the cloud storage services did fall into “computer services for accessing and retrieving audio, visual and/or audiovisual content and documents via a computer or a computer network” and therefore did infringe Sky’s valid trade mark.
The Supreme Court also confirmed that, following the UK’s withdrawal from the European Union, article 67(1) of the Withdrawal Agreement expressly provides that articles 122-135 of the EUTM Regulation continue to have direct effect in the context of proceedings instituted before IP completion day before a designated EU trade mark court in the UK.
The Supreme Court’s judgment was handed down, despite the parties seeking permission to withdraw the appeal, on the basis that a number of issues before it were of general public importance.