Fieldfisher and Mishcon Lead On Sky's Milestone Trademark Battle
The latest court hearing ruled that Sky had made trademarks in 'bad faith, but Skykick did still infringe on certain marks.
May 01, 2020 at 09:30 AM
2 minute read
Fieldfisher and Mishcon de Reya have guided respective clients Skykick and Sky through the latest court battle concerning a major trademark infringement case.
The latest ruling, delivered this week, saw both sides score victories. Judge Mr Justice Arnold ruled many of Sky's trade marks were invalid on 'bad faith' grounds, but found that SkyKick had infringed trade marks registered for 'electronic mail services'.
In January, following a referral from London's High Court, the Court of Justice of the European Union ruled that that trademarks cannot be ruled invalid simply because they lack clarity or precision.
The long-running dispute began when Sky brought proceedings against Skykick, a supplier of cloud computer systems, alleging infringement of trade marks.
SkyKick counterclaimed that Sky had registered trademarks on products that it had no intention of supplying, which constituted bad faith.
The Fieldfisher team representing Skykick was led by IP partner John Linneker, while Sky's legal counsel Mishcon de Reya was led by IP partner David Rose.
Lawyers within the IP community have hailed the judgment as significant in relation to how major brands manage their trademark portfolio, with some suggesting it will prompt large-scale reviews of current trademarks and further litigation.
Aaron Banks, partner at Keystone Law commented: "For existing brand owners, this puts their infringement and brand protection plans at risk, and it may mean that where a brand was proposed but ruled out because of an existing registration, which covered items that the owner clearly was not offering, there may be a way through.
"There are further consequences for trademark litigation and enforcement, and it seems likely that defendants will use the decision to cause chaos where there are allegations of infringement."
RPC partner Ben Mark also commented: "The decision may initially trouble brand owners. However, it will not affect a trade mark's ability to protect core goods and services or goods and services that brand owners believe they may use their marks for."
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Major Sky Trademark Ruling Clarifies Brand Owner Protections
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