Newly-Appointed Kirkland Clinches Victory at Supreme Court in Longrunning Sky Feud
Lawyers say the judgment had been highly anticipated because it had the potential to deviate from settled EU case law on what constitutes bad faith registrations of a trade mark.
November 14, 2024 at 06:15 AM
3 minute read
Intellectual PropertyA newly-instructed Kirkland & Ellis team has clinched victory at the U.K.'s Supreme Court following almost a decade of litigation involving telecoms giant Sky and U.S. cloud-based email migration company, SkyKick.
Kirkland, headed up by partner Steven Baldwin, took over from U.K. Top 50 firm Fieldfisher as SkyKick's legal representatives at the Supreme Court in September, following the Seattle-based company's acquistion by another U.S. IT platform, ConnectWise.
The final judgment saw five supreme court judges, presided by Lord Reed, overturn a previous Court of Appeal ruling and concluded that Sky had indeed acted in bad faith when it applied its trademark in categories of goods and services.
Sky, advised by Mishcon de Reya, initially claimed back in 2016 that SkyKick had infringed five of its trademarks, including the ‘SKY’ trademark by using ‘SkyKick’ in relation to their own products, using a combination of European Union trademarks as well as U.K. ones.
After the High Court initially found in favour of then Fieldfisher-advised SkyKick, the case was taken to the Court of Appeal in 2021 which concluded that the procedure adopted by the original judge had been “unfair”, and found that the telecommunications company had not acted in bad faith either.
Fieldfisher partner John Linneker previously led the case for SkyKick. However, the firm confirmed it was no longer legal counsel for SkyKick since its acquisition by ConnectWise.
In its ruling on Wednesday however, the Supreme Court unanimously found that the High Court had been “right” in the first instance, and the Court of Appeal was “wrong to reverse that finding.”
Nevertheless, this decision is unlikely to change much in practice, as SkyKick had decided to rebranded following its acquisition earlier this year. A spokesperson from SkyKick said: "In September 2024 Sky and SkyKick settled their trade mark disputes before the U.K. Court and the EU Intellectual Property Office, in advance of the Supreme Court making a draft judgment available to them, or a decision in the EU cases. SkyKick has, following its acquisition by ConnectWise on 10 September 2024, decided to re-brand. Both parties determined that their respective interests would be best served by concluding these long running disputes."
From an IP perspective however the decision also confirms that, despite withdrawal from the EU, the U.K. “maintains designation of these courts as E.U. trademark courts.
Commenting on the impact of this decision, head of U.K. IP at Ashurst partner Sunny Kumar, explained: "This judgment was highly anticipated because it had the potential to deviate from settled EU case law on what constitutes bad faith registrations of a trade mark. The effect of this would have seen the first significant divergences between U.K. and EU law in the field of intellectual property since Brexit. However the Supreme Court has in most part upheld the High Court's decision and thus has not deviated from settled EU case law.”
Mishcon did not respond to requests for comment at the time of publication.
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
Related Stories
View AllYou Might Like
View AllLatham Suffers Latest Departure as Skadden Swoops for London IP Head
2 minute readKirkland & Ellis Triumphs in High Court Cancer Treatment Patent Case
Nintendo, Pokémon Co. Sue Japanese Game Developer for Patent Infringement
Trending Stories
- 1The Power of Your Inner Circle: Turning Friends and Social Contacts Into Business Allies
- 2Bosworth Claims It Was Kline & Specter, Not Him, That Breached Settlement Terms
- 3K&L Gates Faces Malpractice Suit: 'An Experienced Labor Attorney Would Know'
- 4Announcing Women Attorneys of the Year 2024
- 5Judge Approves $667K Settlement Against Independence Blue Cross for Unpaid, Pre-Shift Computer Work
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250