Skykick - why does it matter & what could it mean for trade marks? Counsel's perspective
Updated: Oct 25, 2020
IPSoc recently had the latest in its successful run of education events. The talk from Simon Malynicz QC, SkyKick's leading counsel, gave an insider's perspective in the trade mark dispute which could have an important impact on trade mark law for many years to come. For background on the Skykick dispute see here, the referred questions are here. A handy summary from Simon's slides is below.
In Simon's view, the dispute goes to the heart of what the trade mark register is for and whether it could benefit from Marie Kondo applying her KonMari method and tidying up the register. The issue stems from the very broad specifications that Sky has filed for many years. Even the briefest review of a typical Sky specification will reveal many goods and services which go substantially beyond Sky's core business - fire extinguishers, whips and furs being the paradigm examples.
The key question in the SkyKick dispute is whether there is a defect in the system if trade marks can be filed which bear no resemblance to the actual or contemplated trading activity of a business. This is particularly a problem as for the first five years post filing it is not possible to rely on proof of use. A related issue is the practice of some businesses to "evergreen" their marks by repeatedly filing for a new mark covering a broad specification as the five year period draws to an end. Sadly this hot topic is no longer part of the case.
Some procedural background
The case started life in the IPEC when SkyKick applied for a declaration of non-infringement. Sky apparently 'ignored this' and sued for infringement in High Court. Eventually the proceedings were joined in the High Court.
The questions and SkyKick's response
Arnold J considered the super long Sky specification and was less than impressed. He referred various questions to the CJEU. Simon's slides handily summarise these questions as follows:
Were some terms uncertain contrary to IP Translator?
If so, are the marks invalid as regards those terms?
Were the marks applied for in bad faith?
If so, does that bad faith infect the whole mark rendering it invalid?
SkyKick's response can be summarised as:
Some terms such as "computer software" are uncertain
These terms should be invalidated as Sky's particular behaviour is bad faith as it was part of a deliberate strategy to apply for broad terms as part of a broad specification
Bad faith does not always infect the whole mark but it does in this case.
Because it was not possible to attack the mark based on non-use, SkyKick was left with bad faith as the primary method of attacking the mark. One argument they raised is that the mark included imprecise terms such as "telecommunications" and "computer software". This is where the wider points of more general significance to the trade marks world come in.
How precise should an applicant be required to be regarding the "computer software" they want to protect and what implications will forced precision at the filing stage have on brand owners who may not yet have fully determined the precise nature of the software they intend to sell. Cover off all possible varieties of computer software in the specification says Simon but is this a practical solution for many tech businesses who will often take responsibility for the trade mark filing process during the startup phase (at least).
Is computer software too "vague and imprecise" or "uncertain"? Darren Meale made a good point about this at the recent Retromark conference where he noted that computer software has largely morphed from a good sold on e.g. a disc to a channel for trade. From this perspective, granting a monopoly over computer software is certainly a problem. Readers comments on this hot topic are always appreciated.
This post first appeared on The IPKat. That blog will keep you posted on the outcome as soon as they can get their paws on the judgment.