http://ipkitten.blogspot.com/2022/07/just-when-you-thought-it-was-over-its.html
| Sky/SkyKick – coming soon to a courtroom near you |
Readers interested in summer (and IP) blockbusters will be glad to learn that – like Scream, Puss in Boots, and Predator – the Sky/SkyKick saga is not over either.
Earlier this week, in fact, the UK Supreme Court granted SkyKick permission to appeal the order made by the Court of Appeal on 26 July 2021.
As Sir Christopher Floyd summarized, this case originated from an attempt, on the side of Sky (well-known for broadcasting, telephony and broadband provision), to rely on its EU and UK registered trade marks for SKY and the common law action in passing off to prevent SkyKick from using the sign SKYKICK in relation to email migration and cloud storage services.
The case also had an instalment before the Court of Justice of the European Union (C-371/18), which was asked to provide guidance on the requirements of clarity and precision in trade mark law and the scope of the absolute ground for refusal/invalidity concerning bad faith [IPKat here].
A useful timeline of events was provided by Darren Meale in his guestpost concerning last year’s Court of Appeal decision:
- July 2017: High Court refuses a pre-trial reference to the CJEU as premature [2017] EWHC 1769 (see Retromark Volume II)
- February 2018: High Court’s 358 paragraph judgment finding infringement subject to referral questions [2018] EWHC 155 (see Retromark Volume III)
- April 2018: High Court sets the questions for the CJEU [2018] EWHC 943
- October 2018: Court of Appeal refuses SkyKick’s initial attempt to appeal the High Court’s decision [2018] EWCA Civ 2004
- October 2019: Advocate General’s Opinion, some exciting signs C-371/18_O (see Retromark Volume VI)
- January 2020: CJEU’s disappointingly conservative judgment, no bombshells C-371/18 (see Retromark Volume VII)
- April 2020: High Court judgment post-CJEU, restricts some of Sky’s registrations but still infringement by SkyKick [2020] EWHC 990 (see Retromark Volume VIII)
- July 2020: High Court follow-up judgment dealing with cloud backup services, remedies and costs [2020] EWHC 1735 (see Retromark Volume VIII)
- July 2021: Court of Appeal rejects bad faith and restores Sky’s registrations [2021] EWCA Civ 1121
Stay tuned for the next instalment then!
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