Seattle – April 29, 2020 – In a ground-breaking judgment in the English High Court this morning, Lord Justice Arnold held that the UK and European trademarks of Sky plc, the well-known TV and communications company, should be declared partly invalid on grounds of bad faith.
Arnold LJ held that Sky had originally applied for its trade marks in bad faith, because they “did not intend to use the Trade Marks” when they applied for them in relation to some goods and services. He also said that “Sky made the applications pursuant to a deliberate strategy of seeking very broad protection regardless of whether it was commercially justified.” He went on to comment that Sky had applied for the trademarks “for purposes other than those falling within the functions of a trade mark, namely purely as a legal weapon against third parties.”
SkyKick’s Co-CEOs commented today:
“We are delighted with almost every aspect of the judgment,” said SkyKick Co-CEO Evan Richman. “We have argued from the beginning that Sky has been executing its trademark strategy in bad faith.”
“We are very pleased that our position has been vindicated, now by both the European Court of Justice and the English High Court,” said SkyKick Co-CEO Todd Schwartz. “Of course we need to carefully consider the finding on electronic mail services, and the impact of that on our business. We are in consultation with our lawyers on potential next steps on this point, including the possibility of appeal.”
Sky had contended that SkyKick, a Seattle-based Cloud Management software provider, had infringed its trademarks covering a range of computer software-related goods and services. The Judge held that the partially invalid terms were not infringed by SkyKick, including, computer software, computer software supplied from the internet, computer software and telecoms apparatus to enable connection to databases and the internet, data storage, computer services for accessing and retrieving information/data via a computer or computer network. Sky’s registration for internet portal services was also found not to be infringed. He did however hold that Sky’s trademarks in so far as they covered “electronic mail services” were not applied for in bad faith and were infringed.
In addition, Schwartz commented on the broader impact of the ruling, “We are also pleased and reassured that a precedent has been set to protect all businesses from attacks based on trademarks that have been applied for partly in bad faith.”
SkyKick is a global provider of cloud automation and management software for IT solution partners. Its products help build successful cloud businesses by making it easy and efficient for IT providers to migrate, backup and manage their customers in the cloud. Over 20,000 partners in more than 125 countries use SkyKick’s products to accelerate their cloud business, and the company has won numerous awards including being named a Microsoft Partner of the Year and one of North America’s fastest growing technology companies according to Deloitte’s Technology Fast 500™. SkyKick’s global headquarters is in Seattle, European headquarters is in Amsterdam, and it has offices in Sydney and Tokyo. For more information visit skykick.com.