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Sky success over name sake’s attempt to prevent infringement

Written by Ellis Sweetenham on 15 June 2016

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Skyscape Cloud Services Ltd v Sky plc and others [2016] EWHC 1340 (IPEC)

Facts:

The claimant (Skyscape) supplied cloud computer services to organisations within the UK public sector.

The defendants (Sky) formed part of a group of companies (the Sky group), which provided broadcasting and other communication services under the mark 'SKY'.

In July 2014, Sky wrote to Skyscape, alleging that Skyscape was infringing registered trade marks owned by companies within the Sky group, citing four specific European Union trade marks and a UK trade mark amongst others.

Skyscape declined to give undertakings sought by Sky, although more limited undertakings were offered.

Further correspondence ensured, but no proceedings for infringement had been brought by the Sky group against Skyscape.

In order to prove that their name was legitimate, Skyscape issued proceedings against Sky, seeking a declaration of non-infringement (DNI), namely, that its use of the sign 'Skyscape' in relation to its services did not infringe any of the cited marks.

In response to this, Sky issued a counterclaim for infringement, focusing on their EU trade mark, the Sky mark, in relation to email services

Issue to be considered:

Would any use of the sign ‘Skyscape’ infringe the Sky sign in relation to the areas stated above in regards to art 9(1)(b) or (c) of Council Regulation (EC) 207/2009.

Judgment:

With respect to art 9(1)(b) of the Regulation, despite 'Skyscape' being one word, there was a likelihood that the average consumer, viewing the sign 'Skyscape' used for an email service would take it to be another service offered by Sky.

If the average consumer was already familiar with Sky email, he would probably take it to be a replacement or modified Sky email service.

Therefore, Skyscape cannot prove that the Sky mark would not be infringed, by the use of 'Skyscape' for email services.

With respect to art 9(1)(c) of the Regulation, there was no doubt that, if the use of 'Skyscape' for an email service would not give rise to a likelihood of confusion, it would certainly give rise to a link.

The sign would call the Sky mark to the average consumer's mind.

It was likely that a link between 'Sky' and 'Skyscape' was bound to lead to the whittling away or blurring of the Sky mark such as to weaken its ability to serve as a badge of origin for email services, therefore leading to a potential claim for dilution.

The link between 'Sky' and 'Skyscape' in the mind of the average consumer would enable Skyscape to benefit from Sky's undoubted reputation and goodwill. In addition, Skyscape had failed to establish that unfair advantage would not be taken of the distinctive character or repute of the Sky mark.

Therefore, Skyscape had failed to show that the use of the sign ‘Skyscape’ would not have been deemed an infringement of the ‘Sky’ mark. Their application for a declaration of non-infringement has failed and is to be dismissed.

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