SkyKick: the disappointment of the decade
Darren Meale · Journal of Intellectual Property Law & Practice · 2020
We may only be a few months on from it, but I cannot say I am anything but disappointed with the decision of the Court of Justice of the European Union (CJEU) in in Sky v SkyKick, C-371/18. Although few expected the nuclear option would be exercised and swathes of the EU trade mark (EUTM) register held invalid, many of us had hoped for change. Instead, the CJEU firmly approved the status quo, with only the mildest warning to those who others consider to be abusing the EUTM system. For the uninitiated, the media and telecoms giant Sky is perhaps the EU’s most tenacious brands litigator, fighting (I believe) more EU oppositions than any other party. What is more, it almost always wins them. In the present case, it brought infringement proceedings in the English High Court against SkyKick, a provider of cloud-based software products and services. It won, subject to a number of questions which the English judge – Mr Justice Arnold (since promoted to the Court of Appeal) – put to the CJEU. Those questions, and the answers provided, are set out in my Current Intelligence piece, which you will also find in this issue. The English High Court judgment contained some firm words. The judge’s view was that a registration for ‘computer software’ was “unjustified and contrary to the public interest”, conferring a monopoly of “immense breadth which cannot be justified by any legitimate commercial interest of the proprietor.” Sky’s practice of filing very long and broad specifications was described as having “no reasonable commercial rationale”. These unjustified and unreasonable behaviours have real consequences. They swell the trade mark registers with many overlapping and competing rights. They offer broad monopolies that may be asserted with little or no defences available. They significantly increase the complexity and difficulty of clearing a new brand. At the same time, there are more and more trade marks on the registers and, at the European Union Intellectual Property Office (EUIPO) at least, more and more findings of likelihood of confusion (my own research suggests that 20 years ago the EUIPO would find a likelihood of confusion less than half the time, now it does so two thirds of the time). We may have reached the point that any major brand owner will be lucky not to be infringing someone’s trade mark registration at any given time (whether that someone does anything about it is another matter). And the CJEU’s response? None of this is contrary to public policy. If there is a problem, wait five years and then non-use will deal with it. No, we do not approve of dishonest practices, but we are only going to act if you can find “objective, relevant consistent” evidence of a proprietor misusing the system. The Court has taken a very relaxed position. It has effectively endorsed a business as usual approach with only the most minimal warning to those who (to paraphrase the High Court) would seek to act in an unjustified and unreasonable manner. Why? We do not really know because the Court’s decision is very light on reasoning. See, for example, what I would like to call “the now infamous paragraph 66” in which the Court rejected the Advocate General’s attempt to control the mischief identified in SkyKick by reference to public policy and did so with absolutely no reasoning whatsoever. As it stands, the trade mark registers of Europe will keep expanding and specifications will not be getting shorter. Eventually something (perhaps my clients’ patience for brand clearance) will break. We should be talking seriously about other approaches and lobbying those with the power to change the law or change practice. There must be another way.