Blue Sky delayed
And a prolonged period of uncertainty lies ahead, believes Joel Smith.  EWCA Civ 2004, Sky plc & Ors v Skykick, UK Ltd & Anor, Court of Appeal, 6th September 2018.
 EWCA Civ 2004, Sky plc & Ors v Skykick, UK Ltd & Anor, Court of Appeal, 6th September 2018
- Sky was refused permission to appeal, but may yet appeal the High Court judgment, once the outcome is known from the CJEU
- Trade mark proprietors will face a prolonged period of uncertainty in registering and/or enforcing trade marks (both in the IPO and courts) until the judgment is delivered
In the case of Sky plc & Ors v Skykick UK Ltd & Anor , the High Court referred five questions to the CJEU on trade mark issues relating to bad faith (for filing with no intention to use) and clarity issues with trade mark specifications. Mr Justice Arnold found that the use of SKYKICK infringes the Claimants’ SKY marks pursuant to Article 9(2)(b) of Regulation (EU) 2017/1001, as there is a likelihood of confusion between the marks, but only if the Claimants’ trade marks are valid. Therefore, the outcome of the infringement case depends on the validity of the Claimants’ trade marks, which can only be decided once the CJEU has answered the questions referred to it.
The case before Arnold J is at interim stage, pending the CJEU judgment, as he has yet to make all the relevant findings of fact. Sky sought permission to appeal from the Court of Appeal and, on 6th September 2018, the Court handed down its judgment, refusing Sky’s application. The Court found that there was no obstacle to the Court of Appeal hearing an appeal, on the basis that EU law is acte clair and/or that the reference to the CJEU was unnecessary. The Court of Appeal can do anything that the trial judge could have done, and, as Arnold J could have declined to make the reference to the CJEU, the Court of Appeal could also do this and give final judgment.
While the Court asserted that it did have jurisdiction to hear an appeal at this stage of the proceedings, in this case it decided that it should not do so. The rationale was that hearing the appeal would invite unnecessary procedural complexity. If the Court were to hear the appeal at this stage, this would include a decision on whether the reference to the CJEU should be made. If the Court were to decide to make the reference, costs would have been incurred on an exercise that had gained nothing, since there was already a pending reference from the High Court.
If the Court declined to make the reference to the CJEU, it might still find that it lacked the necessary findings of fact to conclude on the validity of the trade marks and would then have to remit the case back to the High Court (leaving open the unattractive prospect of a further appeal back to the Court of Appeal).
Sky argued that the case had given rise to real uncertainty for the industry and was having profound knock-on effects in UK trade mark cases. The Court took the view that it was better to allow the reference to the CJEU to proceed, as the right course is to obtain the necessary rulings from the CJEU, sooner rather than later, so that certainty for the industry can be restored. The CJEU’s judgment in this case will be very important, as it could have wide-ranging implications, as previously valid registered trade marks may now be invalid or partially invalid.
Joel Smith is a Partner and Head of IP UK at Herbert Smith Freehills LLP
Sarah Burke, a Senior Associate in the London office at Herbert Smith Freehills LLP, co-authored.
Partner, Herbert Smith