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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> Skyscape Cloud Services Ltd v Sky Plc & Ors [2016] EWHC 1340 (IPEC) (08 June 2016) URL: https://www.bailii.org/ew/cases/EWHC/IPEC/2016/1340.html Cite as: [2016] EWHC 1340 (IPEC) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Strand, London, WC2A 2LL |
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B e f o r e :
____________________
SKYSCAPE CLOUD SERVICES LIMITED |
Claimant |
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- and - |
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SKY PLC SKY UK LIMITED SKY INTERNATIONAL AG (a company incorporated under the laws of Switzerland) |
Defendants |
____________________
Philip Roberts (instructed by Olswang LLP) for the Defendants
Hearing dates: 26-27 April 2016
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Crown Copyright ©
Judge Hacon :
Introduction
The law on negative injunctions
"[50] … For example, in Guarantee Trust Co of New York v Hannay and Co [1915] 2KB 536, 564 Pickford LJ said:
"I think that a declaration that a person is not liable in an existing or possible action is one that will hardly ever be made, but that in practically every case the person asking it will be left to set up his defence in the action when it is brought."
However, as Mr Mann accepts, recent cases have adopted a more flexible approach. Thus, in Camilla Cotton Oil Co v Granadex SA [1975] 1 LLR 470, [1976] 2 LLR 10, Lord Denning MR in the Court of Appeal and Lord Wilberforce in the House of Lords indicated, with varying degrees of emphasis, that the jurisdiction was not as confined as suggested by Pickford LJ, although Lord Wilberforce accepted that his words "warn us that we must apply some careful scrutiny" ([1976] 2 LLR 10, 14).
[51] In Messier-Dowty Ltd v SABENA SA [2001] WLR 2040, 2050, Lord Woolf MR summarised the modern approach as follows:
"41. The approach is pragmatic. It is not a matter of jurisdiction, it is matter of discretion. The deployment of negative declarations should be scrutinised and their use rejected where it would serve no useful purpose. However, where a negative declaration would help to ensure that the aims of justice are achieved the court should not be reluctant to grant such declarations. They can and do assist in achieving justice ….
42. While negative declarations can perform a positive role they are an unusual remedy insofar as they reverse the more usual roles of the parties. The natural defendant becomes a claimant and vice-versa. This can result in procedural complications and possible injustice to an unwilling 'defendant'. This in itself justifies caution in extending the circumstances where negative declarations are granted, but, subject to the exercise of appropriate circumspection, there should be no reluctance to their being granted when it is useful to do so."
"[20] … A line of authority running from Guaranty Trust Company of New York v Hannay & Co [1915] 2 KB 536 through Messier-Dowty Ltd v. Sabena SA [2001] 1 All ER 275, culminating in the judgment of Neuberger J in Financial Services Authority v Rourke (unreported) 19th October 2001, establishes three relevant principles:
i) The correct approach to the question of whether to grant negative declarations was one of discretion rather than jurisdiction.
ii) The use of negative declarations should be scrutinised and their use rejected where it would serve no useful purpose, but where such a declaration would help ensure that the aims of justice were achieved, the court should not be reluctant to grant a negative declaration.
iii) Before a court can properly make a negative declaration, the underlying issue must be sufficiently clearly defined to render it properly justiciable."
This seems to have been approved on appeal, [2006] EWCA Civ 1618; [2007] FSR 23. The third principle was accepted by Arnold J in Actavis UK Ltd v Eli Lilly & Co [2016] EWHC 234 (Pat), at [34].
The DNI sought in this case
"Obviously, it is open to the Court, if it sees fit, and depending upon the extent of any findings it makes, to grant a DNI in different terms to those sought."
This seemed possibly to be not as innocuous as it looked. During Ms Michaels' opening speech I asked her to elaborate on Skyscape's idea of the correct approach by the court to an application for a DNI. It became clear that the real application being made by Skyscape, couched in reassuring and characteristically persuasive language by Ms Michaels, was that were I to decide that the declaration in Annex 1 was too wide in this or that regard, I should make a declaration in whatever narrower form I thought appropriate. Putting it bluntly (which Ms Michaels understandably did not), if I was not prepared to grant the DNI sought in full, Skyscape was willing to take whatever declaration it could get, at least pending any appeal.
"1. The Claimant [shall] serve on the Defendants by 4pm on 26 June 2015 an exhaustive and unambiguous list of the acts carried out by the Claimant for which the Declaration is sought (the 'Claimant's Particulars of Non-Infringement')."
The fall-back draft DNIs
Revised draft order (1)
Revised draft order (2)
"…provided by or with the licence of the Claimant to UK public sector entities either through G-Cloud or otherwise in compliance with public procurement requirements, and in accordance with the security standards required therefor"
Ruling made on the draft fall-back DNIs
Sky's best case
(i) computer software Class 9(ii) computer programs Class 9
(iii) data storage Class 9
(iv) computer software supplied from the Internet Class 9
(v) electronic mail services Class 38
(vi) advice relating to the development of computer systems Class 42
(vii) advisory services relating to computer based
information systems Class 42
Class 9 is for goods; classes 38 and 42 for services.
Skyscape's services
(1) Infrastructure as a Service ("IaaS"): the provider offers only storage, network and other basic resources. Using these resources the user will run its own applications and may run its own operating software.(2) Platform as a Service ("PaaS"): the provider further offers operating software and 'middleware', that is to say programs which act as an interface between the operating software and the user's applications.
(3) Sofware as a Service ("SaaS"): the provider in addition offers applications for the user to run.
(4) Specialist Cloud Services ("SCS"): these are specialist services not offered by Skyscape.
The law
Infringement pursuant to art.9(1)(b)
The overall approach
"[28] A proprietor of a registered trade mark alleging infringement under art.5(1)(b) of the Directive must satisfy six conditions, namely: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical with or similar to the trade mark; (v) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion."
Conditions (iv) and (v) as threshold requirements
"… liability is confined to those cases in which the registered trade mark and the sign complained of are the same or similar and where the goods or services in issue are the same or similar. Similarity is not just a matter to be taken into account in the assessment of the likelihood of confusion; it is also a threshold requirement before infringement can be found."
In J.W. Spear & Sons Ltd v Zynga, Inc [2015] EWCA Civ 290; [2015] FSR 19, Floyd LJ considered the threshold requirement of similarity between mark and sign and said this:
"[60] Thus I would summarise the position in the following way:
(i) The court should assess the phonetic, visual and conceptual similarity of mark and sign and decide whether, overall, mark and sign would be perceived as having any similarity by the average consumer.
(ii) If no overall similarity at all would be perceived, the court would be justified in declining to go on and consider the likelihood of confusion applying the global appreciation test, as art.9(1)(b) is conditional on the existence of some similarity. Such situations are not likely to occur often in contested litigation, but where they do occur, it is not legitimate to take account of any enhanced reputation or recognition of the mark.
(iii) Where the average consumer would perceive some overall similarity, however faint, the court must go on to conduct the global appreciation test for the likelihood of confusion, taking account where appropriate of any enhanced reputation or recognition of the mark.
(iv) In conducting the global appreciation test the court must take forward its assessment of the degree of similarity perceived by the average consumer between mark and sign."
Condition (vi): likelihood of confusion
"[31] Turning to Condition (vi), this court explained the general approach to be adopted to the assessment of the likelihood of confusion in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19 at [51]–[52]. We endorsed at [52] the following summary of the key principles developed by the Trade Marks Registry as being sufficient for the determination of many of the disputes coming before it:
"52. …
(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
[32] In Maier we explained (at [76]) that to this summary should be added the further guidance provided by the Court of Justice in Canon (at [29]) that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion for the purposes of the provision.
[33] The decision in Specsavers clarified one further important point concerning the context of the accused use. As this court said at [87]:
"… In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
" … the likelihood of confusion must be assessed globally taking into account all relevant factors and having regard to the matters set out in Specsavers [2012] FSR 19 at [52] and repeated above. If the mark and the sign have both been used and there has been actual confusion between them, this may be powerful evidence that their similarity is such that there exists a likelihood of confusion. But conversely, the absence of actual confusion despite side by side use may be powerful evidence that they are not sufficiently similar to give rise to a likelihood of confusion. This may not always be so, however. The reason for the absence of confusion may be that the mark has only been used to a limited extent or in relation to only some of the goods or services for which it is registered, or in such a way that there has been no possibility of the one being taken for the other. So there may, in truth, have been limited opportunity for real confusion to occur."
"[34] All of this guidance makes clear that the matter must be assessed from the perspective of the average consumer. This court considered the characteristics of the average consumer at some length in Interflora Inc v Marks and Spencer plc [2015] EWCA Civ 1403; [2014] F.S.R. 10 from [107]-[130]. The following general points emerge further to those set out above:
(i) the average consumer is a hypothetical person or, as he has been called, a legal construct; he is a person who has been created to strike the right balance between the various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market, and also to provide a standard, defined in EU law, which national courts may then apply;
(ii) the average consumer is not a statistical test; the national court must exercise its own judgment in accordance with the principle of proportionality and the principles explained by the Court of Justice to determine the perceptions of the average consumer in any given case in the light of all the circumstances; the test provides the court with a perspective from which to assess the particular question it has to decide;
(iii) in a case involving ordinary goods and services, the court may be able to put itself in the position of the average consumer without requiring evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up his or her own mind about the particular issue he or she has to decide in the absence of evidence and using his or her own common sense and experience of the world. A judge may nevertheless decide that it is necessary to have recourse to an expert's opinion or a survey for the purpose of assisting the court to come to a conclusion as to whether there is a likelihood of deception;
(iv) the issue of a trade mark's distinctiveness is intimately tied to the scope of the protection to which it is entitled. So, in assessing an allegation of infringement under art.5(1)(b) of the Directive arising from the use of a similar sign, the court must take into account the distinctiveness of the trade mark, and there will be a greater likelihood of confusion where the trade mark has a highly distinctive character either per se or as a result of the use which has been made of it. It follows that the court must necessarily have regard to the impact of the accused sign on the proportion of consumers to whom the trade mark is particularly distinctive; and
(v) if, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court then it may properly find infringement."
"(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;"
"[87] In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
Infringement pursuant to art.9(1)(c)
"[110] Further, infringement under this provision requires a degree of similarity between the mark and the sign such that the average consumer makes a connection between them. It is not necessary that the degree of similarity be such as to create a likelihood of confusion, but it must be such that the average consumer establishes a link between the mark and the sign; and this is to be assessed globally having regard to all of the circumstances of the case: Specsavers at [120]; Adidas-Salomon at [29]–[30]. The fact that for the average consumer the sign would call the mark to mind is tantamount to the existence of such a link: Specsavers at [122]; Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) EU:C:2008:655; [2009] RPC 15 at [60].
[111] In Interflora this court explained (at [69]) that a proprietor of a registered trade mark alleging infringement under art.5(2) must therefore show that the following requirements are satisfied: (i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say: (a) detriment to the distinctive character of the trade mark; (b) detriment to the repute of the trade mark; or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause.
[112] In this case we are concerned only with the first and second of these types of damage, that is to say detriment to the distinctive character of the Mark and detriment to the repute of the Mark.
[113] The Court of Justice explained what is meant by detriment to the distinctive character of a mark in Intel at [29]:
"As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so."
[114] The Court then went on (at [72]–[76]) to explain how such injury might be established. In summary, it is not necessary for the earlier mark to be unique, although the more "unique" it appears, the greater the likelihood that a later identical or similar mark will be detrimental to its distinctive character; second, the use of an identical or similar mark may suffice, in some circumstances, to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future; and third, detriment to the distinctive character of the earlier mark is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened. There followed at [77] this important explanation of what is needed by way of proof:
"77. It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future."
[115] Then, at [78], the Court emphasised that it is immaterial for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark.
[116] The need for evidence of a change in the economic behaviour of the average consumer, or a real likelihood that such a change will occur in the future, was considered by the Court of Justice once again in Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-383/12) given on 14 November 2013 at [34]–[43] in considering the similar provisions in Regulation 207/2009. The Court said this:
"34. According to the Court's case-law, proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (Intel Corp , paragraphs 77 and 81, and also paragraph 6 of the operative part of the judgment).
35. Admittedly, paragraph 77 of the Intel Corp judgment, which begins with the words '[i]t follows that', immediately follows the assessment of the weakening of the ability to identify and the dispersion of the identity of the earlier mark; it could thus be considered to be merely an explanation of the previous paragraph. However, the same wording, reproduced in paragraph 81 and in the operative part of that judgment, is autonomous. The fact that it appears in the operative part of the judgment makes its importance clear.
36. The wording of the above case-law is explicit. It follows that, without adducing evidence that the condition is met, the detriment or the risk of detriment to the distinctive character of the earlier mark provided for in Article 8(5) of Regulation No 207/2009 cannot be established."
[117] A little later, it continued:
"42. Admittedly, Regulation No 207/2009 and the Court's case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions.
43. None the less, such deductions must not be the result of mere suppositions but, as the General Court itself noted at paragraph 52 of the judgment under appeal, in citing an earlier judgment of the General Court, must be founded on 'an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case'."
[118] Here the Court of Justice has explained that a serious risk of detriment may be established by deduction, but any such deduction cannot be supposition and must instead be founded properly on all the circumstances of the case and the nature of the trade in issue.
[119] Turning now to damage to reputation, the Court of Justice provided this assistance in L'Oréal SA v Bellure NV (C-487/07) EU:C:2009:378; [2010] RPC 1 at [40]:
"40. As regards detriment to the repute of the mark, also referred to as 'tarnishment' or 'degradation', such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark."
[120] The use must also be "without due cause". As the Court of Justice made clear in Intel at [39], where the proprietor of a registered mark has shown that there is either actual and present injury to its mark for the purposes of art.4(4)(a) of the Directive (the ground for refusal corresponding to art.5(2) ), or failing that, a serious risk that such injury will occur in the future then it is for the proprietor of the later mark to establish there is due cause for the use of the later mark.
[121] The issue of what constitutes due cause was considered by the Court of Justice on a preliminary reference in Interflora Inc v Marks & Spencer Plc (C-323/09) [2012] FSR 3; [2012] ETMR 13, in the context of keyword advertising. It explained (at [91]) that the use of a trade mark as a keyword in order to advertise goods which were an alternative to but not mere imitations of the goods of the proprietor and in a way which did not cause dilution or tarnishment and which did not adversely affect the functions of the trade mark must be regarded as fair competition and could not be prohibited.
[122] More recently, the Court of Justice again considered this issue in Leidseplein Beheer BV, Hendrikus De Vries v Red Bull GmbH, Red Bull Nederland BV (C-65/12) [2014] ETMR 24. Red Bull owned the trade mark "Red Bull Krating-Daeng" which was registered for non-alcoholic drinks in Class 32 as of 1983. In these proceedings it complained of the use by Mr De Vries of the sign "The Bulldog" in respect of a high energy drink. This use began after the date of registration. However, Mr De Vries had used the mark "The Bulldog" as a trade mark for hotel, restaurant and café services since 1975. Having regard to the circumstances of the case the Court explained that the concept of due cause should be interpreted in the following way:
"60. Consequently, it follows from all of the foregoing considerations that the answer to the question referred is that art.5(2) of Directive 89/104 must be interpreted as meaning that the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of "due cause" within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith. In order to determine whether that is so, the national court must take account, in particular, of:
- how that sign has been accepted by, and what its reputation is with, the relevant public;
- the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and
- the economic and commercial significance of the use for that product of the sign which is similar to that mark."
[123] More broadly the Court has explained that the concept of due cause involves a balancing between, on the one hand, the interests which the proprietor of a trade mark has in safeguarding its essential function and, on the other hand, the interests of other economic operators in having signs capable of denoting their products and services (see, in particular, Leidseplein at [41]–[46])."
"[125] Unfair advantage. The Court of Justice described taking unfair advantage of the distinctive character or repute of a trade mark in L'Oréal SA v Bellure NV (C-487/07) [2009] ECR I-5185; [2009] ETMR 55; [2010] RPC 1 at [41] as follows:
"As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation."
[126] The Court of Justice explained the correct approach to determining whether unfair advantage has been taken of the distinctive character or repute of the trade mark in that case as follows:
"44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation at [67]–[69]).
45. In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.
…
49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark."
[127] It is clear both from the wording of art.5(2) of the Directive and art.9(1)(c) of the Regulation and from the case law of the Court of Justice interpreting these provisions that this aspect of the legislation is directed at a particular form of unfair competition. It is also clear from the case law both of the Court of Justice and of the Court of Appeal in this country that the defendant's conduct is most likely to be regarded as unfair where he intends to take advantage of the reputation and goodwill of the trade mark. Nevertheless, in Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch); [2014] FSR 39 at [80] I held that there is nothing in the case law to preclude the court from concluding in an appropriate case that the use of a sign the objective effect of which is to enable the defendant to benefit from the reputation and goodwill of the trade mark amounts to unfair advantage even if it is not proved that the defendant subjectively intended to exploit that reputation and goodwill."
Burden of proof
Analysis
Article 9(1)(b)
The threshold conditions
The average consumer
(i) provided by or with the licence of Skyscape,(ii) to UK public sector entities,
(iii) either through G-Cloud or otherwise in compliance with public procurement requirements and in accordance with the security standards required therefor
and which are
(iv) secure cloud services and services ancillary thereto in the form of one of the ten services listed in subparagraph (a), or alternatively
(v) services enabling transition to secure cloud services.
"The assessment must take account of the goods and services in question and, as the Court of Appeal said in L'Oréal, albeit in another context: 'A touch of reality is called for'.
"That must particularly be borne in mind in this case, which involves computer systems which are selected and installed with care and used over a lengthy period and where maintenance is provided by system administrators. In such a context, expectations of the average consumer's ability to perceive and discriminate must not be set too low."
"[71] In reality, given the ways we promote our services and the procurement frameworks through which we contract, I do not believe the general public is ever likely to become aware of our business or the services we offer; they simply are not relevant to consumers.
[72] On the contrary, as will be very apparent from the description of the services which I have provided above, the services are of a kind which are purchased only after a great deal of careful research and consideration and a tendering process (if the services are not being provided via the G-Cloud framework). The 'average purchaser' for these services (for the great majority of our actual customers) is a well-informed and careful civil servant, purchasing on behalf of a public sector body, generally spending a substantial amount of money and needing to be in a position to justify doing so. A very high level of care will be expended in making the appropriate choice of service provider, and the purchaser's decision will be subject to validation through a formal approvals process."
"[74] … However, even where our customer is a small entity they will normally engage someone appropriately IT-skilled to assist in selecting the services, in order to ensure they are buying the right services, and would not learn about our services except through the public sector sources I have described above."
The distinctive repute of SKY as a mark
The overall hypothesis
Likelihood of confusion
"Scape 1773. [Abstracted from LANDSCAPE]. A view of scenery of any kind. Also as the second element of combs., as in as SEA-SCAPE, cloud-scape, etc."
Although this reinforces my impression of how 'Skyscape' would be perceived, really the contents of the dictionary are beside the point. I think that the average English-speaking consumer would instinctively split Skyscape into two conceptual parts: 'sky' defining a type of 'scape' in the sense of a view.
Article 9(1)(c)
The evidence
Detriment to the distinctive character of the SKY Mark
Detriment to the repute of the SKY Mark
Unfair advantage being taken of the distinctive character or repute of the SKY Mark
Without due cause
Conclusion
IT IS DECLARED THAT European Union Trade Marks Nos. 6870992, 3203619, 5709951 and 10090405 and UK trade mark No.2500604 are not infringed by use in the UK of any of the following marks:
(1) The word SKYSCAPE whether used
a. in the fonts shown in Annex A or B hereto or, where the word is used as part of a sentence, in font matching the surrounding text,
b. in black/greyscale or in the colours shown in Annex A or B hereto, and
c. in upper or sentence case;
(2) The words SKYSCAPE CLOUD SERVICES whether used
a. in the fonts shown in Annex A or B hereto or where the word is used as part of a sentence, in font matching the surrounding text,
b. whether in black/greyscale or in the colours shown in Annex A or B hereto and
c. in upper or sentence case;
(3) The logos shown in Annex A or B hereto (whether in black/greyscale or in the colours shown therein),
in relation to the following services or any of them, where the said services are provided by or with the licence of the Claimant to UK public sector entities either through the G-cloud or otherwise in compliance with public procurement requirements, and in accordance with the security standards required therefor:
(a) The provision of secure cloud services, and services ancillary thereto:
i. cloud storage data services;
ii. online file sharing via computers and mobile devices of data stored in cloud storage;
iii. remote access services for accessing cloud storage data;
iv. online platforms for managing cloud storage data;
v. cloud-based email, calendar, contact and archive services;
vi. data disaster recovery services;
vii. training relating to cloud services;
viii. application programme interfaces for users to access and control cloud storage data services;
ix. online cloud-based conferencing and document collaboration services
x. "Infrastructure as a Service" computing and storage on demand services, including data protection and backup services, "Platform as a Service" platforms, and "Software as a Service" messaging and document management services, in each case as defined by the National Institute of Standards and Technology; and
(b) The provision of services enabling transition to the said secure cloud services.
IT IS DECLARED THAT European Union Trade Marks Nos. 6870992, 3203619, 5709951 and 10090405 and UK trade mark No.2500604 are have not been infringed by use in the UK of any of the following marks:
(1) The word SKYSCAPE whether used
a. in the fonts shown in Annex Aor Bhereto or, where the wordiswas used as part of a sentence, in font matching the surrounding text,
b. in black/greyscale or in the colours shown in Annex Aor Bhereto, and
c.in upper or sentence case;
c. whether used as SKYSCAPE or Skyscape;
(2) The words SKYSCAPE CLOUD SERVICES whether used
a. in the fonts shown in Annex Aor Bhereto or where the word is used as part of a sentence, in font matching the surrounding text,
b. whether in black/greyscale or in the colours shown in Annex Aor Bhereto and
c.in upper or sentence case;
c. in SKYSCAPE CLOUD SERVICES, Skyscape Cloud Services or SKYSCAPE Cloud Services;
(3) The logos shown in Annex Aor Bhereto (whether in black/greyscale or in the colours shown therein),
in relation to provision of any of the following secure cloud services or any of them, and services ancillary thereto, where the said services are were provided by or with the licence of the Claimant to UK public sector entities either through the G-cloud or otherwise in compliance with public procurement requirements, and in accordance with the security standards required therefor:
(a) The provision of secure cloud services, and services ancillary thereto:
i. cloud storage data services; ii. online file sharing via computers and mobile devices of data stored in cloud storage; iii. remote access services for accessing cloud storage data; iv. online platforms for managing cloud storage data;
v. cloud-based email, calendar, contact and archive services; vi. data disaster recovery services; vii. training relating to cloud services;
viii. application programme interfaces for users to access and control cloud storage data services; ix. online cloud-based conferencing and document collaboration services
x. "Infrastructure as a Service" computing and storage on demand services, including data protection and backup services, "Platform as a Service" platforms, and "Software as a Service" messaging and document management services, in each case as defined by the National Institute of
Standards and Technology; and
xi.(b)The provision ofservices enabling transition to the said secure cloud services.
IT IS DECLARED THAT European Union Trade Marks Nos. 6870992, 3203619, 5709951 and 10090405 and UK trade mark No.2500604 are not infringed by use in the UK of any of the following marks:
(1) The word SKYSCAPE whether used
a. in the fonts shown in Annex A or Annex B hereto or, where the word is used as part of a sentence, in font matching the surrounding text,
b. in black/greyscale or in the colours shown in Annex A or Annex B hereto, and
c.in upper or sentence case;
c. whether used as SKYSCAPE or Skyscape;
(2) The words SKYSCAPE CLOUD SERVICES whether used
a. in the fonts shown in Annex A or Annex B hereto or where the word is used as part of a sentence, in font matching the surrounding text,
b. whether in black/greyscale or in the colours shown in Annex A or Annex B hereto and
c.in upper or sentence case;
c. whether used as SKYSCAPE CLOUD SERVICES, Skyscape Cloud Services or SKYSCAPE Cloud Services;
(3) The logos shown in Annex A or Annex B hereto (whether in black/greyscale or in the colours shown therein),
in relation to provision to any entity which at the time of provision of the service falls within the description at Annex C hereto, of any of the following secure cloud services or any of them, and services ancillary thereto, where the said services are were provided by or with the licence of the Claimant to UK public sector entities either through the G-cloud or otherwise in compliance with public procurement requirements, and in accordance with the security standards required therefor:
(a) The provision of secure cloud services, and services ancillary thereto:
i. cloud storage data services; ii. online file sharing via computers and mobile devices of data stored in cloud storage; iii. remote access services for accessing cloud storage data; iv. online platforms for managing cloud storage data;
v. cloud-based email, calendar, contact and archive services;
vi. data disaster recovery services; vii. training relating to cloud services; viii. application programme interfaces for users to access and control cloud storage data services;ix. online cloud-based conferencing and document collaboration servicesix.x."Infrastructure as a Service" computing and storage on demand services, including data protection and backup services, "Platform as a Service" platforms, and "Software as a Service" messaging and document management services, in each case as defined by the National Institute of
Standards and Technology; and
x.(b)The provision ofservices enabling transition to the said secure cloud services.
Any entity that appears on the dynamic Cabinet Office list at https://www.gov.uk/currentcrown-commercial-service-suppliers-what-you-need-to-know under the heading "Download the latest customer URN list" and falls within the following description:
Bodies which
(a) are established for the specific purpose of meeting needs in the general interest, not having an industrial or commercial character;
(b) have legal personality; and
(c) have any of the following characteristics:—
(i) they are financed, for the most part, by the State, regional or local authorities, or by other bodies governed by public law
(ii) they are subject to management supervision by those authorities or bodies; or
(iii) they have an administrative, managerial or supervisory board, more than half of whose members are appointed by the State, regional or local authorities, or by other bodies governed by public law; and
(d) fall within the following exhaustive list of organisation types:
Central Government Department or Non-Departmental Public Body; Army, Navy, RAF or Cross-Service; Executive Agency or Public Corporation;
Devolved Administration (Scotland, Wales or Northern Ireland) Education, Emergency, Central Government, Health, Local Government or Not for Profit;
Academies (All types); Colleges of Further Education; Colleges of Higher Education; Free School (All types); Local Authority Maintained School (All Types); or Universities; but for the avoidance of doubt excluding Independent Schools unless they are registered charities; Fire and Rescue Service or Authority; Police Authority or Police Service.
Clinical Commissioning Group;
Health Commissioning Support Unit;
Dental Practice;
GP Practice;
Ambulance Trust;
Mental Health Trust;
Local Government Purchasing Consortium; Unitary Council, District Council, County Council, Parish Council; Regional Efficiency and Improvement Partnership; or Charity, Housing Association or other Not for Profit.