Case No: HC11C01968 Neutral Citation Number: [2013] EWHC 1826 (Ch)
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION INTELLECTUAL PROPERTY COMMUNITY TRADE MARK COURT
Rolls Building, 7 Rolls Building, Fetter Lane, London, EC4A 1NLDate: 28/06/2013
Before
:
MRS JUSTICE ASPLIN
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Between :(1)BRITISH SKY BROADCASTING GROUPPLC(2)SKY IP INTERNATIONAL LIMITED(3)BRITISH SKY BROADCASTING LIMITED(4)SKY INTERNATIONAL AGClaimants - and -(1)MICROSOFT CORPORATION(2)MICROSOFT LUXEMBOURG SARLDefendants
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Iain Purvis QC and Brian Nicholson
(instructed by
SJ Berwin LLP
) for the
ClaimantsMichael Bloch QC, Anna Carboni and Stuart Baran
(instructed by
Redd Solicitors LLP
)for the
Defendants
Hearing dates: 12, 15 – 19, 23 – 24 April 2013- - - - - - - - - - - - - - - - - - - - -Judgmen
t
Mrs Justice Asplin :
1.
This is an action for passing off and for infringement of two registeredCommunity trade marks (CTMs) and two UK registered trade marks (UKTMs) for themark ‘SKY’ by which the Claimants seek to prevent the Defendants from using“SkyDrive” as the name for their cloud storage service throughout the EuropeanUnion.
2.
By way of counterclaim the Defendants seek a declaration of partial invalidity inrespect of all four SKY trade marks on the grounds of descriptiveness for cloudstorage services and a declaration of invalidity in respect of CTM 411 in the light of what is alleged to have been its impermissible amendment.
3.
The counterclaim for the revocation of UKTM 176 on the grounds of lack of genuine use in relation to “receipt, storage and provision of computerised businessinformation data” is no longer pursued.
The Parties4.
There are four Claimants for reasons connected with the ownership and licenseduse of the various marks in issue. They are British Sky Broadcasting Group plc, SkyIP International Limited, British Sky Broadcasting Limited and Sky International AG.The first Claimant, British Sky Broadcasting Group plc owns and ultimately controlsthe activities of the others and nothing turns for present purposes on any distinction between them. Accordingly, I shall refer to the Claimants together as ‘Sky’.
5.
The Defendants, Microsoft Corporation and Microsoft Luxembourg Sarl aremembers of the world-renowned computing and software group, Microsoft, which isresponsible for the Windows operating system, the Microsoft Office suite and theBing internet search engine, as well as SkyDrive. The First Defendant is the parentcorporation and the Second Defendant sells and markets its products within Europe. Nothing turns on the distinction between them and I shall refer to them together as‘Microsoft’.
6.
Sky is a provider of television and communication products and servicesincluding broadband in the United Kingdom. In 2001, it produced a set-top box(Sky+) which includes digital storage for recording and replaying content. In 2005-6,it started transmitting its content over the Internet, available both through home broadband and mobile devices which include smart phones, iPads and similar devices.From 2006, it has itself been an Internet service provider. By the end of 2010, its broadband service was being used by over 3 million households and by 2012, thenumber of households had increased to 4.1 million.
7.
Over the years, Sky has adopted a whole series of trade marks, comprising themark ‘Sky’ followed by a descriptive element. This practice has been followed notonly for its channels such as Sky Movies and Sky Sports, but also for its platformssuch as Sky+, Sky Digital, Sky Broadband and for its computer software running onsuch platforms such as Sky Go, Sky Mobile, Sky Bet and Sky Photos. Two typical presentations of Sky’s sign are:
8.
Between 2008 and 2011, Sky provided ‘Sky Store & Share’, which was an onlinestorage service available for customers to upload and share their digital files and photos, and information about events and appointments. Sky Store & Share is nolonger available to the public having been discontinued in December 2011.
9.The Acts complained of 10.
Microsoft’s SkyDrive product was launched in the UK, the USA and India inAugust 2007 and in the rest of the EU during 2008. The product provides users withan online storage facility for document files, photos and the like which they can thenaccess from anywhere on the internet and make available for sharing with others. Itformed part of the “Windows Live” online services alongside Hotmail email and theMessenger messaging service. Its logo was:
11.
Microsoft’s use of the SkyDrive sign has since developed into what Skycharacterises as a major stand-alone brand. Since 2012, SkyDrive has started tofeature as one of the main start-up tiles on the Defendants’ Windows 8 operatingsystem and SkyDrive apps are now available for platforms including WindowsDesktops, Macs, iPhones, iPads, Android Phones, Windows Phones and the Xboxgames machine.
12.
By June 2011 when this action was commenced, SkyDrive had over 3 millionusers in the UK, nearly 20 million in the EU and 92 million worldwide. The SkyDrivesign is now in the following form:
13.
Copies of the sign used in relation to SkyDrive in all of the forms in which it hasappeared are set out in appendix 1 to this judgment. As I have already mentioned, Skycontends that Microsoft’s use of the signs in all their forms in relation to cloud storageservices has amounted to an infringement of their UKTMs and CTMs and amounts to passing off.