British Sky Broadcasting Group Plc & Ors v Microsoft Corporation Microsoft & Anor [2013] EWHC 1826 (Ch) (28 June 2013)

In British Sky Broadcasting Group Plc & Ors v Microsoft Corporation Microsoft & Anor [2013] EWHC 1826 (Ch) (28 June 2013) the broadcaster succeeded in its trade mark infringement claim against Microsoft. Mrs Justice Asplin (or as Legal Week has it, elevating her to a much higher court, "Justice Sarah Asplin", or even just "Asplin", which shows a distinct lack of respect for the judiciary) rule that Microsoft infringed two Community and two UK SKY trademarks when it named its cloud service "SkyDrive". The judge said:

Damage is inherently likely where frequently the customers of a business wrongly connect it with another...in my judgment, is clear from the very fact that the callers to the Sky helpline who were enquiring about SkyDrive were having serious difficulties with the product which they believed to be connected with Sky.

The defendant counterclaimed for a declaration of partial invalidity of all four trade marks involved, on the ground of descriptiveness for cloud storage services (a touch of pot and kettle there, although of course Microsoft were not defending a trade mark registration, for which one hopes "Sky Drive" for cloud computing services would never qualify), and also sought a declaration of invalidity in respect of one CTM in the light of what is alleged to have been its impermissible amendment. On the descriptiveness point, the judge said:

This is not a case in which there is a ‘sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics.’

She was also pretty dismissive of the amendment argument. Microsoft has announced that it intends to appeal.