For more than three years, Seattle startup SkyKick has been embroiled in a legal dispute with Sky, the Comcast-owned British media powerhouse, and an upcoming opinion in the case could have a major impact on trademark rules in the U.K. and Europe.
Sky sued SkyKick in 2016 for trademark infringement. However, SkyKick, which has an office in Amsterdam and does business in Europe, fired back, arguing in a counterclaim that Sky’s trademarks in areas like “computer software” were too broad and should be thrown out. SkyKick also argued some of the trademarks were sought in bad faith because Sky never intended to operate in those areas.
The High Court of England and Wales referred several questions in the case to the Advocate General for the Court of Justice of the European Union. An opinion from the advocate general was expected as soon as this week, but it was delayed until mid-October.
The opinion from the advocate general could go a long way in guiding the eventual decision in the case. However, SkyKick noted in a statement that it is just one part of the larger legal process. Here is SkyKick’s full statement on the case:
For three years SkyKick has been defending our right against Sky Broadcasting to continue using the SkyKick name in Europe. The case is also of wider importance to all businesses looking to enter the European markets because the judgement will define the scope of protection of European trademark registrations. While the Advocate General’s opinion on the case is just one step in this legal process, we are confident that SkyKick has presented a strong position to defend the use of our name in Europe.
Comcast declined to comment. The cable and telecom giant acquired Sky in a blockbuster $40 billion deal last year and then spent another $15 billion to buy out rival 21st Century Fox’s shares in the company.
SkyKick, No. 38 on the GeekWire 200 list of the Pacific Northwest’s top startups, is no small potato. However, it is going up against a behemoth in Sky, which brought in $4.8 billion in revenue in the second quarter alone and has the resources of parent company Comcast behind it.
The central question in the dispute is whether companies should be allowed to file trademarks for things that aren’t part of their business. If the court sides with Sky, it’s possible SkyKick could be barred from using its name in Europe.
Should SkyKick prevail, companies may have to narrow down trademark applications and move away from broad concepts like “computer software” to focus on areas they actually operate in. Freeths, a U.K. based law firm, discussed the broader implications in an analysis of the case in 2018:
Filing applications for incredibly broad specifications for which there can be no hope of use would no longer be the best way of carving out a broad monopoly for the mark in question, as such applications would be inherently vulnerable to revocation.
It might be that in the future the best way to secure the broadest of protection possible is to limit specifications to those goods and services where there is at least a faint commercial rationale for including them (and noting that rationale at the time of filing).
Founded by a pair of ex-Microsoft employees, SkyKick builds software for consulting companies and service providers that small-and-medium-size businesses use to create an IT strategy. Its flagship product, Migration Suites for Office 365, simplifies moving email and productivity tools over to the Microsoft-hosted Office 365.
SkyKick in May raised $40 million, and said at the time it planned to hire “across the board,” focusing on its Seattle headquarters but also looking to boost engineering, sales, marketing, and support across its worldwide offices in Amsterdam, Sydney, and Tokyo. The company said in May it had 150 employees around the world, and it has raised $65 million to date.
