Skyscape Cloud Services Ltd v Sky Plc: cloud firm fails to clear its name over ‘Skyscape’

What happened

Skyscape supplied cloud computing services to the UK public sector. Sky, the broadcasting and telecoms group, threatened trademark infringement proceedings over the name 'Skyscape'. Rather than wait to be sued, Skyscape went to court first, asking for a declaration of non-infringement (a DNI, a ruling that its use of the name doesn't break the law) covering a wide range of uses across its business, tested against five of Sky's registered trademarks. Sky didn't bring its own infringement claim. The court was asked to rule on Skyscape's whole draft order, but ended up testing only one narrowed example that Sky put forward: use of 'Skyscape' for email services against Sky's SKY mark.

What did the court decide in Skyscape Cloud Services v Sky?

The judge refused to rule on Skyscape's broad and shifting list of uses, finding the issues weren't defined clearly enough to be decided. Instead, the judge tested only Sky's narrowed example: whether 'Skyscape' used for email services infringed the SKY trademark. Because Skyscape was the one asking for the declaration, it had to prove the negative, that there was no likelihood of confusion and no unfair advantage taken of Sky's reputation. The judge found Skyscape had not proved either point, and dismissed the claim.

What we learned from this

• What I'd take from this is that asking a court to clear your name before you're sued can backfire if your request covers too much ground. Skyscape had to disprove infringement across its whole offering, while Sky only needed one example to stick.
• If you're considering a declaration of non-infringement, define the exact uses and goods or services you want cleared, narrowly and early, rather than leaving it broad.
• Remember that in a DNI claim, the burden of proof sits with you, the party seeking the declaration, not with the trademark owner.
• A well-known mark forming part of a similar-sounding composite name (like SKY inside Skyscape) makes it easier for the court to find a likelihood of confusion or unfair advantage.

Things to be aware of

The businesses involved

What happened next

• Following the ruling, Skyscape changed its trading name to UKCloud, dropping the Skyscape brand it had used for its public sector cloud services.Source: Itpro, August 2016
• Trade press reported that the rename to UKCloud took effect around the G-Cloud 8 procurement framework listing in mid-2016.Source: Itpro, August 2016
• Coverage noted the dispute was framed as a David-versus-Goliath contest, with Skyscape needing to disprove infringement across its whole offering while Sky needed only one successful example.Source: Diginomica, July 2016