Newly-Appointed Kirkland Clinches Victory at Supreme Court in Longrunning Sky Feud

Law.com International covered Kirkland's work to secure a victory in a recent trademark infringement case for client SkyKick. Nicola Dagg and Steven Baldwin led the Kirkland team. 

A newly-instructed Kirkland & Ellis team has clinched victory at the U.K.'s Supreme Court following almost a decade of litigation involving telecoms giant Sky and U.S. cloud-based email migration company, SkyKick.

Kirkland, headed up by partner Steven Baldwin, took over from U.K. Top 50 firm Fieldfisher as SkyKick's legal representatives at the Supreme Court in September, following the Seattle-based company's acquistion by another U.S. IT platform, ConnectWise.

The final judgment saw five supreme court judges, presided by Lord Reed, overturn a previous Court of Appeal ruling and concluded that Sky had indeed acted in bad faith when it applied its trademark in categories of goods and services.

Sky, advised by Mishcon de Reya, initially claimed back in 2016 that SkyKick had infringed five of its trademarks, including the ‘SKY’ trademark by using ‘SkyKick’ in relation to their own products, using a combination of European Union trademarks as well as U.K. ones.

After the High Court initially found in favour of then Fieldfisher-advised SkyKick, the case was taken to the Court of Appeal in 2021 which concluded that the procedure adopted by the original judge had been “unfair”, and found that the telecommunications company had not acted in bad faith either.

Fieldfisher partner John Linneker previously led the case for SkyKick. However, the firm confirmed it was no longer legal counsel for SkyKick since its acquisition by ConnectWise.

In its ruling on Wednesday however, the Supreme Court unanimously found that the High Court had been “right” in the first instance, and the Court of Appeal was “wrong to reverse that finding.”

Nevertheless, this decision is unlikely to change much in practice, as SkyKick had decided to rebranded following its acquisition earlier this year. A spokesperson from SkyKick said: "In September 2024 Sky and SkyKick settled their trade mark disputes before the U.K. Court and the EU Intellectual Property Office, in advance of the Supreme Court making a draft judgment available to them, or a decision in the EU cases. SkyKick has, following its acquisition by ConnectWise on 10 September 2024, decided to re-brand. Both parties determined that their respective interests would be best served by concluding these long running disputes."

From an IP perspective however the decision also confirms that, despite withdrawal from the EU, the U.K. “maintains designation of these courts as E.U. trademark courts.

Commenting on the impact of this decision, head of U.K. IP at Ashurst partner Sunny Kumar, explained: "This judgment was highly anticipated because it had the potential to deviate from settled EU case law on what constitutes bad faith registrations of a trade mark. The effect of this would have seen the first significant divergences between U.K. and EU law in the field of intellectual property since Brexit. However the Supreme Court has in most part upheld the High Court's decision and thus has not deviated from settled EU case law.”

Mishcon did not respond to requests for comment at the time of publication.