SJ Berwin leads Sky to victory in key Microsoft infringement battle

SJ Berwin has advised broadcaster Sky on its successful trademark claim against Microsoft, whose ‘Skydrive’ cloud service was found to infringe on Sky’s brand in the UK and Europe.

The dispute, which began in 2011, saw Justice Sarah Asplin rule that the US software giant infringed the ‘Sky’ trademark in naming its cloud service ‘SkyDrive’, ruling that the name is likely to confuse customers.

Asplin 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.”

Microsoft has filed a counterclaim to partially invalidate Sky’s trademarks on the grounds of “descriptiveness for cloud storage services”.

SJ Berwin intellectual property (IP) partner David Rose acted for British Sky Broadcasting (BskyB) and related companies and instructed 11 South Square’s Iain Purvis QC and Brian Nicholson on the claim.

Redd Solicitors IP lawyer Anna Carboni brought in Wilberforce Chambers’ Michael Bloch QC and Three New Square’s Stuart Baran to lead the appeal for Microsoft.

In a statement, Microsoft said: “This case is only about the SkyDrive name and has nothing to do with service availability or future innovation. The decision is one step in the legal process and Microsoft intends to appeal.”

In 2010 Herbert Smith secured a major court victory for BSkyB, which found that IT supplier Electronic Data Systems (EDS) made false and negligent misrepresentations and was in breach of contract regarding a customer relationship management system it undertook to design and build.

Other firms to advise BskyB in the past include Weil Gotshal & Manges and Allen & Overy.