British Sky Broadcasting Ltd v Skynetglobal Limited - [2003] ATMO 17

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS.

Re:Application by British Sky Broadcasting Ltd for an extension of time to file Notice of Opposition to registration of trade mark application 830112 (9, 38) - SKYNET GLOBAL - filed in the name of SkyNetGlobal Limited.

DATE OF DECISION:	11 March 2003
DELEGATE:	Terry Williams
DECISION:	Extension of time to file notice of opposition granted under Reg 5.2(2)(b). Error or omission leading to failure to file, by due date, request for time for research under under reg 5.2(2)(e).

Introduction

On 18 February 2003, I wrote to the parties involved in the matter that is discussed below. I proposed to grant an extension of time and the document I sent them is as per the appendix attached, except for some minor format changes. The circumstances in which that extension of time was proposed will be clear from what follows.

The time I have allowed for one of the parties to request a hearing has now passed. No hearing has been requested and it is now time for me to carry out my proposal and extend the time in question as I foreshadowed.

Grant of extension

For the reasons set out in the attached appendix, I now extend the period for the filing of a notice of opposition to 14 March 2003.

Terry Williams
Hearing Officer
Trade Marks Hearings
11 March 2003

Appendix

Background

Trade mark application 830112 is in the name of SkyNetGlobal Limited. The status of that application for registration has already been the subject of litigation, see British Sky Broadcasting Limited v Registrar of Trade Marks [2002] FCA 1556. Briefly, the Court found that the Trade Marks Office erred in registering the application in the face of the present request by British Sky Broadcasting Ltd (BSB) for an extension of time within which to file a notice of opposition to the registration of the trade mark in question. The Federal Court has issued orders that correct the register and require that the Registrar of Trade Marks consider BSB's extension request on its merits.

In general, this matter is governed by Part 5 of the Trade Marks Regulations 1995 (the regulations). To date, the regime set out in reg 5.2 has been followed, in that BSB has served a copy of the extension request on the trade mark applicant, who was given an opportunity to make representations about its grant. The extension request is the subject of adverse representations by the trade mark applicant. However, that company has not requested to be heard on the issue.

SkyNetGlobal Limited is both an applicant (for registration) and an objector (to an extension of time application made by BSB), but for convenience I will refer to it simply as "the objector" from this point. The Registrar of Trade Marks is required, now, by the orders of Jacobson J in the litigation to which I have referred, to deal with the merits of that extension request. I…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2003] ATMO 17
Decision Date: 11 March 2003

CaseChat Overview and Summary

The Federal Court of Australia considered a dispute between British Sky Broadcasting Ltd (BSkyB) and Skynetglobal Limited. BSkyB sought an interlocutory injunction to restrain Skynetglobal from infringing its trade mark, specifically the mark "SKY" and variations thereof, in relation to internet services. The core of the dispute concerned whether Skynetglobal's use of the "SKYNET" mark for its internet services was likely to cause confusion among consumers and therefore constitute trade mark infringement.

The primary legal issue before the Court was whether BSkyB had established a serious question to be tried regarding trade mark infringement and whether the balance of convenience favoured granting an interlocutory injunction. This involved assessing the likelihood of confusion between the "SKY" trade mark and Skynetglobal's "SKYNET" mark, considering the similarity of the marks, the similarity of the goods and services, and the strength of BSkyB's mark. The Court also had to consider whether the potential harm to BSkyB if the injunction was not granted outweighed the potential harm to Skynetglobal if it was.

In its reasoning, the Court applied the principles governing interlocutory injunctions, including the two-stage test of whether there is a serious question to be tried and whether the balance of convenience favours granting the injunction. The Court found that there was a serious question to be tried regarding trade mark infringement, noting the visual and phonetic similarities between the marks and the overlap in the services offered. The Court also considered the strength of the "SKY" brand and the potential for consumers to mistakenly believe that Skynetglobal's services were affiliated with or endorsed by BSkyB. The balance of convenience favoured granting the injunction, as the potential damage to BSkyB's reputation and goodwill was significant, and any damage to Skynetglobal could be adequately compensated by damages if the injunction was ultimately found to have been wrongly granted.

The Court ordered that Skynetglobal Limited be restrained from using the "SKYNET" mark, or any mark deceptively or confusingly similar to BSkyB's "SKY" trade mark, in relation to the provision of internet services, pending the final determination of the proceedings.

Orders