Sky Network Television Limited v SkyFiber Inc
[2012] NZHC 3559
•19 December 2012
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
CIV 2012-485-001387 [2012] NZHC 3559
UNDER The Trade Marks Act 2002
IN THE MATTER OF An appeal from the decision of the Assistant Commissioner of Trade Marks dated 11 June 2012 [2012] NZIPOTM 15
BETWEEN SKY NETWORK TELEVISION LIMITED
Appellant
ANDSKYFIBER INC Respondent
Hearing: 31 October 2012
Counsel: M C Hayes for the Appellant
No appearance for the Respondent (abides) Judgment: 19 December 2012
JUDGMENT OF MALLON J
Contents
Introduction ....................................................................................................................................... [1] Background........................................................................................................................................ [2] Statutory test...................................................................................................................................... [7] The Assistant Commissioner’s decision ........................................................................................... [9] Sky’s position ................................................................................................................................... [13] The evidence .................................................................................................................................... [16] My assessment ................................................................................................................................. [24]
Result ................................................................................................................................................ [41]
SKY NETWORK TELEVISION LIMITED v SKYFIBER INC HC WN CIV 2012-485-001387 [19 December
2012]
Introduction
[1] Sky Network Television Ltd (“Sky”) appeals against a decision of the Assistant Commissioner of Trade Marks on an application by SkyFiber, Inc (“SkyFiber”) for revocation for non-use of Sky’s trade mark registration. The Assistant Commissioner ruled that the goods specification for Sky’s trade mark should be amended. The issue on this appeal is whether the Assistant Commissioner correctly arrived at a fair specification of goods for the SKY trade mark. Sky contends that she did not. SkyFiber abides the Court’s decision.
Background
[2] Sky has a registered trade mark for the word “SKY”.1 The date of the registration of the mark is 4 August 1998. The mark is registered in class 9. The specification for this mark in class 9 reads as follows:
apparatus for recording, transmission or reproduction of information, sound or images; television, video and multimedia receivers; electronic decoders, modems, computers, CD-Roms, hardware/software, visual display units, monitors, magnetic data carriers and recording discs; parts and fitting for the aforesaid goods
[3] On 12 June 2009 SkyFiber applied to register the mark “SkyFiber” as a word
in class 9 with the goods specification as follows:
Laser communication apparatus and equipment, namely, optical antennas, switches, digital electronic laser packages comprising modems, LAN hardware, modem cables, ethernet cables, power supplies, guides, reference cards, manuals and software to modify configurations of digital electronic laser packages, all sold as a unit
[4] As is the usual procedure, the trade mark examiner examined the application by SkyFiber. The examiner identified an issue on the basis that Sky’s registered mark was a prior mark which was similar to the mark, and for similar goods to the
goods in SkyFiber’s application.2 This led to an application by SkyFiber for
1 It has other registered trademarks for “MY SKY”, ‘MY SKY HDI”, “SKYWATCH” and “SKY
SPORT”.
2 Trade Marks Act 2002, s 25(1)(b).
revocation on the grounds of non-use by Sky of its mark.3 This application was made on 6 August 2010. On 11 October 2010 Sky filed its counterstatement putting SkyFiber to proof that it was an aggrieved person4 and denying the grounds of revocation alleged. Both parties filed evidence. A hearing took place before the Assistant Commissioner. Counsel for Sky appeared at the hearing. SkyFiber did not appear, opting instead to abide by the Assistant Commissioner’s decision.
[5] The Assistant Commissioner determined that Sky’s mark should be partially revoked by reducing the specification of the goods. She amended the specification to:
Apparatus for pay television broadcasting for recording, transmission, or reproduction of information, sound, or images including parts and fittings for operating such apparatus.
[6] Sky appeals on the basis that this is not a fair specification considering the evidence of its use. SkyFiber’s application for registration of its mark is presently in abeyance pending the outcome of the revocation proceedings. Once the revocation application in respect of Sky’s mark has been determined SkyFiber can seek to proceed with its application for registration of its mark.5
Statutory test
[7] A “trade mark” is defined as meaning any “sign” capable of being represented graphically and distinguishing the goods or services of one person from those of another person.6 A “sign” is defined as including a word,7 and so “SKY” is a sign that can be registered as a trade mark as it has been. A registered mark may be revoked if it has not been used. At the relevant time this ground for revocation
was as follows:8
3 Section 66.
4 This is no longer an issue.
5 That application will be subject to the Commissioner’s assessment under ss 17 and 25. Sky will have the opportunity to oppose the application for registration if it considers that deception or
confusion would arise.
6 Section 5.
7 Section 5.
8 Section 66(1)(b) was repealed as from 16 September 2011, but the relevant date for the application for revocation is 6 August 2010: Ritz Hotel v Charles of the Ritz (1988) 12 IPR 417 (NSWSC) at
455.
66 Grounds for revoking registration of trade mark
(1) The registration of a trade mark may be revoked on any of the following grounds:
(a) that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered:
...
[8] The test is therefore one of “genuine use ... in relation to the goods” that are registered. The meaning of “use of a sign” is defined as follows:9
6 Meaning of use of sign
In this Act, unless the context otherwise requires, every reference to—
(a) the use of a sign in relation to goods is a reference to the use of the sign on, or in physical or other relation to, goods:
...
The Assistant Commissioner’s decision
[9] The Assistant Commissioner was satisfied that the mark had been used during the relevant periods in the course of trade in New Zealand by Sky on or in relation to “a package of equipment that enables domestic subscribers to use [Sky’s] services”. She went on to consider how this use related to each item in the specification of goods for the relevant mark.
[10] Her decision on this topic was as follows:
To illustrate how the satellite dish, set-top box, and connecting cables line up with the specification of goods for the relevant mark, [SKY] has provided the following Schedule:
Goods covered by the Sky trade mark Evidence of use of
Apparatus for recording, transmission or reproduction of information, sound or images;
SKY satellite dish
SKY set-top box
9 The meaning of “use of a trade mark” is set out in s 7 of the Trade Marks Act, but for present
purposes that definition does not assist.
Television, video and multimedia receivers;
Electronic decoders, modems, computers, CD-Roms, hardware/software, visual display units, monitors, magnetic data carriers and recording discs.
SKY satellite dish SKY set-top box SKY set-top box
Parts and fitting for the aforesaid goods Cables for the SKY satellite dish
Cables for the SKY set-top box
It appears that [SKY]’s case is that all of the individual items in the specification of goods for the relevant mark have been provided under the relevant mark because those items are either provided separately or they are included in the set-top box, which has a number of capabilities.
... I consider that the specification of goods, as it currently stands, does not accurately reflect the use that has been made of the relevant mark for the reasons set out below.
First, it appears that the equipment provided by [SKY] to domestic subscribers has been as a package for the purpose of enabling domestic subscribers to get SKY television services in their homes.
Second, some items in the specification of goods have not been mentioned in the evidence as being included in this package of equipment (whether individually or as a part of another piece of equipment). These items are CD-Roms, visual display units, and monitors. It also appears that the software included in the set-top box is not owned by [SKY]. Sky’s Domestic Subscription Terms states:
10.1The Decoder includes software that is owned by third parties. You have a limited licence to use a copy of that software only within the Decoder and only for the term, and for the purpose of, this contract ...
Third, it appears that the set-top box that is provided by [SKY] has been called by different names, which makes it difficult to know what individual item it actually is in terms of the specification of goods for the relevant mark.
Fourth, it appears that [SKY] relies on the multiple capabilities of the set-top box to show that the relevant mark has been used on certain items in the specification of goods for the relevant mark. For example, the set-top box includes a modem, magnetic data carrier and recording discs, hardware, and the “software in the SKY set-top box is essentially the same as a computer processor”. However, it appears that these items are not provided individually as indicated by the specification of goods because: (1) they are provided as part of a package of equipment, which has the sole purpose of enabling domestic users to use [SKY]’s services in their home; and (2) those items (or the capabilities of those items) are included together in another piece of equipment (whose precise name is unclear) within that package of equipment.
[11] The Assistant Commissioner considered that the registration of the relevant mark should be partially revoked by reducing the specification of goods covered by it. She then went on to consider whether she should exercise her discretion not to partially revoke the relevant mark. She declined to do so as follows:
... the tenor of the Act ... still appears to be weighted in favour of not permitting defensive trade mark registrations, and removing marks (in whole or in part) that have not been used for the relevant non-use period, which means that the discretion is still to be exercised only in exceptional circumstances.
In my view, [SKY]’s allegation of possible future public confusion or deception does not constitute exceptional circumstances. I consider that such an issue should be properly dealt with in the appropriate proceeding. For example, I note, that, under section 17(1)(a) of the Act, the public interest in this regard will be protected. However, it is difficult to see how the public interest would be served by retaining a monopoly that is not justified by its use on “a speculative assessment of future confusion.”
[12] The Assistant Commissioner considered that the new specification of goods should be as is set out above (at [5]).
Sky’s position
[13] As Sky submits, the Assistant Commissioner’s concerns can be distilled into
two categories:
(a) items in the specification of goods which are not mentioned in the evidence; and
(b)items that are in the specification which are provided only as part of a package.
[14] In relation to the first of these concerns, Sky accepts that it has not established use in relation to “CD-Roms”, “visual display units” and “monitors”. In relation to the second of those concerns it submits that it is sufficient that it has used the mark in relation to equipment that contains the individual items that are included in the specification.
[15] It submits that that the amended specification that the Assistant Commissioner arrived at was too narrow, is ambiguous and is not a fair specification in relation to Sky’s use of its mark. It submits that the specification should be amended to read as follows in class 9:
apparatus for recording, transmission or reproduction of information, sound or images; television, video and multimedia receivers; electronic decoders, modems, computers, CD-Roms, hardware/software, visual display units, monitors, magnetic data carriers and recording discs; parts and fitting for the aforesaid goods.
The evidence
[16] The evidence of what the mark was used in relation to was provided by Jason Hollingworth, the Chief Financial Officer of Sky. He describes Sky as providing a “television broadcasting and entertainment platform”. The equipment that makes up this platform is:
(a) a satellite dish; (b) a set-top box;
(c) parts and fittings for the set-top box; (d) a remote control.
[17] The Sky satellite dish “is a multimedia receiver” which “receives signals and transmits that data to the Sky set-top box”. The data transmitted from the dish to the set-top box “includes information, sound and images.”
[18] The evidence is that the set-top box is “a multimedia receiver”. The “basic” set-top box,10 the upgraded set-top box released in December 2005 and the new generation set-top box released in August 2008 are described in the evidence as
follows:
10 “Basic” is my word to describe the version of the set-top box available before the upgraded and new generation versions were released.
The set-top box is a multimedia receiver. It connects to a television, or other visual display unit, and the SKY satellite dish. The SKY set-top box receives the data from the SKY satellite dish, monitors the received signal, and is used to decrypt the data into content, such as sound and images, and displays this content on a television screen, or other visual display unit. The set-top equipment includes a modem that has a return signal path. As well as receiving the SKY set-top box, Sky digital subscribers also receive all of the parts and fittings of the SKY set-top box, such as connecting cables, which enable the operation of the set-top box.
[19] The upgraded set-top box is also described in the evidence as a “digital video recorder”. As well as the features that the earlier set-top box had, the evidence describes the upgraded set-top box as follows:
This SKY set-top box also includes software and magnetic data carriers. This allows users to pause live television, rewind television, record up to two channels at once and watch the start of a recorded programme while still recording the end of the same programme. The magnetic data carriers are essentially a collection of recording discs that are part of the SKY set-top box. The software in the SKY set-top box is essentially the same as a computer processor.
[20] Like the upgraded Sky set-top box, the evidence describes the new generation set-top box as including “software and magnetic data carriers.” This is further described as follows:
... The magnetic data carriers are essentially a collection of recording discs that are part of the SKY set-top box. The software in the SKY set-top box is essentially the same as a computer processor. This allows the SKY set-top box to record and reproduce information, sound or images, and includes key features such as:
a)recording a programme on any channel at any time at the touch of button
b) recording two channels at once while watching another channel
c)programming the decoder so that it will automatically record all the shows within a series
d) pause live TV
e)store all favourite shows in a personal planner, enabling the user to watch the stored shows whenever desired
The internal computer within the SKY set-top box has a 320GB drive, which includes a recording capacity that allows up to 160GB for recording space and up to 160GB for on-demand downloads.
[21] On 6 July 2010 the new generation set-top box also allowed subscribers to press the green button on programme advertisements to record the advertised programme.
[22] Further information is provided in Sky’s information booklets and user guides which were included in the evidence. Users can search for programmes, access a listing of programmes (including by genre), view a brief synopsis of a programme and view a video preview of a programme. The television channels that can be accessed include “free-to-air channels” and other Sky channels subscribed to. Users can purchase programmes for viewing over a period of time from “Sky Box Office”. Gaming, betting, the internet and radio services may also be accessed by users.
[23] All the set-top boxes (the basic, the upgraded and the new generation versions) and the remote control are branded with the SKY mark. The evidence is also that the SKY mark has been used extensively on television, in magazines and in newspapers, and on its website, to advertise Sky’s products and services. Evidence was provided to the Assistant Commissioner as to Sky’s revenue from its SKY product.
My assessment
[24] Counsel for Sky did not locate any New Zealand case law that assists with how “genuine use ... in relation to the goods” is to be approached on the facts that arise here – that is, where there can be said to be use of many of the items in the specification but in some cases only because those items are part of a package and in all cases the description of those items is widely drawn.
[25] Case law from the United Kingdom has been referred to by counsel. In the United Kingdom marks can be similarly revoked if they “have not been put to genuine use ... in relation to the goods or services for which it is registered”.11 The
case law establishes that the first task is to find as a fact what goods or services there
11 Trade Marks Act 1994, s 46 (UK).
has been genuine use of the trade mark in relation to; and then to “arrive at a fair
specification of goods having regard to the use made.”12
[26] The “fair description” is one “which would be given in the context of trade mark protection” and depends on the nature of the goods, the circumstances of the trade and the breadth of use proved.13 The United Kingdom cases have said that the fair description is one which would be used by the average consumer for the products on which the mark has been used. On this approach it is said that the court “should inform itself of the nature of the trade and then decide how the notional consumer would describe such use.”14 Kerly’s Law of Trade Marks and Trade Names suggests, however, that the value judgment made of what is a fair specification of use requires an understanding of the underlying policy and it is artificial to impute this to the average consumer.15 Kerly suggests that the better approach is characterised as “objective and impartial, balancing the competing interests” and “a view from the trade will be much more informative.”16 That approach, but with the qualification that Kerly suggests, seems appropriate for the equivalent New Zealand statutory test.
[27] The cases provided by counsel for Sky provide some assistance in determining the appropriate scope of the specification. Points that are made by the cases are:
(a) The assessment has “nothing to do with the defendant.”17 Defining the goods negatively by reference to the defendants’ activities is therefore not the approach.18
(b)The proprietor has protection outside his or her specification of goods in areas where he or she can demonstrate a likelihood of deception
12 Thomson Holidays Ltd v Norwegian Cruise Lines Ltd [2002] EWCA Civ 1928, [2003] RPC 32 at [31].
13 Animal Trade Mark [2003] EWHC 1589 (Ch), [2004] FSR 19 at [20].
14 Thomson Holidays Ltd v Norwegian Cruise Lines Ltd, above n 12, at [31].
15 James Mellor and others Kerly's Law of Trade Marks and Trade Names (15th ed, Sweet & Maxwell, London, 2011) at 365-366.
16 At 366.
17 Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 293 (Ch) at [22], cited in
Thomson Holidays Ltd v Norwegian Cruise Lines Ltd, above n 12, at [28].
18 At [22].
under other provisions. “There is no pressing need, therefore, to confer on the proprietor a wider protection than his [or her] use warrants by unduly broadening the specification of goods.”19
(c) The width of the surviving specification “must depend largely upon questions of fact and degree.”20 “Wide words can cover what are commercially quite different sorts of articles”.21 If there is shown to be use of just one of those things “it would be commercially nonsense to maintain the registration for all goods caused by the wide words”.22
[28] Examples from the cases where specifications were too wide, include:
(a) “cleaning and decontaminating substances; disinfectants; sterilising substances and preparations” where the proprietor had not used the mark for domestic products. The specification was narrowed by qualifying those words with “all for non-domestic use”;23
(b)“computer programs” which could be limited to computer programs of a particular type, such as computer programs “for use in or with telecommunications systems”;24
(c) “paper and paper articles; cardboard and cardboard articles; printed matter, stationery materials; artists’ materials/other than colours or varnish; drawing materials; office requisites other than furniture; ordinary playing cards” where the evidence was that the proprietor of
the trade mark had used it on printed stationery forms. The
19 At [24].
20 At [23].
21 MINERVA Trade Mark [2000] FSR 734 (Ch) at 738.
22 At 738.
23 Decon Laboratories Ltd v Fred Baker Scientific Ltd, above n 17, at [26].
24 Mercury Communications Ltd v Mercury Interactive (UK) Ltd [1995] FSR 850 (Ch). In this case, the plaintiff applied for summary judgment against the defendant on the grounds the
defendant was using an identical trade mark for selling its computer programs. The Judge
rejected the plaintiff ’s application for summary judgment. He was concerned about the plaintiff ’s very wide specification and took the view that the defendant could succeed on the basis of a non-use argument. That is, that ‘computer programs’ could be limited to a particular type. But the Judge considered that the success of the argument would depend on the evidence adduced at trial.
specification was cut down to exclude printed matter other than stationery so as to exclude, for example, books.25
(d)a specification for “arrangement and booking of travel and tours and cruises; escorting travellers and arranging the escorting of travellers; providing tourist office services;” and “booking and provision of accommodation, catering services for travellers; providing of day nurseries (other than schools); leasing and rental of computers;” was limited by adding words to the effect that the services were all for
package holidays.26
[29] The Assistant Commissioner confined the specification to “apparatus for pay television broadcasting ...”, words which seem intended to qualify all of the remaining part of the specification. The Assistant Commissioner’s intention seems to have been to narrow the wide words of the specification by linking them back to words that a consumer might think of to describe Sky’s product. The approach was therefore not wrong although information from the trade may have been informative if it was available.
[30] However I agree with Sky that the words settled upon by the Assistant Commissioner are unduly narrow on the basis of the evidence before the Assistant Commissioner for a number of reasons:
(a) The evidence is that the product is a “television broadcasting and entertainment platform”. It is not just television programmes that the equipment enables viewers to access and see. For example, radio is also broadcast and the internet may be accessed. It was therefore too narrow to confine the specification to “television broadcasting”.
(b) It refers to “pay” television but the apparatus enables viewers to watch
free-to-view television programmes as well.
25 MINERVA Trade Mark, above n 21, at 739.
26 Thomson Holidays Ltd v Norwegian Cruise Lines Ltd, above n 12, at [39].
(c) It refers to “recording, transmission, or reproduction” but does not refer to “receivers” when the evidence is all Sky digital subscribers get a Sky satellite dish.
[31] The amended specification was also potentially ambiguous in referring to “television broadcasting”. Sky does not “broadcast” television. It receives data from broadcasters such as, for example, Television New Zealand. Sky’s evidence refers to it providing a television broadcasting and entertainment “platform”. It is a platform for viewing television that others broadcast. The amended specification was also not clearly worded in that “apparatus for pay television broadcasting” is linked with “for recording, transmission, or reproduction of information, sound or images”. The apparatus enables television to be viewed, but the recording, storing and searching capabilities are not accurately described if they are qualified by “apparatus for pay television broadcasting for”.
[32] Sky submits that the evidence establishes use of its wording “apparatus for recording, transmission or reproduction of information, sound or images” and that this is a more accurate description than the description that the Commissioner came up with. The Assistant Commissioner included “recording, transmission, or reproduction of information, sound, or images”. She therefore accepted that there was evidence of use in relation to “information, sound or images”. I agree. The satellite dish transmits information, sound or images. The set-top box is apparatus that decrypts the data and can fairly be said to reproduce “information, sound or images” so that it can be displayed on a television screen or other display unit. The set-top box can also “record ... information, sound or images”.
[33] As there is evidence of “use” of the mark in relation to these words the only issue is as to their potential width. The question is whether a fair specification requires that the word be qualified in some way to reflect that the use is in relation to a “television broadcasting and entertainment platform” (or possibly “multimedia and entertainment platform”). I refer to this under the heading “Result”.
[34] The next limb of Sky’s specification is “television, video and multi-media
receivers.” It says that “television, video and multimedia receivers” is also
established on the evidence. The evidence is that the set-top box is a “multi-media receiver”. That is an accurate description of what it receives via the data from the Sky satellite dish. The data receives “television” (i.e. the data that makes up the television channels). It receives Sky Box Office data (possibly) still accurately described as “television” data. It also receives radio data. I was taken to an extract in the customer information booklet which illustrates the back of the set-top box. That refers to connections for audio, home cinema, stereo and video recorder equipment. That may be intended to be evidence that the set-top box is a “video receiver”.
[35] In any case I am not sure why a fair specification needs to be for “television, video and multi-media receivers” rather than just “multimedia receiver”. Mr Hollingworth refers to both the satellite dish and the set-top box as “a multimedia receiver”. Having said that, if Sky considers that “television” and “video” makes the specification more accurate I do not have a difficulty with that on the evidence as to use. As above the question is then whether a fair specification requires that they be qualified by “used in relation to a television and entertainment platform” or similar.
[36] The next part of the specification (excluding the items which Sky accepts there is no evidence of use) is “electronic decoders, modems, computers, hardware/software, magnetic data carriers and recording discs”.
[37] I agree with Sky that its use extends to “electronic decoders”. The information booklet refers to the “digital decoder” as being a sophisticated instrument which enables users to “receive a much wider range of TV programmes”. In describing “MY SKY” it says, “MY SKY (SKY Digital’s Personal Digital Recorder) receives digital information via satellite, decodes this information and sends it to your TV.” The Assistant Commissioner referred to Sky’s Domestic Subscription Terms and User guide and said that the evidence established that the equipment included a “set-top box (which is called a decoder, digital video recorder, personal digital recorder, or multi-media receiver)”. It is therefore not clear why she deleted “electronic decoders” from the specification other than that she may have regarded it as unnecessarily duplicative. There is evidence of use and the only
question, as with the other words, is whether a fair specification requires that they be
qualified by the general “television and multimedia platform” or similar description.
[38] I also agree with Sky that its use has been in relation to “hardware”. But that term is very wide and could cover all sorts of things other than the hardware that makes up the equipment that Sky installs in subscriber’s home. Those words need to be qualified.
[39] Sky submits that it has established use of “modems”, “computers”, “software”, “magnetic data carriers” and “recording discs” because all of those things are within the Sky set-top box. It submits that the definition of “use” means that there is use if Sky has used the mark in relation to a product which is derived of these components. It says that this is supported by s 6 of the Trade Marks Act which refers to “use of the sign on, or in physical or other relation to, goods”. Again, I consider the problem is width rather than use. In my view a fair specification for the use is not for any of these items individually when the mark is not used in relation to
them individually.27 They should be qualified as being part of the package of
equipment that makes up the television or multimedia entertainment platform.
[40] Sky also submits that if the Court does not accept that software, modems, computers, magnetic data carriers and reading discs are not a fair description of its actual use, then as a matter of discretion the Court should decline to revoke these specifications. It submits that if SkyFiber, or any other third party introduced into the New Zealand market, these goods with the words “Sky” there would be confusion in the market. I consider that the width of these words detracts from this point. It will depend on the type of software or reading disc, for example, whether there would be confusion. I consider that the correct approach is to allow these items to remain providing they can be tied back to their use as part of the package of
equipment that makes up the television or multimedia entertainment platform.
27 It seems to me that this issue is broadly similar to the issue that arose in Thomson Holidays Ltd v
Norwegian Cruise Lines Ltd. In that case the opposing party provided holiday cruises.
Thomson did not provide cruise holidays in and of themselves, but day-time cruises from resorts were often part of the holiday packages that Thomson offered. The word “cruises” was not deleted but the words were qualified by wording that they (and other items in the specification) were all services for package holidays.
Confusion in respect of similar or identical goods is then able to be considered when
SkyFiber or other applicants seek to register a mark.
Result
[41] The appeal is allowed. The Assistant Commissioner’s amended specification was not a fair specification. In light of the evidence of use it was too narrow. It was also unclear. However, I am not satisfied that the original specification, with the deletion of the items “CD-Roms”, “visual display units” and “monitors”, is a fair specification of use. The apparatus needs to be qualified with reference to a general description of the Sky product. Receivers, electronic decoders and hardware need to be similarly qualified but they might form part of the description of “apparatus”. Modems, computers, software, magnetic data carriers and recording discs need to be qualified so that they are referred to not as individual items but as within and part of the package of equipment that is supplied by Sky as part of its product.
[42] Sky is to file a memorandum setting out an accurate specification of its use in light of the conclusions I have reached. It should provide an explanation, on the basis of the evidence, as to why the proposed specification is adopted if the qualifying words are other than as I have suggested. The memorandum should be filed within six weeks of the date of this judgment. If that is insufficient time in light of the Christmas break, counsel for Sky is to let me know and the time may be extended.
Mallon J
Solicitors:
A J Park, Auckland
Henry Hughes & Co, Wellington
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