SJ Berwin’s Intellectual Property team acted for Sky in its successful claim for trade mark infringement and passing off arising out of Microsoft’s use of the 'SkyDrive' for its online storage offering.

In a lengthy and fully considered judgment, Mrs Justice Asplin concluded that the scope of Sky's "SKY" registered trade marks, as well as its goodwill in the SKY brand, was such that Microsoft's use of the "SkyDrive" mark was likely to cause confusion amongst members of the public. In reaching her conclusion the Judge took into account evidence of actual confusion from a number of BSkyB customers who had called Sky's helplines, complaining of and/or enquiring about "SkyDrive" in the mistaken belief that it was a BSkyB product. The Judge also decided that use by Microsoft of the "SkyDrive" brand was detrimental to the distinctive character and repute of the SKY mark which, in itself, amounted to trade mark infringement.

The SJ Berwin team comprised David Rose, Head of Intellectual Property, and associates Victoria Baxter and Josephine Curry. SJ Berwin was instructed by Simon MacLennan, Group Head of IP. SJ Berwin retained 11 South Square's Iain Purvis QC and Brian Nicholson on the claim.

David Rose commented: “Sky welcomes the decision of Mrs Justice Asplin, which held that Microsoft’s use of SkyDrive amounted to trade mark infringement and passing off. It is noteworthy that the learned judge decided that there was trade mark infringement, not only because of a likelihood of confusion but also because the use of SkyDrive by Microsoft was detrimental to the distinctive character and repute of the famous SKY mark.”