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Litigation watch: SJ Berwin wins IP battle for Sky against Microsoft

SJ Berwin has scored a significant victory in the important tech area of intellectual property rights in cloud data storage, successfully representing broadcaster Sky on its successful trade mark infringement claim against US software giant Microsoft.

In a dispute dating back to 2011, the High Court ruled last week that the IT giant’s ‘SkyDrive’ cloud service infringed Sky’s brand in the UK and Europe. Sky had filed a claim over a breach of UK and Community trade marks following Microsoft’s use of ‘SkyDrive’ for cloud storage solution.

SJ Berwin IP partner David Rose, who recently appeared in the Legal Business IP Roundtable, represented British Sky Broadcasting (BskyB) and instructed 11 South Square’s Iain Purvis QC and Brian Nicholson, while Redd Solicitors’ Anna Carboni led for Microsoft in defending the claim alongside Wilberforce Chambers’ Michael Bloch QC and Three New Square’s Stuart Baran.

Having been drawn out over two years, the battle finally went to the Chancery Division of the High Court for an 8-day hearing in April, and the judgment was finally published last week. Issued by Mrs Justice Asplin, the ruling held that Microsoft had infringed on Sky’s trade mark rights when it branded its cloud services ‘SkyDrive’ and this was likely to ‘confuse’ customers.

Asplin J said: ‘Damage is inherently likely where frequently the customers of a business wrongly connect it with another.’

Microsoft has since filed a counterclaim on the grounds of ‘descriptiveness for cloud storage services.’

A spokesperson for Microsoft said in a statement: ‘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.’

SJ Berwin is ranked in the third tier for intellectual property in the latest UK edition of The Legal 500 and other IP clients include Ladbrokes and Nintendo.