Broadcaster sues Livescribe and Dixons Retail, which stocked the product, over alleged trademark infringement of its Sky brand
The digital pen maker Livescribe has been forced to pull its flagship Sky Wi-Fi Smartpen from stores in the UK just days before Christmas after it was sued by pay-TV broadcaster BSkyB.
BSkyB claims that Livescribe breaches its “Sky” trademarks with the gadget, which records audio and wirelessly transfers it to users’ computers.
The company is suing Livescribe and Dixons Retail, which stocked the digital pen, for alleged trademark infringement and passing off.
BSkyB’s legal action has prompted Livescribe to stop selling its recently-launched Sky Wi-Fi Smartpen in the UK, meaning it will miss out on the Christmas shopping bonanza.
The broadcaster is protective of its “Sky” brand and took swift action against Livescribe after the gadget’s launch on 29 October.
Livescribe said in a statement: “Legal counsel for British Sky Broadcasting (“BSB”) has written to Livescribe alleging that we are infringing the trademark rights of BSB. We are currently taking legal advice from our counsel in the UK.
“While Livescribe does not offer any goods or services similar to those of BSB, out of an abundance of caution we have instructed our distributors and resellers in the UK to stop selling the Livescribe Sky Wi-Fi smartpens in the interim while we investigate the matter.”
Livescribe boasts that its gadget is the “first digital pen to integrate Wi-Fi technology and cloud services”. The pen digitises everything a user writes and records and transfers it wirelessly to their accounts on Evernote, the note-taking application. In the US, where the pen is still available to purchase, a top-end model costs $249.95 (£154).
The dispute could reach a full trial at the high court if BSkyB, Livescribe and Dixons Retail do not settle the matter out of court.
BSkyB formally lodged the claim on 6 December, barely a month after it won a separate trademark dispute in the high court against the Hong Kong-based telecoms giant PCCW over its Now TV service.
The high court threw out PCCW’s claim that BSkyB should pay damages for “passing off” its Now TV brand on 2 November.
Two years ago, BSkyB was involved in a long-running trademark dispute with the internet telephony service Skype over its use of “Sky”. Company filings from Skype revealed that it had defended several complaints from BSkyB spanning five years over its use of the phrase.
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