Author: Ben Evans
The CJEU has now published its decision in the Sky v Skykick trade mark case and the ruling will be seen as good news for brand owners.
The case involves the well-known broadcaster Sky who were involved in a trade mark dispute with Skykick, a cloud migration company. Sky brought proceedings against Skykick alleging that its use of the mark SKYKICK amounted to infringement of their various SKY marks. By way of counterclaim Skykick sought a declaration that Sky's trade marks were invalidly registered, on the basis that the specifications lacked clarity and precision and had been filed in bad faith.
The High Court referred a number of questions to the CJEU (discussed in Issue 2 of OwnershIP) the key points being:
- Can an EUTM (or national mark) be found partly/wholly invalid on the ground that some or all of the terms in the specification are lacking in sufficient clarity/precision?
- If so, does 'computer software' lack sufficient clarity/precision?
- Is an application made in bad faith if there was no intention to use the mark in respect of the goods/services for which it is filed?
- If so, should the mark be declared wholly invalid or invalid only for the goods/services that were applied for in bad faith?
In October 2019 the Advocate General (AG) gave his opinion on the questions (see our initial commentary on the Sky v Skykick trade mark case here) which left many brand owners concerned about the validity of their portfolios moving forward.
However, the CJEU has (partly at least) deviated from the AG's opinion ruling that:
- A EUTM or national trade mark cannot be declared invalid (whether wholly or partially) on the ground that some, or all, of the terms in the specification are lacking in sufficient clarity/precision;
- An application for a EUTM or national trade mark filed without any intention to use the mark could constitute bad faith if the application had the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.
- Even where such lack of intention to use, and bad faith, can be shown it applies only to those goods/services for which lack of intention/bad faith can be made out i.e. the mark as a whole will not be invalid, just the goods/services that were applied for in bad faith.
Brand owners will be breathing a sigh of relief as the risk of invalidity for over-wide specifications has reduced somewhat. It does however feel somewhat of a missed opportunity for the CJEU to tackle the growing problem of clutter in EU trade mark registries and provides little incentive to brand owners to tighten up specifications voluntarily.
Moving forward however we are likely to see UK & EU trade mark registries taking a more rigorous approach in examination of trade mark specifications at the point of filing but, furthermore, we may also see consideration taken by the tribunal/court when seeking to enforce those rights. This may force brand owners to further specify their lists of goods/services when filing new applications.
Furthermore, brand owners will want to ensure that they are not over-reaching in seeking to covers goods/services for which they do not intend to use their marks as this will still render them at risk of counterclaims, for bad faith, at the enforcement stage. Whilst, following the decision by the CJEU, the mark as a whole is unlikely to be deemed invalid it is nonetheless potentially an expensive, and time-consuming, distraction to defend against such an action.
The case will now go back to the High Court to apply the CJEU's ruling to the facts of the case.
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