12 February 2020

Broad trade mark specifications – the CJEU’s decision in Sky v SkyKick maintains the status quo

The Court of Justice of the European Union (CJEU) has issued its judgment in the case Sky v SkyKick (C-371/18); a case many predicted would have a significant impact on trade mark owners’ filing strategies.

Trade marks are registered for a specific list of goods and services, and this goes a long way to define the protection the mark is granted once registered: the broader the list of goods and services; the broader the protection. However, when a UK trade mark is filed, the applicant must either confirm that the mark is in use for the goods and services covered or that it has a genuine intention to use it for these goods and services in the future. If the applicant lacks this genuine intention at the point of application, this could amount to bad faith and result in the trade mark being invalidated. In practice, however, bad faith is very hard to prove.

Sky, the well-known TV broadcaster, objected to SkyKick’s use of the mark SKYKICK (and variants of it) in connection with downloadable software and other services (cloud migration, backup and management services). Sky does not provide these products and services and there was no evidence that it had plans to do so in the future.  However, the SKY trade marks are registered for a large number of goods and services (including broad terms such as “computer software”). Therefore, Sky was able to claim that use of SKYKICK infringed its trade mark rights.

SkyKick counterclaimed that Sky’s registrations were invalid on the basis that its specifications (that is, the list of goods and services for which the marks were protected) were too broad and lacked clarity and precision. It was noted that some of Sky’s registrations had specifications exceeding 8,000 words and covered goods and services way beyond Sky’s core business areas. SkyKick also argued that, at the time of filing of its applications, Sky had no intention of using the marks for all the goods and services covered and that it had, therefore, filed them in bad faith. The High Court found that SkyKick was infringing Sky’s registrations but felt that the law was not clear on the above points and referred questions to the CJEU for guidance, resulting in the CJEU’s 29 January judgement.

The CJEU ruled as follows:

  • A lack of clarity and precision in trade mark specifications is not a ground for invalidity. Therefore, marks covering broad terms such as “computer software” cannot be declared invalid on the basis that the terms lack clarity and precision and such a lack of clarity and precision does not render the marks contrary to public policy.
  • A trade mark application filed with no intention to use the mark for the goods and services (or some of the goods and services) covered by the mark may constitute bad faith, but only if it can be proven that the applicant deliberately intended to monopolise certain goods and services to undermine third party interests or to obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. In other words, a lack of intention may lead to a decision that the mark was filed in bad faith, but more elements are needed for bad faith to be proven. Furthermore, in the event that bad faith is demonstrated in respect of some goods and services, the mark shall only be invalidated in relation to those goods and services.

Before the CJEU judges deliberated and delivered their judgment, Advocate General Tanchev provided his legal opinion and took the view that (a) a trade mark whose specifications are insufficiently unclear and precise could be declared invalid (in relation to the goods and services considered unclear) on the grounds that it was contrary to public policy or public order and (b) filing for goods or services without any intention of using the mark for the specified goods or services could constitute bad faith. This could have potentially put many trade mark registrations at risk of attacks on these grounds. Eventually, the CJEU opted for the status quo. Lack of clarity and precision is not a ground for invalidity and the sole finding that (at the time of filing the application) an applicant had no economic activity corresponding to the goods and services is not sufficient to show bad faith.

It will be interesting to see how the High Court applies the CJEU judgment to the facts in Sky v SkyKick. In the meantime, the CJEU’s decision will be welcomed by trade mark owners, because it means that they can continue to file trade marks for broad terms resulting in broader protection. Furthermore, it remains very difficult to attack registrations on the basis of bad faith.

Trade mark owners must, however, keep in mind that five years after registration, a trade mark can be revoked if it has not been put to genuine use. If the mark has only been used for some goods and services but not others, it can be partially revoked (with the goods and services not used removed). In the case of marks protected for broad terms such as “computer software”, after five years these terms can be narrowed to more specific types of software (for instance “video game software”).

There are advantages and disadvantages to broadly registered trade mark specifications and each case should be considered on its own merits. However, trade mark owners must remember that after five years, the old adage “use it or lose it” still applies.