17 October 2019

Sky kicked into touch?

The global media company Sky has been involved in a trade mark infringement case against the company Skykick for some time. Sky sued Skykick in the UK for trade mark infringement relying on a number of EU and UK registrations for marks comprised of or including the word SKY.

Skykick contended that the trade mark registrations owned by Sky should be declared partly invalid on the ground that they were registered for goods and services which were specified with insufficient clarity and precision, and on the ground that Sky acted partly in bad faith when filing the applications for goods and services that they had no intention to use the SKY trade mark on.

The case came before the High Court of England and Wales in February 2018 and the Judge Mr Justice Arnold referred questions on points of Law to the Court of Justice of the European Union (CJEU).

The procedure for decisions at the CJEU is that an initial opinion is given by the Advocate General. Opinions of the Advocate General are generally followed by the Judges deciding the case, although they do sometimes depart from the Advocate General’s opinion.

The Advocate General has issued his opinion on the Sky v Skykick case and has advised as follows:

  • An EU or UK trade mark may not be declared to be partly invalid solely on the basis that some or all of the terms in the specification of goods and services lack clarity and precision, although any lack of clarity and precision may be taken into account when assessing the scope of protection to be given to such a registration.
  • A registration may be subject to invalidity on the basis that the registration is contrary to public policy where terms covered by the registration are unreasonably broad. In this particular instance, Sky had a registration for “computer software”. Computer software is a broad term and this is incompatible with a trade mark’s essential function as an indication of origin. A registration must be sufficiently clear and precise to enable competent authorities or third parties to determine the extent of protection conferred by it.
  • Applying for registration of a trade mark without any intention to use it may constitute an element of bad faith in particular where the sole objective of the Applicant is to prevent a third party from entering the market, including where there is evidence of an abusive filing strategy. Such a ground would apply where only some of the goods or services registered were included without any intention to use the trade mark on those goods and services.

Assuming that the CJEU Justices follow the Advocate General’s opinion, such a decision would mean that registrations which cover very broad specifications of goods and services may be vulnerable to attack on grounds of bad faith and such a ground would apply prior to the five year non-use period usually required in order to bring an action for cancellation on grounds of non-use.

It will be interesting to see whether the UK and EU Intellectual Property Offices change their practice on examination of applications. At present, very broad and far ranging specifications of goods and services are generally accepted without question, particularly in the case of the EUIPO which has no requirement for a Declaration of Intention to Use. The UKIPO’s current policy is to accept the stated intention to use from an Applicant without questioning it. However, there are some specifications in single class trade mark applications or registrations on the UK Register which run to 30 or more A4 pages when printed, and it is hard to see how such applications could be accepted if the judgement on this case following the Advocate General’s opinion.

Of course a complication is the position on Brexit. If the UK leaves the European Union without a deal, the Court of Justice of the European Union will no longer have jurisdiction in the UK. However, Mr Justice Arnold may well take the decision of the CJEU into account. Even if he doesn’t, he will be required to make a decision on this case in the UK, which will have an impact on practice on applications as well as potentially opening the door for invalidity applications.

We await the decision of the CJEU Offices with keen interest.