30 January 2020
On 29 January 2020, the Court of Justice of the European Union (CJEU) handed down its judgment in the Sky v SkyKick C-371/18 case, on which there has been a wealth of commentary and speculation (in particular in the wake of the EU Advocate General’s (AG) non-binding opinion delivered on 16 October 2019).
The judgment follows a referral from the High Court of
England and Wales in trade mark infringement proceeding brought by Sky against
SkyKick. SkyKick counterclaimed by attacking the validity of Sky’s trade marks
on the grounds that: a) Sky’s trade mark specifications lacked the required
clarity and precision; and b) the specifications covered by Sky’s trade marks
covered terms for which Sky had no reasonable rationale for seeking
registration and, therefore, the registrations were filed in bad faith.
SkyKick’s counterclaim raised several questions in the
proceedings which required clarification. Mr Justice Arnold therefore referred
the following questions to the CJEU:
“(1) Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark?
(2) If the answer to question (1) is yes, is a term such as “computer software” too general and covers goods which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark?
(3) Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services?
(4) If the answer to question (3) is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services?
(5) Is section 32(3) of the UK Trade Marks Act 1994 compatible with [Directive 2015/2436] and its predecessors?”
Whilst it was expected that the CJEU would follow the AG’s opinion, the CJEU has instead handed down a somewhat conservative judgment which may be summarised as follows:
Importantly, the judgment confirms that under EU law an
EU/national trade mark registration cannot be invalidated on the grounds that
the specified goods and services lack clarity or precision. This will come as a
relief to brand owners with trade mark registrations covering broad terms such
as “computer software”, who may otherwise have faced invalidity actions had the
CJEU followed the tone of the AG’s opinion. The judgment is therefore likely to
be seen as a ‘big win’ for brand owners.
As far as broad specifications are concerned, the judgment
maintains the status quo and does not change the approach followed previously
by UK practitioners and the UK Courts. The position with respect to the bad
faith question may be somewhat different, and we will have to see how national
courts interpret the CJEU’s clarification of what constitutes a finding of bad
The Sky v SkyKick case will now return to the High Court, and it will be interesting to see how the High Court addresses the CJEU’s judgment in its decision.
For more information about the implications of the judgment or for trade mark advice more generally, brand owners are encouraged to get in touch with our trade mark team.
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