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The Decision in Sky vs SkyKick is a Welcome Relief for Trade Mark Owners
The Court of Justice of the European Union (CJEU) in the case of Sky v SkyKick (C-371/18) has made the landmark decision that the use of broad terms in trade mark specifications such as “computer services” cannot be ruled invalid on the basis that they are unclear and imprecise or contrary to public policy. Furthermore, the CJEU decided that the owner of a trade mark will not be regarded as having acted in bad faith because there was no economic activity in relation to the goods and services covered by its broad specification at the time it was filed. Accordingly, this means that trade mark proprietors do not need to change or amend existing trade mark specifications which use broad terms and therefore, this case has been described as a “welcome relief for brand owners” who wish to maintain broader protection.
The case arose when the UK TV broadcaster Sky plc sued SkyKick, a cloud software company for trade mark infringement in relation to their use of the word “SKY” in their SkyKick sign and its variants. SkyKick counterclaimed and argued that Sky’s trade marks were invalid on two grounds:
- the specifications lacked clarity and precision, particularly in relation to goods and services; and
- the subsequent trade mark application was made in bad faith. The CJEU answered the following questions which were referred by the High Court.
- Does the use of broad terms in trade mark specifications such as “computer software” mean that a registration is so unclear and imprecise that is should be declared invalid?
The CJEU decided that a lack of clarity and precision in a trade mark specification does not render that trade mark invalid. However, if the trade mark has not been used in connection to the goods and services it was registered for, it can be rescinded after 5 years. Nevertheless, if non-use only applies to a few of the goods or services for which the trade mark was registered, only those goods and services will be rescinded and rest of the trade mark will still exist.
- Does applying to register a trade mark without any intention to use it in connection to the specified goods or service constitute bad faith and thus render the trade mark invalid?
The CJEU held that the registration will only be constituted as having been made in bad faith if the applicant had the “intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark”. Consequently, bad faith cannot be assumed because there was no economic activity corresponding to the goods and services at the time of the application.
If you require legal assistance regarding trade marks, or have any other intellectual property concern, please do not hesitate to contact Christopher Buck, Associate Partner in our Business Services Department on 01908 660966 / 01604 828282 or at christopher.buck@franklins-sols.co.uk who will be happy to assist.