1. The European Court of Justice recently handed down its much awaited judgment in the Sky vs Skykick case.
The main questions submitted to the Court were as follows:
- Can an EU or national trade mark be declared invalid if the terms designating the goods and services for which the mark is registered lack clarity and precision?
- Does a trade mark application made without any intention to use the trade mark for the goods and services covered by the registration constitute an application in bad faith? If so, if the absence of intention to use the mark only concerns certain goods and services covered by the registration, does the invalidity of the mark only cover those goods and services?
The parties in the case were Sky, the well-known UK television broadcaster and holder of trade marks comprising the word “SKY”, and Skykick, a software company. Sky claimed that Skykick infringed its trade marks by using the sign “Skykick” in relation to software goods and services. Skykick, on the other hand, counterclaimed that Sky’s trademarks were invalid because (i) the specification of the goods and services for which they were registered, such as “computer software”, lacked clarity and precision, and (ii) they were registered in bad faith because Sky did not have any commercial rationale to seek protection for all of the goods and services registered.
In his Opinion, Advocate-General Tanchev had stated, among others, that registration of overbroad terms, such as “computer software”, would confer on the proprietor “a monopoly of immense breadth which cannot be justified by any legitimate commercial interest of the proprietor” and may be contrary to public policy. The Court, however, decided not to follow the Advocate-General.
2. With regard to the first question, the Court held that the grounds of invalidity listed in Directive 89/104 (now replaced by the EU Trade Mark Directive 2015/2436) and Regulation 40/94 (now replaced by the EU Trade Mark Regulation 2017/1001) do not include a lack of clarity and precision of the terms designating the goods and services covered by the trade mark registration.
The Court also specified that, contrary to what was suggested by the Advocate-General, trade mark registrations that lack clarity or precision do not fall within the scope and meaning of the existing ground of invalidity providing that a trade mark cannot be contrary to public policy.
As the lists of grounds of invalidity are exhaustive, the Court concluded that a lack of clarity and precision cannot be considered as a ground of invalidity under EU trade mark law.
3. With respect to the second question, the Court held that the application of a trade mark without any intention to use it for the goods and services covered by the registration may constitute bad faith. However, the bad faith of the applicant cannot be presumed merely on the basis that the applicant had no economic activity relating to the goods and services designated in that application at the time of filing. Indeed, trade mark applicants often do not know precisely, on the date on which their application is filed, the use they will make of the mark applied for.
Consequently, for there to be bad faith, there need to be objective, relevant and consistent signs showing that, when the application was filed, the applicant had the intention either (i) of undermining the interests of third parties, or (ii) of obtaining an exclusive right for purposes other than those falling within the normal functions of a trade mark (such as the function to enable consumers, without any possibility of confusion, to distinguish its goods or services from others which have a different origin).
Regarding the second part of the question, the Court recalled that it follows from the relevant legal provisions that when the ground for invalidity exists only in respect of some of the goods or services for which the trade mark is registered, the trade mark should be declared invalid only with respect to those goods or services. The same therefore goes for invalidity based on the grounds of bad faith.
4. This judgment can be seen as a reassurance for trade mark holders who register their trade marks for a broad range of goods and services. However, all has not been said on this matter. For instance, it has to be seen if and how trade mark offices will change their practice with respect to overbroad trade mark filings, and how national courts will interpret and apply the Court’s bad faith criteria.
In the meantime, trade mark holders should be cautious in making trade mark applications containing very broad specifications, in particular where there is no real intent to use. Also, and as the Court reminded, trade marks are, in any event, capable of being protected only in respect of the goods and services for which they have been put to genuine use within a period of 5 years after registration.
Please contact Karel Janssens for further information about this case and/or for general legal advice relating to intellectual property.