"Trade mark owners and practitioners alike would need to be wary of applying for goods and services for which there is no genuine intention to use."
Advocate General Evgeni Tanchev of the Court of Justice of the European Union (CJEU) has released his opinion on a landmark case which could have significant impact on the system of trade mark protection in the EU, including the UK.
The ongoing Sky v Skykick case raises several issues for consideration, which trade mark owners and practitioners will need to be wary of, including broad trade mark specifications, lack of genuine intention to use and registering trade marks in bad faith.
Sky, the well-known telecommunications company, brought proceedings for trade mark infringement and passing off against Skykick, a business providing cloud migration information technology services.
Amongst its claims, Sky relied upon a number of UK and EU trade marks for SKY in both word and logo forms which cover an extremely broad list of goods and services. In addition to terms which are in themselves broad, such as “computer software”, Sky’s trade marks also covered goods and services which, Skykick argued, Sky had no genuine intention to use the SKY mark in respect of, including “bleaching preparations” and “whips”.
One of the recommendations made by the Advocate General was that applying for an EU trade mark without any genuine intention to use it for certain goods and services applied for may, in certain circumstances, constitute bad faith, leading the mark to be invalidated at least in part.
If the Advocate General’s findings are adopted, specialist lawyers have warned that infringing parties could raise arguments regarding lack of genuine intention to use as a matter of course, and consequently costs could increase for trade mark owners looking to protect their intellectual property rights.
However, the Advocate General’s opinion would, if followed by the Court, lessen the negative impact of a finding of bad faith. The current position as stated in a previous General Court decision is that a finding that a mark is partly registered in bad faith (e.g. in respect of only some of the goods and services) is sufficient to taint the whole application, and that it should therefore be invalidated in full. In the Advocate General’s opinion, this position is incorrect and a finding of bad faith in part should result in the mark being invalidated in respect of only the goods and services to which that bad faith extends.
In respect of trade marks which include broad terms, such as “computer software”, the Advocate General concluded that a lack of clarity and precision in the specification of goods and services is not itself a ground for invalidation of a trade mark. However, certain terms, such as “computer software”, cover such a wide range of goods that it impacts upon the functioning of the trade mark. The Advocate General therefore concluded that trade marks applications which include these terms could be refused under the ground that it is contrary to public policy.
Thomas Kirby, a solicitor in the Intellectual Property team at national law firm Clarke Willmott LLP, said: “We will obviously need to wait to see if the CJEU follows the Advocate General’s opinion.
“If this is the case, new businesses will no doubt welcome the finding that broad monopolies over terms such as “computer software” could become a thing of the past.
“Trade mark owners and practitioners alike would need to be wary of applying for goods and services for which there is no genuine intention to use, but the Advocate General’s recommendation that this results in only partial invalidity takes much of the sting out of this as trade mark owners would lose only those goods or services for which they had a weaker rationale for seeking protection for in the first place.”
The case is yet to be decided but the Advocate General’s opinion plays an important and persuasive role in the decision.
Clarke Willmott is a national law firm with seven regional offices in Birmingham, Bristol, Cardiff, London, Manchester, Southampton and Taunton.
For more information visit www.clarkewillmott.com