(Rainy) Sky v. SkyKick : the CJEU opened its umbrella

On 29 January 2020, the CJEU handed its much anticipated decision in the referral from the English High Court in the ‘Sky v. SkyKick’ case. And every cloud has a silver lining (or almost).

According to the CJEU:

  • a trade mark cannot be invalidated on the ground that its goods and services specifications are insufficiently clear and precise ; 
  • filing for a trade mark without any intention to use it in relation to the goods and services covered by the registration may constitute bad faith ;
  • ‘intent to use’ requirement under UK law is not inconsistent with EU law as far as it does not constitute an invalidity ground.

Background of the Sky vs SkyKick case

Sky (the well-known media and broadcasting company) is the owner of various trademarks which include the word “Sky”. Those marks have been registered for a large number of goods and services in a number of classes of the Nice Classification.

Sky sued SkyKick for trade mark infringement for use the word “SkyKick” in connection with Software as a Service (SaaS) and Cloud services. SkyKick contested the infringement claim and counterclaimed for a declaration of invalidity of Sky’s trade marks. SkyKick contended that certain products (such as ‘computer software’) were not defined with sufficient clarity or precision. In that regard, SkyKick rely on the judgment in the ‘IP Translator‘ case. As a reminder, that decision states that the goods and services claimed in a trade mark application must be identified with sufficient clarity and precision to determine the scope of the protection applied for. Finally, SkyKick stated that Sky did not genuinely intend to use the ‘Sky’ marks on all the goods and services covered and that the marks had been registered in bad faith.

The referring court raised several questions to the CJEU, summarised as follows:

  • Can a registered trade mark be declared wholly or partially invalid on the ground that its goods or services description is insufficiently clear and precise ?
    • If so, is a general term such as ‘computer software’ too broad ?
  • Does it constitute bad faith to register a trade mark without any intention to use it for the specified goods or services ?
    • If so, is the registration wholly or partially invalid ?
  • Is UK law providing for an obligation for the trade mark applicants to declare its “intention to use” it compatible with EU law ?

Key points of Sky vs SkyKick case

The main key takeaways of this judgment are as follows :

Broad specifications

The CJEU agreed with the AG that the lack of clarity and precision of the terms used to designate the goods or services covered by the registration of a trade mark cannot be a ground for invalidity. The requirements introduced by the ‘IP Translator’ case therefore only concern new registrations of EU trade marks.

Since the CJEU ruled negatively on the first question, it unfortunately did not comment on whether a term such as ‘computer software’ was too broad.

Bad faith

The CJEU held that the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered may constitute bad faith if there is objective, relevant and consistent indicia that the trade mark was filed by the applicant with the intention of :
  • undermining the interests of third parties ; or
  • obtaining an exclusive right for purposes other than those falling within the functions of a trade mark.

Logically, the court ruled that where bad faith is established for certain goods and services only, the invalidity shall only concern those goods and services.

Still according to the CJEU, a national provision may require the applicant for registration of a national trade mark to declare its bona fide intention to use it for the goods and services for which registration is sought. UK legislation is therefore not incompatible with EU law. However, such a declaration obligation can only be a mere procedural requirement relating to the registration of the mark. The infringement of such an obligation cannot therefore constitute, in itself, a ground for invalidity of the trade mark concerned.

Our advice:

The inputs of this judgement should necessarily be considered by trade mark applicants before filing too broad specifications.

Our trade mark specialists are naturally at your disposal to assist you in filing your trade mark(s).


from Thomas Espeel

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