On 29 January the CJEU gave its judgment in the long awaited SKYKICK matter and the decision is good news for trade mark owners. In summary:
- A finding of bad faith requires more than a mere absence of intention to use in respect of a particular category of goods and services. More is required – a dishonest intention of undermining the interests of third parties, and/or an intention to obtain a right for purposes other than those falling within the functions of a trade mark.
- Even if a finding of bad faith is made, it affects only the goods and services to which it relates, and therefore does not lead to invalidation of the mark as a whole.
- A trade mark cannot be invalidated on grounds of lack of clarity and precision in the list of goods and services.
The CJEU’s decision will be a welcome one for trade mark owners, who will not need to take any action in relation to existing trade mark registrations and may continue to file trade marks, using broad lists of goods and services, albeit in line with the decision in Chartered Institute of Patent Attorneys, IP Translator (C-307/10), as they did before.
The main proceedings can be summarised as follows:
- Sky Plc & Ors are the registered proprietors of a number of EU and UK national trade mark registrations which include the word “Sky”;
- Trade mark infringement proceedings were brought in the UK against Skykick UK Ltd and SkyKick Inc;
- The Sky marks were registered in relation to a very wide range of goods and services. Sky had not used the marks in relation to all those goods and services, and there was no evidence to show that Sky had any intention to do so in the immediate future;
- The Skykick companies counterclaimed, claiming that Sky’s marks were invalid on two grounds. First, that the marks had been applied for in bad faith, as Sky had not had any intention to use the marks across the full range of goods and services. Secondly, in any event, the goods and services for which they were registered were not “specified with sufficient clarity and precision”.
Mr Justice Arnold (as he then was) decided to stay the proceedings and refer 5 questions to the Court of Justice for a preliminary ruling. They can be summarised as follows:
- Can an EU/national trade mark registration be declared wholly or partially invalid on the ground that some or all of the terms in the specification are lacking in sufficient clarity and precision
- If the answer to 1 is yes, is a term such as computer software too general to be compatible with the trade mark’s function as an indication or origin
- Can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to specified goods/services
- If the answer to 3 is yes, is it possible to conclude that the application was made partly in good faith (for the goods/services where there was an intention to use) and partly in bad faith (for the goods/services where there was no intention to use)
- Is section 32(3) Trade Marks Act 1994, that requires a trade mark applicant to confirm that the mark is being used or there is a bona fide intention to use the mark for the goods/services applied for, compatible with EU law.
The CJEU’s ruling was that the list of absolute grounds for invalidity of an EU trade mark is exhaustive, and does not include a lack of clarity and precision as a ground. Consequently, a lack of clarity and precision in the goods/services covered by a trade mark registration is NOT a ground for invalidity and nor does such deficiency fall within any of the absolute grounds, including that the mark is contrary to public policy. The Court also pointed out that, in any event, a mark could be challenged if it had not been put to genuine use within a continuous period of 5 years.
Although this decision is based upon the provisions of the old Regulation (No 40/94) because of the age of Sky’s registrations, the same considerations apply under the current Regulation and so the decision applies equally to those registrations filed under the current regime.
The Court further ruled that applications made without intention to use for the goods/services claimed can constitute bad faith, but only if it can be shown that the trade mark applicant had the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining a right for purposes other than those falling within the functions of a trade mark. Bad faith will only be found, in those circumstances, in relation to the goods and services to which it relates.
In relation to the final question, the Court ruled that the UK requirement – that the applicant must state whether it is using or intends to use the applied for trade mark – is compatible with EU law. Making that statement falsely may constitute evidence of bad faith but cannot, alone, constitute a ground for invalidity of the trade mark concerned. There needs to be additional elements of bad faith, as set out above.
The case will now return to the UK’s High Court to decide, on the facts, whether Sky’s marks were filed in bad faith.