The Sky’s the limit – or is it?
The case of Sky v SkyKick was referred to the Court of Justice of the EU (“CJEU”) by the High Court on a number of points. The CJEU provided its ruling on the case earlier this year.
The claim began when the broadcaster Sky brought trade mark infringement proceedings against SkyKick, a cloud software company, in respect of the use of its trade mark. Sky claimed that “SkyKick” infringed its trade marks by being sufficiently similar and that it was being used for products and services which were covered by Sky’s registrations. The trade marks relied on by Sky contained a number of broad terms such as “computer software” in a number of classes. Sky also argued that it would cause confusion to the public who would assume that SkyKick was a sub-brand of Sky.
However, SkyKick argued that its business was different to that of Sky. Sky’s business is predominantly media and entertainment and whilst some of its goods and services relate to computer software, Sky did not have a direct interest in cloud computing software. SkyKick argued that if Sky does not have a direct interest in cloud computing software then why should it be allowed to exert rights over industries unrelated to it. SkyKick counterclaimed by arguing that Sky’s trade marks should be declared invalid on the grounds that the specifications of goods and services are unclear and that the trade mark applications were made in bad faith by Sky.
Mr Justice Arnold (or Lord Justice Arnold as he is now known) concluded that the counterclaim pursued by SkyKick would require guidance from the CJEU. Several questions were referred to the CJEU, including the following:
- Can use of broad terms mean a registered trade mark is so unclear or imprecise that it should be revoked?
- Is it bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods/services?
The CJEU provided its ruling in January 2020 and ruled that:
- A trade mark registered in good faith cannot be ruled invalid on the grounds that the terms designating the goods or services the trade mark covers are unclear.
- A trade mark application made without any intention to use the trade mark in relation to the goods and service covered by the registration constitutes bad faith.
- When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services.
What does this mean for trade mark owners?
The decision appears to be good news for owners of trade marks which contain broad terms such as “computer software” as the decision confirms that a trade mark registration will not be invalidated simply because it contains broad terms which lack clarity and precision. The decision will also come as a relief to owners of trade marks who will not risk invalidating their trade marks by making overly broad applications for registration, often as part of a defensive filing strategy.
However, the full implications of this recent ruling will not become clear until it is applied when the case is returned to the High Court.