The Court of Justice of the European Union (CJEU) has today issued its eagerly-awaited judgment in the SkyKick case no. C 371/18. The UK High Court asked for the Court of Justice’s guidance, resulting in today’s judgment
Sky, the broadcaster, had been trying to enforce broad rights against the SkyKick entity. Sky’s descriptions of goods and services were exhaustive, and SkyKick argued that Sky’s registered rights could not be maintained, alleging that Sky had acted in bad faith by registering its mark for goods and services which were unlikely to ever be provided by Sky. SkyKick also argued that Sky’s specification of goods and services was unclear and its rights should be limited due to a lack of clarity.
Many of the arguments Skykick raised were closed down by the Court today, which made three rulings:
1. The CJEU found that a lack clarity and precision in a specification of goods is not a ground for invalidity: “a Community trade mark or a national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision” . SkyKick had argued that lack of clarity and precision was a ground for invalidity on a public policy basis. That was not right, said the CJEU: the public policy objection applied to the trade mark itself, and not to other factors of the application such as the description of goods and services.
2. The CJEU acknowledged that: “the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith”. However, the court decided that bad faith would be found by way of an objective test: “… only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark”. The court also indicated that: “The bad faith of the trade mark applicant cannot, therefore, be presumed on the basis of the mere finding that, at the time of filing his or her application, that applicant had no economic activity corresponding to the goods and services referred to in that application”. Further, the court decided that if bad faith were found on the basis of a lack of intention to use a mark, then the relevant registration should be cancelled not in total, but only for the goods and services where an absence of intention to use had been found. It is likely that this part of the decision will be subject to debate when the case returns to the UK High Court and it will be instructive to learn how the CJEU’s ruling is applied to the facts of the case.
3. Whilst until now UK Trade Mark law has been harmonised with EU Trade Mark law, UK law has had an additional requirement for a TM applicant to declare on filing a TM application that there is an intention to use the mark for the goods and services specified. The CJEU has ruled that such a requirement is not precluded by EU law, but that it cannot itself give rise to a ground of invalidity, although it can constitute evidence for the purposes of establishing bad faith. It seems likely that in practice this will mean that an applicant for invalidity must satisfy the objective test given in paragraph 2 above, with the UK’s requirement for a declaration on filing adding little, at least until after Brexit.
The case will now return to the UK High Court and further developments will be followed closely.