Case Study: Trade Mark Specs and Bad Faith

I wanted to review the case of Sky Plc & Ors v SkyKick UK Ltd & Anr and considering the findings of the case. From this case is an EU trade mark invalid on the basis of an overly broad specification of goods/services?

The background

Sky Plc (Sky), the large media and telecommunications company, brought trade mark infringement and passing off claims against SkyKick UK Limited (SkyKick), a business that provides software solutions to SMEs.

It was determined that SkyKick had infringed some of Sky’s UK and EU trade marks as SkyKick were using marks that were similar to Sky’s trade marks in the same goods and services categories and some customers would confuse the two brands.

The relevant issues arose on SkyKick’s counterclaim where they argued that Sky should not be able to assert their rights over industries where they do not act, eg cloud computing software tools. As Sky technically had protected marks in respect of computer software and data storage, SkyKick argued that Sky’s marks (i) should be invalid as their trade mark specifications lacked clarity and precision and (ii) were registered in bad faith as Sky lacked intention to use them in relation to the specified goods or services.

The decision

It was ruled by the CJEU that:

An EU trade mark cannot be deemed wholly or partially invalid after registration on the ground that the specification lacks clarity or precision. Using broad terms such as “computer software” (which Sky had used to assert their rights), were not contrary to public policy and did not “confer on the proprietor a monopoly of immense breadth which cannot be justified by a commercial interest”.

A lack of intention to use an EU trade mark is not in itself a ground for bad faith. The CJEU did however set out a test for finding bad faith, noting that a trade mark application will only be found to have been made in bad faith if the trade mark applicant had the intention of:

· undermining the interests of third parties in a manner inconsistent with honest practices

· 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 CJEU also confirmed that, where bad faith was established in respect of certain categories applied for, then only that part of the trade mark will be invalidated.

Conclusion

An EU trade mark will not be declared invalid on the ground of lack of clarity and precision of its specifications. Further, a lack of intention to use an EU trade mark is not in itself a ground for bad faith. This could of had significant implications for trade mark owners if the CJEU had decided that a finding of bad faith against part of a trade mark registration would result in the whole of that registration being invalidated – leaving those with wide registrations vulnerable to wholesale strike out of their trade mark rights as a result of invalidity challenges.

When considering making trade mark applications with wide specifications, it remains prudent to balance the scope of possible protection (and opportunity for further growth) against seeking to cover industries where you do not plan to operate.

If you have any issues with trade mark or any other aspects intellectual property that you want to discuss or you want to have a more proactive approach to your IP, we at Briffa advises on all aspects of intellectual property law and practice and offers free 30-minute consultations to all new clients. If you would like to book a call or a meeting with one of our specialist IP lawyers, please contact hasnath@briffa.com or 020 7096 2779.

Written by Hasnath Ahmed, Solicitor