Not quite a kick in the teeth for trade mark owners.

30 June 2020 | Reading time: 4 minutes

On 29 April 2020, the High Court of Justice in England handed down its judgement in Sky v SkyKick, primarily regarding broad trade mark specifications and bad faith trade mark applications. The judgement followed much-anticipated guidance provided by the Court of Justice of the European Union (CJEU) earlier this year.

Key takeaways.

  • Trade mark registrations cannot be declared wholly or partly invalid on the ground that their specifications lack clarity or precision.
  • An application to register a trade mark may be found to have been filed in ‘bad faith’, if the applicant intended to:
    • dishonestly undermine third parties; or
    • obtain an exclusive right for purposes other than the usual functions of a trade mark (ie a badge of origin).
  • Bad faith will not invalidate a registration as a whole, but may invalidate the goods and services applied for in bad faith.

What was the dispute?

  • Sky Plc (Sky), a well-known British broadcaster, brought infringement proceedings against SkyKick UK Ltd (SkyKick), a cloud management software supplier, for infringement of ‘SKY’ related registered trade marks.
  • SkyKick counterclaimed the trade marks were wholly or partly invalidly registered because the:
    • specifications of goods and services lacked clarity and precision; and
    • applications were made in bad faith.

Questions for the CJEU.

  • The national courts of EU member states must ensure that EU law is properly applied. If a national court is in doubt about the interpretation of an EU law, it can ask the CJEU for guidance.
  • In 2018, Mr Justice Arnold (as he then was) asked the following questions of the CJEU:
    • Can a trade mark registration be declared wholly or partly invalid due to specifications that lack clarity or precision?
    • If the answer to the first question is ‘yes’, does ‘computer software’ lack in clarity or precision?
    • If a person applies to register a trade mark for goods and/or services that it does not intend to use the trade mark for, is this an application made in ‘bad faith’?
    • Can an application be made partly in ‘good faith’ and partly in ‘bad faith’ if that person intends to use the trade mark for some, but not all, of the goods and/or services in the specifications?

Do broad trade mark specifications invalidate a registration?

No – for example, even if ‘computer software’ lacked clarity and precision, this could not be a ground for invalidity.

What about ‘bad faith’?

The CJEU answered the Court’s question regarding bad faith by stating that bad faith may be found where an applicant files an application to register a trade mark without any intention to use the trade mark if the applicant had an intention of:

  • undermining, in a manner inconsistent with honest practice, the interests of third parties; or
  • obtaining, without targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark (ie functioning as a badge of origin of the goods or services).

The CJEU also stated that, where bad faith is found, the registration will only be invalid in respect of the goods and/or services that were applied for in bad faith.

Lord Justice Arnold held the following regarding Sky’s trade mark registrations:

Not merely did they not intend to use the Trade Marks in relation to some goods and services covered by the specifications at the application dates, but there was no foreseeable prospect that they would ever intend to use the Trade Marks in relation to such goods and services […] Sky made the applications pursuant to a deliberate strategy of seeking very broad protection of the Trade Marks regardless of whether it was commercially justified. Sky thus applied for the Trade Marks with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely purely as a legal weapon against third parties, whether in threats of infringement claims or actual infringement claims or oppositions to third party applications for registration.

Lord Justice Arnold then proceeded to narrow the Sky trade mark specifications and considered the following factors when doing so:

  • Although an applicant may not have intended to use the relevant trade mark for the entire broad category of goods or services when it applied to register it, this does not mean the entire broad category was applied for in bad faith.
  • Trade mark owners have a:
    • right to register their trade marks for goods and services they are not currently using the trade marks for but may use them for in the future; and
    • legitimate interest in seeking a ‘modest penumbra’ of protection extending beyond the specific goods and services for which the trade mark is actually used.
    • In respect of the broad computer software claim under class 9, the Court excised subsets of that specification that were applied for in bad faith. This left the specification to read as follows:
Original specification Court’s ‘fair’ specification
Computer software
  1. Computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service
  2. Computer software supplied as part of or in connection with any telecommunications apparatus or service
  3. Electronic calendar software
  4. Application software for accessing audio, visual and/or audio-visual content via mobile telephones and/or tablet computers
  5. Games software

We can help.

If your business is operating in the EU, or you have plans to expand into the EU, speak to Bespoke’s intellectual property lawyers to discuss how to best protect your business.