The eagerly awaited Advocate General Opinion in the SkyKick case (C-317/18) was published last week. The Opinion from AG Tanchev relates to questions referred to the CJEU by the UK High Court in trade mark infringement proceedings brought by household name Sky (Sky Plc and Sky International AG) against SkyKick Inc, a cloud migration IT company. The key issues being considered at EU level are the need for clarity and precision in trade mark specifications and bad faith. If followed by the CJEU, the AG’s Opinion could have wide-ranging ramifications for trade mark owners across the EU, particularly those with trade mark protection for broad terms and those who have adopted a practice of seeking trade mark protection for a very wide range of goods and services. The AG Opinion acts as a prompt to trade mark owners to review their specifications and filing practices and seek advice on the impact the final decision in SkyKick might have on their trade mark portfolio and strategy.
Last year, in the context of trade mark infringement proceedings involving Sky and SkyKick, the UK High Court referred several questions to the Court of Justice of the EU for a preliminary ruling. All of the questions, which are set out in full at paragraph 19 of the Opinion, related to the requirement for clarity and precision in trade mark specifications and the extent to which trade mark registrations can be invalidated for bad faith. The Advocate General (AG) considered both of these issues and the resulting Opinion can be summarised as follows:
Clarity & Precision Requirement
In the AG’s view, a trade mark registration cannot be declared invalid simply because some or all of the terms used in the accompanying specification of goods and services are insufficiently clear and precise. This is not a ground for invalidity in its own right.
However, unclear and imprecise terms may be contrary to the public interest, so liable to be invalidated on that basis. In the AG’s view, the registration of trade marks covering terms such as ‘computer software’, which are so general and cover such a wide range of goods and services, is unjustified and contrary to the public interest. For software, the AG notes that a single trade mark owner could not possibly have a commercial interest in providing all types of software, as software is too variable in function and field of use. As a result, the AG suggests that trade marks covering such broad terms including ‘financial services’ and telecommunications’, may be liable to cancellation.
In the AG’s view, filing a trade mark application without any intention to use the mark for the goods and services listed may, in certain circumstances, constitute bad faith insofar as it is an abuse of the trade mark system. This would be the case in particular where the objective was to prevent a third party entering the market.
The AG did not, however, think that a finding of bad faith in respect of some goods and services would invalidate the entire registration. In the AG’s view, where a registration is invalid in respect of some of the goods and services covered (for example because the applicant had no intention to use for these goods and services and there is a finding of bad faith), there would only be partial invalidity in respect of the particular goods and services where there was no intention to use. The remainder of the registration would not be affected.
What does this Opinion mean for trade mark owners?
The AG’s Opinion is non-binding and will not necessarily be followed by the Court of Justice. There is currently no date scheduled for the CJEU to issue its final ruling, so the period of uncertainty surrounding the issues raised in the SkyKick case will continue for some months to come. That said, the Opinion suggests a movement towards a stricter policy from the EU regarding the drafting of specifications with a movement towards a more US style of specification where trade mark owners are required to set out in more granular detail the goods and services they are seeking to protect. This would mark a radical change to the current system and cause many trade mark owners to review their entire EU trade mark strategy. It would be prudent for trade mark owners to review the specifications of their own trade mark registrations to ascertain whether any of their terms might be considered insufficiently clear and precise.