A trade mark registered in good faith cannot be ruled invalid on the grounds that the terms designating the goods or services it covers are unclear, the Court of Justice of the EU ruled today in what IP lawyers described as the most significant trade mark ruling in years.
In Sky v Skykick, five judges ruled on questions referred by the High Court of England and Wales. The action began when broadcaster Sky brought proceedings against SkyKick, a cloud software company, over infringement of a figurative mark. SkyKick counterclaimed, attacking the validity of Sky’s trade marks on the ground that it relied on specifications such as 'computer software' that were overly broad. It also accused Sky of making the applications in bad faith - that is to cover products and services it did not intend to supply.
In October last year, the advocate general of the CJEU said that the case addresses 'a number of deficiencies that have emerged in the EU trade mark system'. The opinion said that an imprecise trade mark may be invalid on the grounds that it is contrary to public policy or public order, raising fears that hundreds of trade mark registrations would come under attack.
Today's judgment however says that registration of a trade mark without the intention to use it constitutes bad faith only in respect of those particular goods and services.
IP specialists said the ruling is significant. Ben Mark, a partner at City firm RPC, and member of the Law Society’s IP committee, said: 'The main thrust of the decision is that a lack of intention to use a trademark is not in itself a ground for bad faith nor will trade marks be invalidated for lack of clarity and precision.
'This will be a welcome relief for brand owners seeking to maintain broader protection but will be less welcome for companies seeking to clear new brands, as this decision will do little to "de-clutter" the trademark register. The scenario envisaged following the opinion of the advocate general, which has not been followed, namely that there would be a flurry of activity for legal advisers, does not now seem likely.'
Kate O’Rourke, partner and trade mark attorney at IP specialist firm Mewburn Ellis, said: 'This decision will be seen by Sky as a win for them and for all brand owners who file trade marks for a broad range of products and services, and will help brand owners protect potential business areas as well as their existing ones.
'The decision will also be reassuring for brand owners as it is clear that trying to invalidate a trade mark for bad faith will still be difficult.'
O'Rourke added that UK courts post-Brexit may take an early opportunity to clarify the importance of the need for an intention to use a trade mark when making an application.