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Case law: Trade mark owners review trade mark registrations following EU legal opinion

Trade mark owners should review their trade mark registrations to ensure the specifications in their registrations are sufficiently precise and clear, and that there is an intention to use each mark in relation to all the goods and services specified in the registration - or risk them being invalidated, following a recent legal opinion.

December 2019

This update was published in Legal Alert - December 2019

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

Please note: A newer article on this case was published in the March 2020 edition of Legal Alert following subsequent developments in the legal process.

In an earlier High Court case, broadcaster Sky alleged that a cloud migration IT services company had infringed four of its EU-registered trade marks and one UK trade mark. The cloud company counterclaimed that Sky’s marks were invalid, either in whole or in part, because:

  • the specifications of the goods and services covered by the marks were insufficiently precise and clear; and
  • the marks were applied for in bad faith, with no intention of using them, but merely to stop others from entering the relevant markets.

Particular issues, which the Court referred to the Advocate General (AG) of the Court of Justice of the European Union (CJEU), included whether a trade mark registration could be declared invalid on the first ground. If so, this could potentially invalidate marks in the many cases where trade mark owners had opted to apply for, and succeeded in obtaining, a registration covering a broad range of goods or services.

The AG’s opinion was that a trade mark registration could not be declared invalid solely on grounds the specification of the goods and services covered by the mark was not sufficiently clear and precise. However, a lack of precision and clarity could mean a mark was liable to be invalidated on other grounds - as being against public policy.

In this respect, the AG’s opinion was that terms such as ‘computer software’ in a specification were too general and covered too wide a range of goods and services to be in the public interest. The same rationale could be applied to terms such as ‘financial services’ and ‘telecommunications’.

The AG also said a lack of clarity and precision might be taken into account by a court when deciding the extent of the protection given by the registration in a dispute.

He also gave his opinion that a mark could, in certain circumstances, be invalidated on grounds of bad faith, as an abuse of the trade mark registration system, if it was registered without any intention to use it. Particularly, this could apply where the reason for the registration was to stop a third party entering the market.

However, the AG’s view was that a bad faith finding would not necessarily mean the whole registration was invalid. If the registration was only to stop the third party from using certain goods and services specified, but not all of them, it could be that only the registration of those goods or services was invalid.

Operative date

  • Now

Recommendation

  • Trade mark owners should consider reviewing their trade mark registrations to ensure the specifications in their registrations are sufficiently precise and clear, and that there is an intention to use each mark in relation to all the goods and services specified in the registration, pending the full CJEU ruling, to minimise the risk of being invalidated in whole or in part if the AG’s opinion is upheld.

Case law: Sky plc & Ors v SkyKick UK Limited & Anr C-317/18

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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