Case law: Need for trade mark owners to urgently review trade mark registrations recedes following full European Court ruling

Trade mark owners should consider whether they still need to 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, now that the CJEU has failed to follow its Advocate General’s initial opinion that they should.

The danger of a trade mark registration being invalidated in whole or part because the specification of the goods and/or services covered by the trade mark is not sufficiently precise and clear, and because there is no intention to use it in relation to all the goods and services specified, has lessened following a recent ruling by the European Court.

Initially, the Advocate General (AG) of the Court of Justice of the European Union (CJEU) had given their formal opinion that four of broadcaster Sky’s EU-registered trade marks, and one UK trade mark, might be invalidated 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 competitors from entering the relevant markets.

The AG’s opinion was that, if the specification of the goods and services covered by a registered trade mark was not sufficiently clear and precise, this could mean the mark was liable to be invalidated as being against public policy. They considered, for example, 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 gave their opinion that a mark could, in certain circumstances, be invalidated in whole or in part on grounds of bad faith, as an abuse of the trade mark registration system, if it was registered without any intention to use it for all or some of the goods and/or services in the specification. Particularly, this could apply where the real reason for the registration was to stop some third party entering the market.

However, to the relief of trade mark owners, the CJEU has – unusually – decided not to follow the AG’s opinion.

It has ruled that:

• Trade mark specifications using wide words such as ‘computer software’ are not liable to be invalidated on grounds they are insufficiently precise or clear and therefore against public policy.
• A trade mark owner is not acting in bad faith solely because, at the time it files an application to register a mark, it is not carrying out economic activity in all the areas covered by a widely-worded specification. There is only bad faith if the owner had the ‘intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark’. (Note also that registrations are open to challenge for non-use after five years in any event.)

Following the AG’s opinion many trade mark owners had set in motion an urgent review of their existing trade mark specifications to check whether they included terms that were too broad, and whether each mark was actually being used in relation to all, some or none of the goods and services specified.

Given the CJEU’s ruling, the need for those trade mark owners to carry out such a review is no longer so pressing – although they may consider it worthwhile to carry out or continue a review of their trade mark registrations anyway. If in doubt, legal advice on the issue may be appropriate.

Operative date

• Now

Recommendation

• Trade mark owners should consider whether they still need to 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.

Case law: Sky plc & Ors v SkyKick UK Limited & Anr C-371/18

Please note: An article published in the December 2019 edition of Legal Alert covered this case at an earlier stage in the legal process.