Sky v SkyKick: Big news for big brands

Sky v SkyKick: Big news for big brands

Traditionally trade marks have been registered with specifications with broad descriptions of goods and services.  There had been concern that these were not suitably precise to remain on the register.  The Advocate General, in their opinion published in October 2019, agreed with these concerns.  However the CJEU disagreed.

How did the Sky v SkyKick case start?

The case concerned broadcaster Sky bringing trade mark infringement proceedings against SkyKick, a cloud software company, regarding two figurative marks. SkyKick denied the infringement and counterclaimed to invalidate Sky’s trade mark on two grounds:

  1. Sky’s trade mark specifications were not sufficiently clear or precise. Specifically, the term “computer software” was too broad and could apply to a large variety of goods.
  2. Sky had registered its trade marks in bad faith; namely that Sky had no reasonable cause for seeking to register this trade mark for the full spectrum of goods, which also included whips, furs and fire extinguishers.

What does the law say?

During the proceedings, the CJEU determined that an EU or national trade mark cannot be declared wholly or partially invalid on the grounds that some, or all, of the terms in the specification of goods and services are lacking in sufficient clarity and precision.  This is because the CJEU could not find a provision of EU law that stated a lack of clarity and precision was an adequate basis for invalidating a mark.

The CJEU was also asked whether a term such as ‘computer software’ was too general to be considered ‘sufficiently clear and precise’.  However, because the CJEU had already declared that a trade mark could not be invalidated on the grounds of an unclear or imprecise specification, they did not address this particular question.

Furthermore, a trade mark application made without any intention to use the mark in relation to goods and services covered by that registration constitutes bad faith, provided the applicant intends to either undermine the interests of a third party, or obtain an exclusive right for a purpose other than that falling with the functions of the mark.

Finally the CJEU concluded that s.32 of the UK Trade Marks Act 1994 (requiring that the trade mark is being used by an applicant in relation to those goods or services or that he has a bona fide to use the mark across the full specification) is compatible with EU Trade Mark Directive 2015/2436 and its predecessors. This is providing the “intention to use” requirement does not constitute, in itself, a ground for invalidity of a mark already registered.

Going forward

This decision will no doubt be welcomed by large brands that file trade mark applications for a wide variety of products and services, as Sky had in this case.  However, it’s likely to be disappointing news for smaller players trying to break into markets already dominated by big brands, or even just markets where larger brands have registered trade marks but don’t actually operate in.  Nevertheless, it will reassure brands that the lack of intention to use a trade mark from day one will not render it invalid necessarily, providing greater commercial certainty.  Trade mark owners will also be reassured that they will not have to amend or narrow their trade mark specification.

For more information, please contact Mauro Paiano on 0121 631 5344 or another member of the commercial team. For advice or guidance on any other legal issue, a member of our team can help – please click here to discuss.