The recently published Opinion of the Attorney-General in the Sky v Skykick case, has provided some much-needed clarity on the legitimacy of wide-ranging specifications, and the associated issue of ‘bad faith’ being pleaded in trade mark invalidation proceedings.
Should the CJEU go on to adopt the AG’s Opinion, the subsequent changes in European law and practice, will have an enormous impact on the scope of protection that a trade mark can be granted a monopoly for. With an expected tightening of the rules, now is a prime opportunity for trade mark owners to assess the suitability of their specifications, and tighten their filing practice.
Background
In 2018, SkyKick successfully countered a claim of trade mark infringement against broadcasting juggernaut Sky PLC. Despite the clear similarities of the marks involved (see below), the presiding judge, Justice Arnold, ruled in favour of SkyKick.
| Sky’s Marks | The Signs Complained of |
| SKY
UKTM No. 2500604 |
|
EUTM No. 3203619 |
|
EUTM No. 3166352 |
|
| Sky v SkyKick [2018] | |
SkyKick had argued that:
- Sky’s specifications were insufficiently clear or precise.
- Sky’s specifications were filed in bad faith because they contained terms Sky clearly had no discernible interest or rationale in pursuing.
SkyKick’s arguments had highlighted an ambiguity of European legislation that allowed companies like Sky to operate an aggressive enforcement strategy; namely, lack of clarity on whether a trade mark can be declared as having been filed in bad faith (and thus subject to invalidation) if the registered goods and services are wholly unrelated to core interests of the applicant.
In filing incredibly broad specifications, some covering 8,000 words of goods and services, Sky had enjoyed years of success in its infringement claims against marks containing the word element ‘SKY’, regardless of the distance in goods/services of the later marks relative to Sky’s actual commercial interests.
Sky, by its own admission, is a direct-to-consumer media and entertainment company [1] and thus, unsurprisingly, Justice Arnold questioned whether its clear lack of intention to use (i.e. bad faith) constituted grounds for invalidation. This question, and four others, were referred by Justice Arnold to the CJEU for clarity, summarising that “if the [Sky] Trade Marks are valid, then there is a likelihood of confusion” [2].
AG Opinion
On 16 October 2019, Attorney-General Tanchev’s Opinion in response to Justice Arnold’s questions was published. The questions and answers (in summary) were as follows:
- Is insufficient clarity and precision of the specification a ground for invalidity in and of itself?
The AG answered in the negative, stating “there is no provision in any of the relevant legislation for [invalidation] … on the ground that some or all of the terms in the specification of goods or services lack sufficient clarity and precision” [3].
- May the requirement of clarity and precision be connected with a ground for invalidity that is laid down by the EU legislation?
The AG concluded that whilst there are no legal provisions for invalidation on the basis of a specification lacking clarity or precision, specifications could instead be found invalid where this is a breach of public policy/order i.e. bad faith. In other words, because Sky’s specifications confer the holder such a wide monopoly, broad terms such as the aforementioned “computer services” should be declared invalid to prevent repression of market competition.
- What is the scope of bad faith?
The AG concluded the legal requirement preventing application of a mark in ‘bad faith’ was intended to encompass and broaden the previous provision, an explicit bona fide intention to use. Therefore, a broad specification, where there is a clear lack of intention to use but for the purpose of blocking third parties from using an identical or similar mark, falls within ‘bad faith’.
- What are the consequences of bad faith where bad faith only concerns some of the goods and services covered by a registration?
A relief to broad filers, the AG did not find that the existence of bad faith within a specification constituted invalidation of a mark in its entirety. Rather, “where the ground for invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark is to be declared invalid as regards those goods or services only” [4].
- Is UK law regarding intention to use compatible with EU law?
Yes. Specifically, the AG found that the UK’s requirement that applicants declare they are, or will be, using their mark across the entirety of their specification is compatible with EU law. However, failure to live up to such a declaration would not be ‘the sole basis for a finding of bad faith’ [5].
Conclusion
As stated, if the CJEU adopts the positions expressed in the AG’s Opinion, trade mark owners will need to review carefully the contents of their specifications and consider whether they are fit for purpose. Failure to do so could ultimately be costly, even beyond registration.
Consequently, we recommend that our clients:
- Avoid extending protection beyond the list of goods and services that are realistically likely to be provided, when filing a new trade mark application.
- Avoid the temptation of filing for a list of speculative goods and services, that may be introduced at a future date, simply as a way of gaining ‘more value’ out of an application. Ultimately, instructing a second application if and when use expands to other areas, will be far more useful and cost effective, than fighting an invalidation action that could result in having goods/services struck through.
- Do contact us should you require advice on how to best protect your trade marks. As always, our highly experienced team of Attorneys will be pleased to advise further, and share their expertise in the drafting of an appropriate specification.
In view of the possible changes to come, we will be monitoring for the publication of the CJEU’s final decision, and provide an update when this is delivered.
[1] www.skygroup.sky [Date Accessed: 06 November 2019]
[2] Sky Plc & Ors v Skykick UK Ltd & Anor [2018] EWHC 155 (Ch) (06 February 2018). Paragraph 358.
[3] Opinion of Advocate Tanchev [2019] Case C‑371/18 (16 October 2019). Paragraph 39.
[4] AG Opinion. Paragraph 127.
[5] AG Opinion. Paragraph 143.
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