The Advocate-General Tanchev's recently published opinion on the dispute between Sky and SkyKick (C-371/18) is potentially one of the most important trade mark cases to be heard before the Court of Justice of the European Union this year. The Advocate-General stated that there are ‘gaps and inconsistencies’ in the law surrounding the specifications of goods and services. He believes that this case ‘is significant since it allows the court to address issues relating to a number of [those] deficiencies’.
In terms of the facts of the case, Sky brought an action against SkyKick for trade mark infringement. SkyKick counter-claimed that Sky’s trade marks should be declared invalid because (i) the specifications for goods and services lacked the requisite clarity and precision and (ii) they are drafted too broadly and go beyond Sky’s core business areas of television broadcasting, telephony and broadband services. The High Court of Justice (England and Wales), Chancery Division, decided to stay the proceedings whilst referring questions on these grounds of invalidity to the CJEU.
The questions referred to the CJEU and the Advocate-General’s opinion in relation to each question are set out below:
The Advocate-General’s view is that a trade mark cannot be declared invalid due to the lack of clarity and precision of the specification of goods and services. This is because it does not constitute one of the grounds for invalidity exhaustively provided under EU legislation.
The Advocate-General’s opinion is that the requirement of clarity and precision may be covered by the ground for refusal or invalidity of marks which are contrary to public policy (which is a ground for refusal or invalidity) in so far as registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest. The Advocate-General explained that a trade mark for a broad term such as ‘computer software’ is ‘unjustified and contrary to the public interest because it confers on the proprietor a monopoly of immense breadth which cannot be justified by any legitimate commercial interest of the proprietor’. The Advocate-General also stated that the broad terms of 'telecommunication services' and 'financial services' could potentially fall into this category.
In certain circumstances, applying for registration of a trade mark without any intention to use it in connection with the specified goods or services may constitute an element of bad faith, in particular where the sole objective of the applicant is to prevent a third party from entering the market, including where there is evidence of an abusive filing strategy, which it is for the referring court to determine.
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 for those goods or services only.
Section 32(3) of the United Kingdom Trade Mark Act 1994 is compatible with the directive provided that it is not the sole basis for a finding of bad faith.
The Court of Justice of the European Union must now render a decision on the case. If the court agrees with the Advocate-General’s opinion, this could potentially render thousands of existing EU trade mark registrations covering the term ‘computer software’ (and other terms such as ‘telecommunication services’ and ‘financial services’) partially invalid.