Court of Justice of the European Union (CJEU) dismisses lack of clarity and precision as a ground for trade mark invalidity and rules that a lack of intention to use may be bad faith
In Sky v Skykick, the High Court (Arnold J. as he then was) referred trade mark questions of general public importance on lack of clarity and precision and bad faith to the CJEU (main judgment: link[1]; questions: link[2]).
The CJEU has now handed down judgment (CaseC-371/18: link[3]), in summary as follows: 1) there is no legal basis to invalidate a trade mark on the ground that it includes terms lacking in clarity and precision; 2) it may constitute bad faith to register a trade mark without any intention to use it where the applicant intentionally undermines third party interests, or seeks to obtain exclusive rights that are not consistent with the essential functions of a trade mark; and 3) where a finding of bad faith concerns only certain goods or services, that application constitutes bad faith only in so far as it relates to “those goods or services”.
Whilst the CJEU’s decision will be welcomed by brand owners, recent legal developments have highlighted the need for clarity in trade mark specifications and unclear or imprecise terms will remain incapable of enforcement in opposition or infringement proceedings, as before.
It is also useful to finally have confirmation from the CJEU that applying for a trade mark without intending to use it may constitute bad faith, although the CJEU did not address what impact a finding of partial bad faith would have on umbrella terms that had been chosen deliberately widely such as “financial services”. That important issue remains to be decided in future cases.
Members of Chambers acted on both sides at the High Court trial, with Jeremy Heald appearing on behalf of Sky and Simon Malynicz QC and Stuart Baran on behalf of Skykick.
Simon Malynicz QC and Stuart Baran
acted on behalf of Skykick at the CJEU.
[1] https://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Ch/2018/155.html&query=(skykick)
[2] https://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Ch/2018/943.html&query=(skykick)
[3]http://curia.europa.eu/juris/document/document_print.jsf?docid=222824&text=&dir=&doclang=EN&part=1&occ=first&mode=req&pageIndex=0&cid=3376591