31 January 2020TrademarksRory O'Neill

Could Brexit force an early SkyKick clarification?

Two days after the biggest EU trademark ruling of the year, brand owners and practitioners continue to digest the implications of the Court of Justice of the European Union’s (CJEU) decision in Sky v SkyKick.

The consensus so far is that Sky has come out better of the ruling, or at least in a much stronger position than was anticipated when the advocate general (AG) issued his opinion last year.

But in a statement sent to WIPR, SkyKick said it was “pleased” with the ruling “as a whole”.

“It is a judgment that is also of broad importance to all businesses looking to clarify the scope of European trademark registrations,” the statement added.

“We look forward to the next step of the process when the European judgment will be considered by Lord Justice Arnold in the coming months.”

‘Missed opportunity’ to reduce TM clutter

David Stone, Global Head of IP, Allen & Overy said in not following the AG’s opinion, the CJEU had “missed an opportunity to change the way in which trademark specifications are drafted in the EU to align itself with US practice and to avoid clutter in the trademark register.”

Stone added: “While the decision does not signal an increase in invalidity challenges to existing trademarks covering general terms–therefore avoiding an immediate headache for trademark holders–we have perhaps been left with a bigger problem down the road.”

Mark Nichols, an associate at Harbottle & Lewis, said the decision “bucks the recent trend” of judgments and IPO decisions, particularly in the UK, which had “indicated the need to reduce clutter in the trademark registry.”

Big brands ‘the winners’

According to commentators, the real winners are big brands with large, and broad, trademark portfolios.

Elaine O’Hare, senior associate at Stevens & Bolton, said: “Any brands worried about the threat of outsiders attacking the validity of their marks due to use of broad terms can relax a little.”

“There are still legal intricacies that brand owners must be conscious of, but Sky and many big brands can now breathe a sigh of relief. Should the judgment have gone the other way, they could have faced a wave of assaults from third parties looking to capitalise on any trademark definitions too broad,” O’Hare added.

Many leading trademark lawyers also noted that the decision set a considerably high bar for a finding of bad faith.

Kate O’Rourke, partner at Mewburn Ellis, said the ruling would be “reassuring for brand owners as it is clear that trying to invalidate a trademark for bad faith will still be difficult”.

Will Brexit influence UK courts?

The UK is due to leave the EU at 11pm (GMT) this evening, January 31, before entering a transition phase, setting up the prospect of UK divergence on the issue.

“Interestingly, with Brexit on the horizon, the UK courts may take an early opportunity to clarify the importance of the need for an intention to use a trademark on filing–a concept not seen as so important on the continent,” O’Rourke added.

Harbottle’s Nichols agreed.

“It will be interesting, particularly with Brexit looming, to see whether judges attempt to distinguish the CJEU’s decision, and whether following Brexit UK case law may diverge with that of the CJEU altogether,” Nichols said.

Clarity on bad faith

Tania Clark, president at the UK’s Chartered Institute of Trade Mark Attorneys (CITMA), hailed SkyKick as a “common-sense decision which provides clarity on what constitutes ‘bad faith’ in relation to trademark rights in the EU and UK”.

“When drafting trademark applications, it has always been best practice to consider how the brand owner’s commercial intentions might evolve over time and to draft specifications accordingly to incorporate the brands envisaged growth and future development in other market segments,” Clark said.

“This remains our advice and the decision of the CJEU … emphasises the need for brand owners to be sincere about their intentions to pursue the sale of goods or services for which registered EU or national protection is sought,” she added.

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More on this story

10 February 2020   The Court of Justice of the European Union’s (CJEU) judgment in Sky v Skykick follows a referral from the High Court of Justice of England and Wales which was regarded as one of the most important EU trademark referrals in recent years, writes Charlotte Duly, head of brand protection at Charles Russell Speechlys.
29 January 2020   This morning’s Court of Justice of the European Union ruling in Sky v SkyKick is a “big win for brand owners” and a positive result for Sky, lawyers have said.
16 April 2020   The Chartered Institute of Trade Mark Attorneys in the UK has elected Richard Goddard as president.