16 October 2019TrademarksRory O'Neill

Sky v SkyKick AG: lack of clarity not grounds for TM invalidation

An advocate general (AG) of the Court of Justice of the European Union (CJEU) has recommended that the court rule that a lack of clarity and precision in the specification of goods and services is not grounds for invalidation of a trademark.

The finding comes as part of a mixed ruling for  Sky in its trademark dispute with cloud networking provider  SkyKick, after the English High Court referred the case to the CJEU last year.

In  the opinion, issued today October 16, AG Evgeni Tanchev wrote that the list of absolute grounds for invalidity of a trademark under EU law (Article 51 of Regulation 40/94) was “exhaustive” and did not include a lack of clarity and precision in the specification of goods.

Sky argued that Skykick had infringed four of Sky’s EU trademarks and one UK mark, while SkyKick responded that Sky’s marks lacked clarity, and were registered in bad faith.

The UK, French, Hungarian, Polish, Slovak, and Finnish governments had all proposed that lack of clarity should not be considered grounds for invalidation.

“I agree that issues such as a lack of clarity and precision are important in trademark law, but they are issues that must be examined by the competent trademark offices when they are dealing with an application for registration of a mark,” the AG wrote.

Impact on scope

Yet although a mark should not be invalidated for lacking clarity and precision in this respect, the AG said this would still have an impact on the scope of a mark’s protection.

SkyKick had argued that Sky’s registration covering “computer software” was overly broad and effectively granted Sky an unfair monopoly.

The AG agreed that registration for computer software was “unjustified and contrary to the public interest”.

“SkyKick correctly observes that in modern society a practically limitless array of ‘smart’ goods incorporate, or are supplied with, computer software,” the AG wrote.

According to the opinion, registration for ‘computer software’ grants the owner of that mark a “monopoly of immense breadth which cannot be justified by any legitimate commercial interest”.

Bad faith

SkyKick had argued that Sky registered its marks in bad faith, as it had no intention to use them in relation to all of the goods and services specified.

The AG said that registering a mark without intention to use in connection with the specified goods and services “may constitute an element of bad faith”, particularly where the objective was to prevent a third party from entering the market.

It was for the English court to determine whether this true in the case of Sky v SkyKick, the AG said.

Justice Arnold of the English High Court referred the case to the CJEU last year, remarking that it raised “some important issues of European trademark law”.

“To date, the CJEU has had relatively little opportunity to consider what constitutes filing a trademark application in bad faith and has not had occasion directly to address the question of whether it is bad faith to apply to register a trademark without a genuine intention to use the trademark in relation to the goods and/or services specified in the application,” Arnold said in his opinion.

He had ruled that if Sky’s marks were valid, then there was a likelihood of confusion.

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More on this story

7 February 2018   The English High Court referred a series of questions to the Court of Justice of the European Union yesterday, in a dispute involving media company Sky.
17 October 2019   Yesterday’s advocate general opinion in Sky v SkyKick has the potential to radically shake-up European trademark law, lawyers have told WIPR.
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.