‘SkyKick-proof’ your marks: lawyers on AG opinion
Yesterday’s advocate general (AG) opinion in Sky v SkyKick has the potential to radically shake-up European trademark law, lawyers have told WIPR.
Yesterday, October 16 AG Evgeni Tanchev advised the Court of Justice of the European Union (CJEU) that it should rule that trademarks for ‘computer software’ give UK media company Sky an unfair monopoly and are contrary to public policy.
Aaron Wood, consultant at Keystone Law, told WIPR that, “depending on who you are, this is either the most catastrophic or amazing case in EU trademark law in the last 15 years”.
He said that the opinion opens the door for overly broad marks being invalidated on the grounds they are contrary to public policy.
According to Wood, the opinion has implications far beyond marks for ‘computer software’. He cited the example of a brand that sells only women’s clothing, or a further sub-category such as ‘sports’ or ‘leisure wear’, but has a broad trademark portfolio.
“At present, if that company applies for clothing, footwear, and headwear in class 25, there’s no problem,” he said.
“Post-SkyKick, there’s an argument that says they’re invalid,” Wood warned.
“I would estimate that 70-75% of all marks currently on the register in the EU are challengeable,” he predicted.
Sahira Khwaja, partner at Hogan Lovells, said that, should the decision be implemented, "holders of registrations for 'computer software' will be faced with an immediate problem in determining the scope of trademark protection afforded by those registrations.
"This means the scope of protection may end up being narrower than had been previously thought," Khwaja said.
‘Big changes’ to filing
Bonita Trimmer, legal director at Browne Jacobson, advised that new trademark applications be as “SkyKick-proof as is pragmatic” in the wake of the opinion.
Trimmer predicted “very big changes to filing practices” if the opinion is implemented by the CJEU.
“There will also be a lot of portfolio audits going on...it’s probably a good idea to start trying to figure out which marks in your portfolio are vulnerable and when you’re thinking about enforcement, SkyKick is an argument you should anticipate,” she advised.
Fiona McBride, partner and trademark attorney at Withers & Rogers, agreed that filing practices are set to change in the wake of the opinion, particularly for larger companies and portfolios.
“There has always been a trend for large companies to apply for trademark protection using the broadest terms possible in order to exclude competitors from using them in many different market sectors,” McBride said.
“This approach can no longer continue and large brands will have to take a far more detailed approach when seeking to protect their brand name and identity in their target markets,” she advised.
McBride said the opinion could be a boost to smaller companies, particularly those entering the market.
‘While it is still important to perform the right checks before launching your brand or a new product, it is less likely that they will find themselves on the receiving end of a potentially expensive infringement claim from a corporate that is not trading in that segment of the market anyway,” she said.
Brexit implications
Given the shadow of Brexit, it is still not certain that the CJEU will rule on the case, which originated from the English High Court.
This will largely depend on the circumstances of Brexit, Trimmer advised.
“If we end up with the sort of deal everyone has been talking about, then the CJEU will continue with references from UK courts during the transition period,” she said.
In the case of a no-deal Brexit, Trimmer said there was a “real possibility that the CJEU will regard itself as no longer having jurisdiction”.
Nonetheless, the opinion could still have significant ramifications for EU trademark law.
“In the case of the remaining 27 EU member states, everyone will have read this opinion and there’s likely to be another dispute exactly along these lines; it will just take longer to get conclusive guidance,” Trimmer said.
