Sky v Skykick: CJEU decision is a relief for trade mark holders

The decision in the highly anticipated trade mark case of Sky v Skykick was issued on 29 January 2020 by the Court of Justice of the European Union (CJEU), which means that trade mark holders will not need to amend registrations with broad specifications.

Key facts of Sky v Skykick

Sky, the well-known broadcast and telecommunications company, own a number of EU and UK trade mark registrations covering goods and services for terms such as “computer software”. Sky opposed a trade mark application made by Skykick to register marks containing the word ‘Sky’ in the same classes for software relating to cloud storage and data management.

Amongst other arguments,  Skykick argued that it was entirely unclear what goods would or could be covered by the broad term of “computer software”, and this gave Sky the advantage of being able to protect goods that they weren’t actually intending to use their trade mark on, for example cloud backup.

This led Skykick to argue that the trade mark registrations relied on by Sky in the proceedings were invalid as the goods and services in the registrations were too unclear or imprecise for third parties to interpret.

Skykick also argued that Sky obtained their trade mark registrations in bad faith because they did not intend to use the goods and services in their registrations at the time of filing.

The CJEU was asked to decide the following:

  1. If broad or potentially unclear terms should be allowed in trade mark specifications; and
  2. Is a trade mark registration considered to have been filed in bad faith if the applicant didn’t intend on using all of the goods and services in the specification at the time of filing?
The decision

In the case of Sky v Skykick the CJEU decided that:

  1. A trade mark registration can’t be declared invalid just because the goods and services it covers lack clarity or precision. This is an issue for examination of the trade mark application by the relevant Trade Mark Office;
  2. A trade mark registration or application can be cancelled due to bad faith when there is no intention to use the mark, however it must be proved that the applicant was dishonest when they filed the application. This is difficult to prove and, in reality, is likely to only be able to be proven on rare occasions.
  3. An entire registration or application would not be cancelled if it is found that only some of the goods and services were filed in bad faith. Rather, only the goods and services filed in bad faith would be cancelled and the remaining goods and services would be able to be retained.

 

Key points for trade mark holders

Contrary to earlier reports on the outcome of this case, trade mark registrations with broad specifications that include terms such as “computer software” will not need to be amended. As long as a specification has satisfied the examination requirements it is deemed acceptable.

Applicants should continue to file their applications for goods and services that they intend to use the mark on. If after 5 years they are not using the mark on particular goods and services then they should be prepared to delete those goods and services if the mark is challenged.

For now, this is good news for trade mark holders, but applicants considering filing for trade marks  with broad specifications should seek professional guidance to ensure that there actions would not amount to bad faith further down the line.

Contact Serjeants for advice

If you’d like further information on the outcome of the Sky v Skykick case, please call 0116 233 2626 to speak with one of our expert trade mark attorneys. Alternatively, send us an email here.