Can You Be More Specific?

It's been over a year since the High Court's decision in Sky plc v SkyKick UK Ltd [2018] EWHC 155 (Ch) where important questions on trade mark issues relating to bad faith (for filing with no intention to use) and clarity of specifications were referred to the CJEU. On 6 September 2018 the Court of Appeal refused to grant Sky permission to appeal the decision on the basis of procedural complexity, commenting that it would be far better to let the reference to the CJEU take its course and, if necessary, hear an appeal to the Court of Appeal when a final outcome is known.

We are still waiting for a date to be set for the matter to go before the CJEU and, in the meantime, trade mark owners are faced with a period of uncertainty. The CJEU's decision could have wide-ranging implications by invalidating or partially invalidating many existing registered trade marks.

Re-cap of the facts of the SkyKick case

Sky, the owner of various UK and EU trade mark registrations for 'SKY', brought a claim for trade mark infringement against SkyKick (a company providing cloud management software for IT solution providers) in relation to its use of various trade marks containing the word 'SkyKick'.

SkyKick denied the claim for trade mark infringement and counterclaimed for invalidity of Sky's registrations on the basis that certain goods, namely "computer software", were not defined with sufficient clarity or precision to allow third parties to determine the extent of the protection being claimed by the marks.

Furthermore, SkyKick argued that Sky had no genuine intention of using the 'SKY' trade marks on all the goods/services covered by the application at the time of filing (which included goods such as 'bleaching materials', 'insulation materials' and 'whips'), and that the trade mark registrations should therefore be declared invalid on the grounds that they had all been filed in bad faith.

The matter was heard in the High Court by Arnold J who, after considering the relevant case law and jurisprudence, concluded that questions needed to be referred to the CJEU for clarification on the law before a decision could be made.

So what has happened since?

The SkyKick decision has been mentioned in a number of cases, most notably by Arnold J in FIL Ltd v Fidelis Underwriting Ltd [2018] EWHC 1097 (Pat), where he considered that the specification "financial services" was too broad in its application and concluded that the trade marks in question may be invalid in so...