AG's Opinion In SkyKick Maintains The Case's Chilling Effect On Enforcement Of Trade Mark Rights, Pending Clarity From The CJEU

The CJEU's Advocate-General ('AG') has delivered his Opinion that a registered trade mark cannot be declared invalid solely due to the terms used in the mark's specification lacking 'sufficient' clarity and precision. However, this statement came with the substantial caveat that a lack of clarity and precision in the specification could cause the application/registration to fall within the 'contrary to public policy' provision, which is a ground for refusal or invalidity of EU and national trade marks. The Opinion also considered 'intention to use' and concluded that applying for registration of a trade mark with no intention to use it in connection with specified goods or services, could constitute an element of bad faith (bad faith itself a ground for refusal of registration & invalidity). The AG's Opinion follows a reference to the CJEU in the case Sky v SkyKick from the High Court of Justice (England and Wales) ('the Court').

Background

Trade mark protection in the UK and the EU is granted on the basis of its relevant specification - the specific goods and services which the applicant has determined the mark should cover. However, there are gaps and inconsistencies in EU law relating to trade mark specifications. Case C-371/18 (Sky plc and others v SkyKick UK Limited and other) is a significant case as it is directly considering these uncertainties and requiring the courts to address them.

For the facts giving rise to the dispute in the main proceedings, please see our previous summary of the case in the Herbert Smith Freehills 'Trade Mark Update for 2018' here.

The AG's Opinion

The Court referred five questions to the CJEU for a preliminary ruling, which questions centred on the relationship between the specification of goods and services, and the validity of trade marks.

The key tenets in the AG's opinion, responding to the questions, were:

A lack of clarity and precision in the specification of goods/services: is not among the exhaustive grounds of invalidity laid down by EU legislation and is not therefore, in itself, a ground for invalidity (the specific grounds set out in Article 3 of Directive 89/104); but will have an impact on the scope of the mark's protection as it may be unjustified and contrary to public interest; specifically the registration of a trade mark for 'computer software' is unjustified and contrary to public interest as it 'lacks precision in the sense of covering goods that are too variable in their function...