Bad Faith In Trademark Law: Sky Plc v SkyKick

Today Europe's highest court, the Court of Justice of the European Union (CJEU), has handed down its much-anticipated judgment in one of the most important referrals in EU trademark law over the last few years. The CJEU has largely mirrored the Advocate General's (AG) opinion in respect of deciding the five questions referred by the English Courts. These questions concerned the role and function of trademark specifications and bad faith filing practices.

The dispute between UK TV and telecoms company Sky and cloud management business SkyKick relates to Sky's claim that SkyKick has infringed four of its EU trademarks and one UK trademark comprising the word SKY through their use of SkyKick. There was also a claim for passing off. Mr Justice Arnold (as he then was) concluded in his February 2018 judgment that SkyKick's counterclaim challenging the validity of the marks could not be decided without guidance from the CJEU. SkyKick's validity attack was two-fold: (1) Sky's trademark specifications lacked the requisite clarity and precision; and (2) Sky's applications had been made in bad faith.

In response to the five questions referred to the CJEU, the Court has ruled as follows:

Questions 1 & 2: Is a lack of clarity and precision as to the terms of a trademark specification a ground of invalidity? Specifically, is the term "Computer Software" sufficiently clear and precise?

The CJEU held that an EU or national trademark cannot be declared wholly or partially invalid on the grounds that terms used to designate the goods and services lack clarity and precision.

In line with the AG, the CJEU noted that whilst this is a ground for refusal during the registration process, the legislation provides an exhaustive list of grounds for invalidity which does not include the lack of clarity and precision of terms. The CJEU noted that SkyKick's assertion that such unclear and imprecise specifications were contrary to the absolute ground requiring graphic representability did not apply to considerations of scope of the specifications.The CJEU departed from the AG's view that such specifications could be considered invalid on the grounds of being contrary to public policy or public order. In this respect the CJEU determined that the concept of 'public policy' did not relate to characteristics of the trademark application itself.

Questions 3 & 4: Bad faith - can it constitute bad faith to apply to register a trademark without any intention to use it in...