CJEU Decision In SkyKick Offers Relief To Trade Mark Owners

The CJEU has today handed down a crucial decision as it seeks to provide clarification on important questions about the extent of the monopoly businesses can obtain legitimately through the registration of a trade mark.

The CJEU held that a registered trade mark cannot be declared wholly or partly invalid as a result of a lack of clarity and precision of the terms used to designate the goods and services covered by that registration. Further, whilst invalidity on the ground of bad faith may be triggered where an applicant registers a mark without any intention to use it in relation to specified goods and services, bad faith will only be established in exceptional circumstances. This outcome is very helpful to existing trade mark proprietors and favours the existing status quo of the trade mark system.

Background

Trade mark protection in the UK and the EU is granted in respect of the specific goods and services which the applicant has determined the mark should cover. However, there are ambiguities in the EU law relating to the relationship between trade mark specifications and the validity of trade marks. Following a reference from the High Court of Justice (England and Wales) (the 'High Court') to the CJEU in the case Sky v SkyKick, Case C-371/18 (Sky plc and others v SkyKick UK Limited and other) the CJEU has given judgment.

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. We previously reported on the Opinion of the Advocate-General ('AG') in this case here.

The Decision

The reference to the CJEU focussed on the relationship between the specification of goods and services and the validity of trade marks.

Lack of clarity and precision as a ground of invalidity

The CJEU set out that the grounds of invalidity laid down by EU legislation are exhaustive and therefore rejected the idea that a trade mark could be attacked as a separate ground of invalidity on the basis that the specification of the goods or services lacked clarity or precision, or because such lack of clarity and precision was contrary to public policy. The only way to attack a registered mark is on the basis of revocation for non-use, after the event, if the particular goods or services were not in use after five years.

This decision favours the existing status quo of the trade mark system, where big brands often file extensively and widely, taking...