EU Court Of Justice Delivers Highly Anticipated Sky v. SkyKick Trademark Decision

The Court of Justice of the European Union (CJEU) last week handed down its decision in the Sky v. SkyKick case (Case C-371/18), widely regarded as one of the most important European trademark decisions of recent years.

Background

In the US, trademark owners are only permitted to register trademarks for the goods or services provided by the trademark owner. European trademark practice permits trademark owners to seek trademark protection far more broadly. The European practice can prove controversial when trademark owners seek trademark protection for goods and services that are far removed from their own area of business merely to prevent others, even in unrelated business areas, from using a similar trademark (these marks are often referred to as "defensive").

The decision in SkyKick considered issues relating to applications covering goods and services that the trademark owner does not intend to offer. The decision also considered the appropriateness of seeking trademark protection for broad terms such as "computer software" that could cover a wide range of related goods.

Questions referred and the CJEU's judgment

The CJEU considered five questions referred to it by the High Court of England and Wales concerning the validity of European trademarks that covered goods and services that include both imprecise terms and goods and services which the trademark owner had no intention of offering.

The CJEU was asked to rule on whether a European Union Trademark (EUTM) or national trademark registered in an EU member state could be declared wholly or partially invalid on the grounds that some or all of the terms in the trademark specification lacked sufficient clarity and precision. The CJEU answered in the negative: The inclusion of imprecise terms in the list of goods/services did not mean that the EUTM was invalid.

If an EUTM is filed in bad faith, it will be invalid. With this in mind, the CJEU was also asked to rule whether it can constitute "bad faith" to apply to register a trademark without any intention to use that mark in relation to the goods and services covered by the trademark application. If so, is it possible to conclude that an application was made partly in good faith and partly in bad faith if the applicant was found to have intention to use the mark in relation to some - but not all - of the goods and services applied for?

The CJEU concluded that a trademark application made without any intention to use the mark in relation to...