SkyKick Ruling

Specification of trade marks must be consistent with the essential function of indicating origin of the goods and services or risk being partially invalid for bad faith

Case C-371/18 - Sky plc & ors v SkyKick UK Ltd & anor, 29 January 2019

Two days before the UK's departure from the EU, the CJEU handed down its eagerly anticipated Judgment in SkyKick finding that a trade mark application made without any intention to use the trade mark in relation to the goods and services in the specification does constitute bad faith. This was the case if the applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. However, this aspect of bad faith does not invalidate the entire trade mark (i.e., the "poisoned well") but only the goods and services shown to have been applied for in bad faith. The CJEU also indicated that it was permissible for national law to contain procedural requirements for an applicant to make a statement that he or she has bona fide intention to use a trade mark. Such statements might be utilised as evidence in claims of bad faith but did not constitute a separate ground of invalidity.

The CJEU also held that a lack of clarity and precision of terms used to designate the goods or services (e.g., "computer software") was not grounds for invalidity. Furthermore, a trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision.

Background

The case was referred by the UK High Court in an action where Sky plc (the broadcaster) claimed that SkyKick (at the time, a start-up company that supplied cloud migration information technology services) had infringed four EU trade marks and one UK trade mark consisting of the word SKY through use of the sign 'SkyKick' and variants thereof. SkyKick denied infringement and counterclaimed for a declaration that the trade marks were invalidly registered, in whole or in part, on the grounds that: (i) the specifications of goods and services lacked clarity and...