On January 29, 2020, the CJEU’s anticipated ruling in the Sky vs. SkyKick case (C 371/18) was published. The case between the media-broadcasting company Sky and the software company SkyKick has attracted considerable attention in the intellectual property world. The reason for this is that the case among other things addresses the question whether a trademark registration can be declared invalid wholly or partially on the ground that terms used in the registration’s list of goods and services lacks clarity and precision, i.e. terms which are too general.

In 2016, Sky filed a lawsuit in the UK against SkyKick for infringement of Sky’s trademarks, in relation to inter alia “computer software” in class 9. SkyKick on the other hand contested that Sky’s trademarks should be partially invalidated based on the ground that they were inter alia registered for the goods “computer software “, which lacked required clarity and precision. Furthermore, SkyKick argued Sky registered its trademarks in bad faith, as Sky did not have the intention to use its trademarks for all goods and services for which the trademarks were sought. The national court questioned whether a trademark could be declared wholly or partly invalid on any of those grounds and turned to the European Court of Justice for clarification.

The CJEU did not answer the question whether “computer software” is a too unclear and imprecise designation of goods according to Union law, since such circumstance, according to the Court, has no bearing as an invalidity ground for a trademark within the EU. Thus, for a registration to be declared invalid, an explicit basis in relevant EU law regulation is required, which currently does not exist with regards to terms used to designate goods and services which lack sufficient clarity.

After this elucidation, the CJEU proceeded with stating that a trademark application covering goods and services which the applicant has not had an actual intention to use the trademark for, may be considered to constitute the invalidation ground “bad faith”. However, there must be an “objective, relevant and consistent indicia“ showing the applicant, at the time of the trademark application was filed, “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”. The evidentiary requirement for bad faith must, considering this ruling, be regarded as high since the CJEU seeks a positive, objective indication that the applicant did not plan to use the mark for all or parts of its sought goods and services.

The CJEU judgement might appear to be a relief for many trademark owners that hold registrations with imprecise and unclear lists of goods and services, at least for the moment. Nevertheless, the decision sparks reasons for future trademark applicants to contemplate further on how wide terms they should use in their lists of goods and services, as invalidation due to lack of actual intention to use the mark as sought now appears to be a real risk as it opens up a possibility for the Courts to potentially act upon.

Contact Cecilia Arestad with your questions.