Can you be more specific?
It’s been over a year since the High Court’s decision in Sky plc v SkyKick UK Ltd [2018] EWHC 155 (Ch) where important questions on trade mark issues relating to bad faith (for filing with no intention to use) and clarity of specifications were referred to the CJEU. On 6 September 2018 the Court of Appeal refused to grant Sky permission to appeal the decision on the basis of procedural complexity, commenting that it would be far better to let the reference to the CJEU take its course and, if necessary, hear an appeal to the Court of Appeal when a final outcome is known.
We are still waiting for a date to be set for the matter to go before the CJEU and, in the meantime, trade mark owners are faced with a period of uncertainty. The CJEU’s decision could have wide-ranging implications by invalidating or partially invalidating many existing registered trade marks.
Re-cap of the facts of the SkyKick case
Sky, the owner of various UK and EU trade mark registrations for ‘SKY’, brought a claim for trade mark infringement against SkyKick (a company providing cloud management software for IT solution providers) in relation to its use of various trade marks containing the word ‘SkyKick’.
SkyKick denied the claim for trade mark infringement and counterclaimed for invalidity of Sky's registrations on the basis that certain goods, namely "computer software", were not defined with sufficient clarity or precision to allow third parties to determine the extent of the protection being claimed by the marks.
Furthermore, SkyKick argued that Sky had no genuine intention of using the ‘SKY’ trade marks on all the goods/services covered by the application at the time of filing (which included goods such as ‘bleaching materials’, ‘insulation materials’ and ‘whips’), and that the trade mark registrations should therefore be declared invalid on the grounds that they had all been filed in bad faith.
The matter was heard in the High Court by Arnold J who, after considering the relevant case law and jurisprudence, concluded that questions needed to be referred to the CJEU for clarification on the law before a decision could be made.
So what has happened since?
The SkyKick decision has been mentioned in a number of cases, most notably by Arnold J in FIL Ltd v Fidelis Underwriting Ltd [2018] EWHC 1097 (Pat), where he considered that the specification “financial services” was too broad in its application and concluded that the trade marks in question may be invalid in so far as they are registered under the broad heading "financial services".
On the issue of lack of intent to use, Arnold J stated that if the provisional conclusions he drew in SkyKick were correct, then the trade mark owners are unlikely to be found to have acted in bad faith by filing the broad specifications. However, he stated that in the current uncertain state of law, the case is an arguable one and that the trade marks may be invalid in their entirety for the reasons given in Skykick. The resolution of these issues will have to await the outcome of the reference to the CJEU.
What should trade mark applicants be doing to avoid claims for invalidity?
Whilst we await the answers to the questions posed, there are a few takeaway points from the High Court decision:
- Applicant’s should steer clear of seeking to register a trade mark across a broad range of specifications unless it is commercially justified in order to cover potential future use
- If a broad filing strategy is commercially justified, applicants should keep clear records setting out, explaining or justifying their filing strategy. In particular, they should include reasons for seeking such broad protection at the date of filing
- Specifications must be expressed in terms that are sufficiently clear and precise to enable the competent authorities to determine the extent of the protection claimed by the trade mark. It may be possible to define goods or services using a class heading but only if that heading itself is sufficiently clear and precise
- When registering a mark under class 9 “computer software”, applicants must take particular care to specify the purpose and field of use of the software. In SkyKick Arnold J referred to Mercury v Mercury [1995] FSR 850 in which it was stated it is undesirable for ‘a trader who is interested in one limited area of computer software [to], by registration, obtain a statutory monopoly of indefinite duration covering all types of software, including those which are far removed from his own area of interest’. In his judgment Arnold J commented that this is far more applicable now that computer software is ‘even more ubiquitous than it was in 1995’
Registered trade mark owners may wish to consider which of their existing marks could be affected by the issues discussed, though re-filing at this stage would not be advised due to the uncertainty of the outcome. Furthermore when (and if) the UK leave the EU, any decision of the CJEU would not be binding on UK trade marks, though it would be indicative. For now, we will await the CJEU’s findings with interest…
For more information please contact Sarah Musgrave on +44 (0)20 7203 5244 or at sarah.musgrave@crsblaw.com.
Our thinking
David Haines
New Arbitration Scheme for Commercial Arrears goes live
Everything you need to know about the new Arbitration Scheme for Commercial Arrears
Charlotte Healy
Charlotte Healy and Katie Bewick write for Pharmacy Business on expert determination
Charlotte Healy and Katie Bewick write for Pharmacy Business on expert determination
Pei Li Kew
Pei Li Kew writes for Pharmacy Business on the link between pharmacy and IP
Pei Li Kew writes for Pharmacy Business on the link between pharmacy and IP
Charlotte Duly
Charlotte Duly writes for CITMA Review on the China Tang trade mark infringement case
Charlotte Duly writes for CITMA Review on the China Tang trade mark infringement case
Mark Howard
Charles Russell Speechlys advises Acora on its acquisition of Secrutiny
Charles Russell Speechlys advises Acora on its acquisition of Secrutiny
Oliver Park
Building Safety Act 2022
Everything you need to know about the Building Safety Act 2022
Jonathan McDonald
Jonathan McDonald provides comment for City AM on the Data Reform Bill announced in the Queen's Speech
Jonathan McDonald provides comment for City AM on the Data Reform Bill announced in the Queen's Speech
Claire Fallows
CoStar quotes Claire Fallows on the new infrastructure levy announced in the Queen's Speech
CoStar quotes Claire Fallows on the new infrastructure levy announced in the Queen's Speech
Nick White
Charles Russell Speechlys advises Symphony Holdings Limited on the sale of its PONY trade mark portfolio for USD $28 million
Charles Russell Speechlys advises Symphony Holdings Limited on the sale of its PONY trade mark portfolio for USD $28 million.
Hope Wilson
Hope Wilson writes for the EG Legal Q&A on qualifying criteria
Hope Wilson writes for the EG Legal Q&A on qualifying criteria
Simon Ridpath
Simon Ridpath featured in the Lawyer’s Hot 100 list
Simon Ridpath features in The Lawyer’s Hot 100 list
Mark Howard
Charles Russell Speechlys advises Europa Oil & Gas (Holdings) plc on its £7m equity fundraising
Europa Oil and Gas is a renewable energy, oil and gas development and production company.
Emma Humphreys
Property Patter: what’s been happening in the world of Essential Residential?
We discuss recent cases of interest to those dealing with residential property.
Natalie Batra
Patents and Peppa Pig: What is happening to intellectual property rights in Russia?
Certain Russian individuals and businesses can now use patents, utility models and industrial designs without obtaining prior permission.
David Savage
David Savage writes for PBC Today on the end of rebated fuel
David Savage writes for PBC Today on the end of rebated fuel
Simon Green
International Bar Association quote Simon Green on the future of the legal sector in Hong Kong
International Bar Association quote Simon Green on the future of Hong Kong's legal sector
Charlotte Duly
Charlotte Duly quoted in Retail Gazette on House of Zana trademark dispute
Charlotte Duly quoted in Retail Gazette on House of Zana trademark dispute
Bart Peerless
The Lawyer reports on the Firm's promotion announcement
The Lawyer reports on the Firm's promotion announcement
Bart Peerless
Charles Russell Speechlys promotes six to Partner
Charles Russell Speechlys promotes six to Partner
Robert Blower
Robert Blower quoted in The Law Society Gazette Private Client feature
Robert Blower quoted in The Law Society Gazette Private Client feature