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.