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Sky v. SkyKick – EU Court of Justice clarifies grounds for invalidity of EU and national trade marks

Important decison for EU trade mark law

29 January 2020

In Sky v. SkyKick Case C-371/18, the English Court had asked questions about whether lack of clarity in the specification of goods and services was of itself a ground for invalidity of a registered trade mark? The Court of Justice has now held that it is not.

The Court also found that a lack of intent to use a trade mark for goods or services applied for only constitutes bad faith if the application was made with the intention of undermining the interests of third parties, or with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark.

The decision

The High Court of England & Wales referred several questions to the Court of Justice in a trade mark infringement dispute brought by several companies in the Sky plc group (Sky) against SkyKick UK Ltd and SkyKick Inc. (SkyKick).  The questions concerned

  • whether a lack of clarity and precision in a trade mark specification could be a ground for invalidating that trade mark, and 
  • whether filing without the intent to use a trade mark for some or all of the specified goods or services amounted to bad faith and was therefore a ground for invalidity.
Clarity of the specification

The Court of Justice held that the grounds for invalidity both for EU trade marks and for national trade marks in member states are exhaustively provided in the applicable Regulation and Directive, and do not include lack of clarity.

SkyKick had argued that clarity and precision of the specification should be read into the general requirement that a trade mark be clearly and precisely represented on a trade mark register. The Court found this requirement related only to the representation of the trade mark and did not extend to the specification.  Lack of clarity of the specification is also not a ground for invalidity as falling within the ground of being contrary to public policy.

Bad faith

The referring court had also asked whether filing without intent to use the mark for some or all of the specified goods or services amounted to bad faith and was therefore a ground for invalidity, at least to the extent of the relevant goods and services for which the applicant had no intent to use.

The Court of Justice acknowledged that at time of filing an applicant may not know precisely for what it will use the mark.  Under EU trade mark law it has five years in which to put its mark to genuine use before the mark becomes vulnerable to revocation to the extent it has not been in genuine use.

Against this background, the Court of Justice has held that lack of intent to use at time of filing is not of itself bad faith.  It affirmed that the EU rules on trade marks are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin.  The EU concept of bad faith therefore applies  where "it is apparent from relevant and consistent indicia that the proprietor of a trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention 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, in particular the essential function of indicating origin".

This goes well beyond a simple lack of specific intent to use at time of filing.

UK practice

Under current UK practice, an applicant for a UK national trade mark must state that the mark is in use or that it has intent to use it.  The Court of Justice held that the practice of requiring this statement is not incompatible with harmonised EU law, even though it is not required by it.  The Court held, however, that the fact an applicant made such a statement without having intent to use for specified goods or services could be evidence of bad faith but does not constitute, in itself, a ground for invalidity.  The Court has clarified that bad faith requires the further elements identified above.

This case is not the first time the English Court has asked the Court of Justice about the requirement for clarity in specifications of goods and services. In Chartered Institute of Patent Attorneys Case C-397/10, the Court of Justice had held in that case that the goods and services for which the protection of the trade mark is sought must be identified with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.  This does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that the identification is sufficiently clear and precise.  Where an applicant for a national trade mark uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought, it should specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant should specify which of the goods or services in that class are intended to be covered.