ECJ DECISION IN SKY v. SKYKICK FINDS THAT TRADEMARK REGISTRATIONS WILL NOT BE INVALIDATED FOR HAVING UNCLEAR AND IMPRECISE LISTS OF GOODS AND SERVICES AND ALSO CLARIFIES TESTS FOR BAD FAITH TRADEMARK FILINGS

The eagerly anticipated decision of the European Court of Justice in the case of Sky v. SkyKick [Case C 371/18] was delivered on January 29, 2020.

The Court’s decision came as a relief to trademark owners after the Advocate General’s opinion was followed in general but it was held that a trademark registration could not be invalidated because of an unclear and imprecise specification of goods and services (and in particular use of the term “computer software” is not objectionable.)  The Court did not support the Advocate General’s view that broadly worded registrations are contrary to public policy.  This means that there need be no change to current practice of using broad specifications on filing and that existing registrations with broad specifications will not be vulnerable to cancellation.

The decision is important for clarifying what is considered bad faith in the filing of a trademark.  The Court stated that the test to be applied is that a trademark application is filed in bad faith if it is with 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 trademark.”  It seems likely that this test will make a finding of bad faith on filing more difficult, even in cases where a very broad specification is used as that alone does not show bad faith.

On a separate question about the UK practice of requiring a statement in a National filing that there is a bona fide intention to use the mark for the goods and services applied for, the Court held that it is not inconsistent with EU law to have that provision in domestic law and, while it cannot be a ground for refusal of registration or cancellation in itself, it may be an indication of bad faith if the statement is made and there is no such intention.

The take-a-ways regarding this decision are:

• ECJ decision in Sky v. SkyKick finds that registrations will not be invalidated for having unclear and imprecise lists of goods and services. Owners of marks for “computer programs” breathe a sigh of relief;
• Bad faith in filing a trademark in the EU is clarified. A stringent test for proving bad faith is set out by the Court;
• UK requirement for applicants to confirm use or intention to use for all goods and services applied for in an application is lawful, but is not a ground for opposition or cancellation of the mark if untrue.

The full decision can be found at: http://curia.europa.eu/juris/document/document.jsf?text=&docid=222824&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=3382868