(Rainy) Sky v. SkyKick : the CJEU opened its umbrella
12/02/2020

On 29 January 2020, the CJEU handed its much anticipated decision in the referral from the English High Court in the ‘Sky v. SkyKick’ case. And every cloud has a silver lining (or almost).

According to the CJEU:

  • trade mark cannot be invalidated on the ground that its goods and services specifications are insufficiently clear and precise ; 
  • filing for a trade mark without any intention to use it in relation to the goods and services covered by the registration may constitute bad faith ;
  • ‘intent to use’ requirement under UK law is not inconsistent with EU law as far as it does not constitute an invalidity ground.

Background of the Sky vs SkyKick case

Sky (the well-known media and broadcasting company) is the owner of various trademarks which include the word “Sky”. Those marks have been registered for a large number of goods and services in a number of classes of the Nice Classification.

Sky sued SkyKick for trade mark infringement for use the word “SkyKick” in connection with Software as a Service (SaaS) and Cloud services. SkyKick contested the infringement claim and counterclaimed for a declaration of invalidity of Sky’s trade marks. SkyKick contended that certain products (such as ‘computer software’) were not defined with sufficient clarity or precision. In that regard, SkyKick rely on the judgment in the ‘IP Translator‘ case. As a reminder, that decision states that the goods and services claimed in a trade mark application must be identified with sufficient clarity and precision to determine the scope of the protection applied for. Finally, SkyKick stated that Sky did not genuinely intend to use the ‘Sky’ marks on all the goods and services covered and that the marks had been registered in bad faith.

The referring court raised several questions to the CJEU, summarised as follows:

  • Can a registered trade mark be declared wholly or partially invalid on the ground that its goods or services description is insufficiently clear and precise ?
  • If so, is a general term such as ‘computer software’ too broad ?
  • Does it constitute bad faith to register a trade mark without any intention to use it for the specified goods or services ?
  • If so, is the registration wholly or partially invalid ?
  • Is UK law providing for an obligation for the trade mark applicants to declare its “intention to use” it compatible with EU law ?

 

Key points of Sky vs SkyKick case

The main key takeaways of this judgment are as follows :

Broad specifications

The CJEU agreed with the AG that the lack of clarity and precision of the terms used to designate the goods or services covered by the registration of a trade mark cannot be a ground for invalidity. The requirements introduced by the ‘IP Translator’ case therefore only concern new registrations of EU trade marks.

Since the CJEU ruled negatively on the first question, it unfortunately did not comment on whether a term such as ‘computer software’ was too broad.

Bad faith

The CJEU held that the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered may constitute bad faith if there is objective, relevant and consistent indicia that the trade mark was filed by the applicant with the intention of :

  • undermining the interests of third parties ; or
  • obtaining an exclusive right for purposes other than those falling within the functions of a trade mark.

Logically, the court ruled that where bad faith is established for certain goods and services only, the invalidity shall only concern those goods and services.

Still according to the CJEU, a national provision may require the applicant for registration of a national trade mark to declare its bona fide intention to use it for the goods and services for which registration is sought. UK legislation is therefore not incompatible with EU law. However, such a declaration obligation can only be a mere procedural requirement relating to the registration of the mark. The infringement of such an obligation cannot therefore constitute, in itself, a ground for invalidity of the trade mark concerned.

Voir aussi : Lexing ( Mr. Thomas Espeel )


Click here to see the ad(s)
Tous les articles Droit de la propriété intellectuelle

Derniers articles Droit de la propriété intellectuelle

COVID-19 – IP Offices take measures to face the pandemic
26/03/2020

Update 27 March 2020  |  The COVID-19 pandemic is progressing worldwide. In an effort to control its e...

 COVID-19 – IP Offices take measures to face the pandemic Read more

Copyright in the Digital Single Market. Analysis and Implementation of the New Directive. Introdu...
19/03/2020

To ensure the proper functioning of the copyright market, a third pillar dealing with fair renumeration in exploitation co...

Read more

Copyright in the Digital Single Market. Analysis and Implementation of the New Directive. Introdu...
16/03/2020

The European legislator has been forced to note the inadequacy of existing exceptions to the digital age in which we live:...

Read more

Copyright in the Digital Single Market. Analysis and Implementation of the New Directive. Introdu...
09/03/2020

Following the referendum of 23 June 2016 on the membership of the United Kingdom (« UK ») to the European Unio...

Read more

Derniers articles de Mr. Thomas Espeel

InfoSoc Directive : no digital exhaustion according to the ECJ
30/01/2020

For the ECJ, the sale of second-hand e-books through a website constitutes a communication to the public that requires the...

Read more

RGPD et finalité du traitement : l’APD serre la vis !
19/12/2019

Consacré dès 1981 (Convention 108), le principe de finalité est un principe angulaire de la protectio...

Read more

NIS Law: the new incident notification procedure
22/08/2019

The law of 7 April 2019 (the ‘NIS law’) states that the Operators of Essential Services (OES) and th...

Read more

Gmail : not a telecom operator under EU law
29/07/2019

According to the European Court of Justice (ECJ), Article 2(c) of Directive 2002/21/EC on a common regulato...

Read more

LexGO Network