If you own trade marks in the EU, have a dispute or are looking to launch a brand in the EU, then the UK High Court decision in the Sky v SkyKick case is of massive importance to you.
It started in the UK courts with a suggestion that Sky had acted in bad faith by trying to protect its marks for too broad a list of goods and services. The Court of Justice of the European Union confirmed that this could be the case on the correct facts, and the case was referred back to the UK courts to determine whether it applied, and brand owners held their breath. The decision of the High Court of 29 April suggests a significant change in practice in EU trade mark law which will move it significantly closer to US trade mark practice and which will create a potential breaker to the barrier of broad EU trade marks.
The key goods of contention in the case were “computer software”, “internet portal services” and “computer services for accessing and retrieving information/data via a computer or computer network”. The judge had suggested in his earlier decision that “computer software” was too broad a term and confirmed his view in the most recent decision amending it to “computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service; computer software supplied as part of or in connection with any telecommunications apparatus or service; electronic calendar software; application software for accessing audio, visual and/or audio-visual content via mobile telephones and/or tablet computers; games software”.
What did the court say?
The Court highlighted a number of factors:
- A deliberate strategy of seeking very broad protection (this will be a problem for a very large number of big brand owners);
- No intention to use the mark for certain goods or services (this may cause issues where the list has been drafted to broaden the overall protection); and
- No foreseeable prospect of ever using for those goods and services.
The conclusion was that the trade mark was registered purely as a legal weapon for some goods and services, which was contrary to the functions of a trade mark and should therefore be classed as bad faith.
What this means
This is a significant break in practice in the EU, where broad protection has been commonly used and practitioners thought that registrations could not be attacked until 5 years after registration, when an application could be made to strike them off on the basis that they had not been used on particular goods or services (or at all).
For existing brand owners this puts at risk their infringement and brand protection plans, and it may mean that where a brand was proposed but ruled out because of an existing registration which covered items which the owner clearly was not offering, there may be a way through. There are further consequences for trade mark litigation and enforcement, and it seems likely that defendants will use the decision to cause chaos where there are allegations of infringement.
This is a new and emerging line of cases which will need particular care. Keystone offers a team which has the greatest level of experience in the UK Intellectual Property Office over the last five years combined, including in-house advocacy services. If you have any concerns or wish to discuss your portfolio, any proposed brands or any disputes (existing or contemplated), please get in touch with Aaron Wood or your usual Keystone contact.
This article is for general information purposes only and does not constitute legal or professional advice. It should not be used as a substitute for legal advice relating to your particular circumstances. Please note that the law may have changed since the date of this article.