Sky v Skykick trade mark dispute: EU Advocate General gives recommendation on “clarity and precision”

In the long running trade mark dispute between Sky and Skykick, The Court of Justice of the EU (CJEU) has been asked to rule on a series of questions referred from the High Court of England and Wales.

The case was originally brought by the television broadcaster Sky against Skykick, a start-up cloud migration company, in respect of its use of the mark SKYKICK amounting to infringement of their various SKY trade marks. In a counterclaim, Skykick sought a declaration that Sky’s trade marks were invalidly registered, on the basis that the specifications lacked clarity and precision and therefore the applications had been made in bad faith.

EU Advocate General (AG), Evgeni Tanchev has now provided commentary on the referral from the High Court concerning the notion of clarity and precision in trade mark specifications and whether a finding that a specification is lacking in the same can amount to a subsequent finding of bad faith.

In consideration of the concept of clarity and precision, the AG made reference to Article 51 of Regulation 40/94 which sets out the list of absolute grounds for invalidity of a trade mark. The AG opined that as the list of Article 51 was exhaustive and did not include express provision to the lack of clarity and precision of a specification, it did not follow that the lack of clarity and precision in a trade mark specification could be considered as an additional ground of invalidity. However, the AG did agree to the importance of clarity and precision in trade mark law but that such issues should be examined at a national level by the trade mark offices dealing with the application. It remains the case that trade mark proprietors can remedy any lack of clarity and precision within a specification before or after registration.

Nonetheless, the AG proceeded to make reference to a specification lacking clarity and precision being covered by the grounds of refusal or invalidity on the basis clarity and precision is a requirement under public policy. The AG gave a specific example by referring to the term “computer software” and how the same is too general, covering goods and services which are ” too variable to be compatible with the trade mark’s function as an indication of origin” and insufficiently clear and precise to determine the extent of protection conferred.

Another question further referred to the CJEU from the High Court sought clarification on whether a finding of a trade mark lacking clarity and precision would invalidate the entirety of the registration or simply the offending terms. The AG, in consideration of Article 13 of Directive 89/104 and Article 51(3) of Regulation No 40/94 determined that a finding of invalidity would only apply to the specific goods and services called into question rather than the entirety of the mark.

The AG’s commentary on whether Sky had applied for its trade marks in bad faith set out that if a party seeks to register a trade mark without the requisite intention to use it in respect of the specified goods and services this “may constitute an element of bad faith” however this would be a matter for the High Court to decide.

Whilst the opinion of the AG is not binding, such opinions are frequently adopted and therefore the impact on current trade mark law and practice could be far reaching. If the CJEU follow the AG’s opinion trade mark owners will need to carefully consider specifications filed and their intention to use goods and services applied for so as to avoid invalidity proceedings and allegations of bad faith being filed against them. If you would like any further information on the AGs opinion of Sky v Skykick, the impact of the opinion or have any queries concerning trade marks or intellectual property rights please contact Blake Morgan’s Intellectual Property team.