BREAKING: CJEU in Sky v SkyKick rules that a trade mark cannot be declared wholly or partially invalid on grounds of lack of clarity and precision of its specifications

It just a few months ago that this blog reported on the Opinion of Advocate General Tanchev in the important Sky v SkyKick, C-371/18 case.

A referral from the High Court of Justice of England and Wales made by Arnold J (as he then was), the Sky case is probably the most important referral in the EU trade mark field made over the past few years. It asked the Court of Justice of the European Union (CJEU) to clarify:

• Whether an EU or national trade mark may be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark;
• In case that answer to the question above is in the affirmative, whether a term like 'computer software' is too general to be considered 'sufficiently clear and precise';
• Whether it is bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services;
• If so, whether it is possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services;
• Whether section 32(3) of the UK Trade Marks Act 1994 is compatible with the EU Trade Mark Directive and its predecessors.

This morning, the CJEU handed down its judgment, ruling as follows:

• A EU or national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision;
• A trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, if the applicant for registration of that mark had 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 trade mark. 
• When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services; 
• EU law does not preclude a provision of national law under which an applicant for registration of a trade mark must state that the trade mark is being used in relation to the goods and services in relation to which it is sought to register the trade mark, or that he or she has a bona fide intention that it should be so used, in so far as the infringement of such an obligation does not constitute, in itself, a ground for invalidity of a trade mark already registered.

A more detailed analysis will follow shortly.

[Originally published on The IPKat on 29 January 2020]