Broad EU trade mark specifications get a kick in European Court

The Advocate-General (AG), who advises Europe's top court, the Court of Justice of the European Union (CJEU) last week delivered a potentially significant opinion to the Court in litigation referred to the CJEU from the High Court in London between media group Sky and cloud computing provider SkyKick.

Trade Marks (both UK and EU marks) are registered against a "specification" within a class of goods and services.

SkyKick were trying to argue that certain of Sky's registrations with a specification for "computer software" should be found to be invalid on the grounds of being "imprecise" and "registered in bad faith."

Although AG Tanchev did not agree that a lack of clarity was, by itself, grounds for invalidating an EU trade mark registration, he said that these are factors that should be considered carefully at the registration stage and give a bruising opinion against the use of such widely drawn registrations saying that the registration by Sky of marks for "computer software" created a "monopoly of immense breadth which cannot be justified by any legitimate commercial interest." He noted and appeared to agree with SkyKick's submission that in the age of the "Internet of Things" and "Smart" devices, a vast, and ever increasing, array of ordinary household items include some element of "computer software."

He added that a registration in such broad terms was, in this case, "unjustified and contrary to the public interest."

Whilst the AG made clear that it was for the national court to decide whether an application which included goods and services for which the applicant had no real intention to use the mark met the test for "bad faith" it seems likely that SkyKick's confidence in their ongoing battle with Sky will have been boosted by this opinion being given to the CJEU.

Of course, the implications of a CJEU ruling which follows the AG's reasoning could well go beyond "computer software" registrations and are likely to bite on other marks with very wide specifications for e.g. "clothing" (where the proprietor in fact deals only in, for example, men's shirts or swimwear). The AG himself made reference to registrations for "financial services" and "telecommunications services."

Commentators are already suggesting that new applications for EU Trade Marks should now be as precisely drawn as possible, whilst for smaller businesses operating in fields where "Goliath" companies currently wield these broadly-drawn European registrations to keep competitors out of the market, a ruling on this basis may well give some cause for hope, and a realistic possibility of being able to restrict the monopolies that are exerted by big brands.

As a topical footnote, it is worth considering that most predictions for post-Brexit scenarios involving a transitional deal envisage the CJEU completing any "live" referrals before it from the English Courts. However, in the event of a "no-deal" exit, the Court may simply "down tools" on referrals from the UK, though the ruling will still be relevant to those operating in territories where EU Trade Marks still apply.

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