It is common practice on both the Polish and EU markets to register trademarks for a very broad range of goods and services. Traders often decide to register a mark before they make a decision on its use in business. Could a lack of clarity and precision in the specification of goods and services be grounds to invalidate a trademark? This issue was addressed in the CJEU’s recent judgment in the case of Sky and Others (C-371/18).

The ruling was issued following a requ

est for a preliminary ruling from the Chancery Division of the High Court of Justice. In the national case, a satellite and digital television broadcaster in the Sky group filed suit against a start-up company, SkyKick Inc., claiming that it was in breach of one UK and four EU trademarks held by Sky.

Overly broad?

SkyKick Inc.’s main area of business are IT services, specifically providing cloud migration services. Although companies in the Sky group have never provided services of this kind, ‘computer software’ is listed among the services for which the disputed trademarks are registered. The defendants filed a counterclaim seeking the invalidation of Sky’s trademarks, arguing that they were registered for goods and services that are not described in a sufficiently clear and precise manner.

The court requesting the preliminary ruling found that the registration of a mark for ‘computer software’ was too vague and thus is not in the public interest, because it gives the holder too broad of a monopoly, for which there is no commercial justification. Moreover, the national court had doubts about the meaning of good faith as examined at the time of the mark’s registered, i.e. whether the registration of a mark with no intention of using it as a trademark for specific goods or services might be grounds for contesting its registration.

Under Directive 89/104 and Regulation 40/94, which ratione temporis were applicable in the case in question, the CJEU found that the insufficiently clear and precise listing of goods and services for which a mark is granted does not constitute grounds for the invalidation of a trademark. Neither of these legislative acts provide for insufficient clarity or precision in the descriptions used to identify goods and services to serve as grounds for a mark’s invalidation. This rule certainly applies equally to marks which were registered according to currently applicable law. Regulation 2017/1001 plainly states that “[t]he Office shall reject an application in respect of indications or terms which are unclear or imprecise, where the applicant does not suggest an acceptable wording within a period set by the Office to that effect“.

A long list of goods and services does not always mean the right list

The CJEU found that applying to have a mark registered with no intention of genuinely using it in trade can in fact be classified as a case of bad faith, and as conduct in breach of public policy. At the same time, it must be evident that the applicant intended to breach third-party interests, for example by limiting the extent to which its competitors would be able to use the markings in question as trademarks.

Therefore, it continues to be true that an overly broad list of goods and services, for which a mark is not genuinely used in trade, constitutes grounds for the cancellation of that mark. However, in such a case, an application for the cancellation of a mark may only relate to the goods and services for which the mark is found to not be genuinely used, and cannot apply to its overall protection.

When the above is considered in relation to the judgment in the Chartered Institute of Patent Attorneys case (C-307/10), cited by SkyKick, the guidelines which the CJEU established in that ruling only apply to marks registered after the 2012 judgment. This means that the judgment in the Chartered Institute of Patent Attorneys case (C-307/10) cannot under any circumstances be interpreted as an attempt by the CJEU to specify additional grounds for the invalidation of trademarks. Recall that, at that time, the CJEU stated that if an applicant seeking the registration of a trademark uses all of the general class headings in the Nice Classification to specify the goods or services for which it is seeking protection, it must specifically state whether the application relates to all or only some of the goods and services in the alphabetical list of the class in question. If only some items on the alphabetical list are to be registered, the applicant is required to specify them. If it fails to do this, the registration must be considered insufficiently clear and precise.

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Reference material:

  1. CJEU judgment of 29 January 2020 in case C‑371/18 (Sky plc and Others)
  2. CJEU judgment of 19 June 2012 in case C-307/10 (Chartered Institute of Patent Attorneys)
  3. Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark
  4. First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks
  5. Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark