The General Court has upheld an opposition filed by telecommunications company Sky against the supermarket Aldi’s EU trade mark application for the mark SkyLite (stylised).

The SKYLITE application was filed back in 2013 and covered a range of goods in classes 9 and 18. Sky opposed this application, and the opposition was based on several earlier rights, including Sky’s EUTM for the word SKY, registered on 8 August 2012 for goods in classes 9 and 18.

Aldi was unsuccessful at both at the Opposition Division and at the Board of Appeal stages. Aldi appealed to the General Court. There were two pleas in law. Firstly, Aldi alleged that the EUIPO should have required Sky to produce proof of use if its earlier EUTM. The second plea of law disputed the Board of Appeal’s finding that there would be a likelihood of confusion.

The second plea of law was not entirely surprising and the General Court upheld the Board of Appeal’s decision in finding that there would be a likelihood of confusion. Far more interesting was the first plea of law, in which Aldi claimed that in the period between 1995 and 2009, Sky developed a practice of re-filing successive identical trade mark registrations for registration of the word ‘Sky’ as an EU mark or a national mark, in particular for goods within classes 9 and 18. Aldi alleged that these “fresh applications” clearly had the one sole purpose of artificially extending the initial grace period for non-use, which meant it did not have to prove use in an opposition proceeding.

The General Court held that an Opponent cannot be required to furnish proof of use if, at the date of publication of the application for registration, the earlier mark had not been registered for more than five years. In this case, the General Court held that the Board of Appeal was entitled to find that Aldi’s request for proof of use was not admissible. Importantly, the General Court held that this conclusion is not called into question by Aldi’s argument that Sky had adopted a practice of re-filing which in essence raised the question of whether or not the earlier mark in question had been filed in bad faith. The General Court stated that a bad faith filing is to be challenged by filing an application for a declaration of invalidity on absolute grounds. By contrast with the invalidity procedure, the aim of the opposition procedure is to give proprietors the possibility of contesting an application on the basis of earlier rights which conflict with it.

The question raised by this case is whether or not the relatively common practice of “artificially prolonging” the five year non-use period (and thereby avoiding the requirement to furnish proof of use in an opposition proceeding) could be challenged later in invalidity proceedings. To date, this author is unaware of any bad faith invalidity claims based on such facts so it remains to be seen how this will be decided. For now, it is unclear whether or not the Sky has a limit.