By way of background, all applicants for registration of a trade mark are required to specify in their application the goods and services in respect of which they seek to register their mark. The wider the range of goods/services specified, the larger the number of later businesses that may be prevented from using a mark by the applicant. Accordingly, the wider the specification, the wider the scope of infringement rights.
UK law has long included an explicit requirement that an applicant have an “intention to use” its trade mark on the goods/services specified. This seeks to ensure that, on the one hand, applicants are able to protect their mark in respect of goods/services connected with their business, but, on the other, also to ensure that later businesses do not face illegitimate obstacles in selecting and clearing their own trade marks for use. Where there is not such an “intention to use” requirement, the risk is that the trade mark registers become cluttered – increasing searching costs for later entrants.
EU trade marks have never been subject to an explicit requirement that the applicant have an “intention to use” its trade mark, though there have been some cases where the EU General Court has come close to suggesting that there must be some commercial rationale for the specification. Nevertheless, as things stand, the specification of a typical EU trade mark is usually considerably longer (covering a wider range of goods/services) than the equivalent in the UK or United States.
This issue has come to the fore in a case between the well-known TV broadcaster and broadband provider, Sky Plc, and an IT support specialist called SKYKICK. (Skykick assists businesses with, for example, migration of its e-mail accounts to the cloud-based Microsoft Office 365 system.)
Sky Plc’s registrations for its SKY trade mark cover broad terms such as “computer software” and “telecommunications services” and, in some cases, they cover thousands of terms, many of which (e.g. “luggage”) are not closely related to its existing business. Given the broad scope of the SKY registrations, the UK court held that the use of the SKYKICK trade mark had (in principle) infringed the SKY registrations. Skykick had nevertheless also challenged the SKY registrations on the basis that:
- terms such as “computer software”, “electronic mail services” and “telecommunications services” in the specification of the SKY registrations are not sufficiently precise and specific – with the result that the SKY registrations are invalid for these goods and services; and
- in the alternative, that SKY could not have had an “intention to use” its marks for all the goods specified, with the result that the SKY registrations were invalid as a whole as being filed in bad faith, or invalid in respect of those goods where Sky Plc had had no intention to use.
If Skykick were successful in its validity challenges, Sky’s infringement case would fall away or be very much weakened.
The UK court made findings of fact that there were at least some goods within the SKY registrations where Sky Plc had not had an intention to use at the time of filing of its marks. And it also held that terms such as “computer software” were not, in its view, sufficiently precise and specific. Nevertheless, it held that it required a determination from the Court of Justice of the European Union (CJEU) as to whether, as a matter of law, it could declare part of a registration invalid (where the terms used were not sufficiently precise) and separately whether it could declare invalid a registration (either as a whole or in part) for bad faith where the proprietor had not had an intention to use its mark in respect of the goods/services specified.
Given that the EUIPO has accepted EU trade marks including terms such as “computer software” for the past twenty years without objection, a finding from the CJEU that terms such as those are no longer acceptable would cause a very dramatic shift in the language used in specifications. And again if the CJEU were to hold that an applicant for an EU trade mark (or any national trade mark in the EU) was required to have an intention to use its mark in respect of the goods/services specified (or risk a bad faith finding), that again would have a radical effect on the way current trade mark applications in Europe are prepared and filed.
On the face of it, it is ironic that it is the UK court that is seeking approval from the CJEU to rein in the scope of trade mark registrations (given that the UK was recently assessed, in the US Chamber of Commerce’s Annual IP Index, as the number one jurisdiction in the world for trade mark protection). The better view may be, however, that the UK court is seeking to create a better balance between trade mark interests and, in particular, is seeking to address the problem of the cluttering of trade mark registers which was not addressed (or even recognised) by the EU Commission in its last round of trade mark law reforms.