The CJEU has today answered the questions referred by the High Court of Justice England and Wales in the Sky v Skykick case (C-371/18), which were:

1. Can an EU trade mark or a national trade mark registered in a Member State 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?

2. If so, is a term such as ‘computer software’ too general and [does it cover] goods which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark?

3. Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services?

4. If so, does the bad faith infect the whole mark rendering it invalid?

5. Is section 32(3) of the UK Trade Marks Act 1994 is compatible with the EU Trade Mark Directive and its predecessors?

In a nutshell, the CJEU’s answers are:

  • An EU trade mark or a national trade mark cannot be declared wholly or partially invalid on the basis that terms in the specification lack clarity and precision
  • A trade mark application made without any intention to use the trade mark constitutes bad faith, if the applicant 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 in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services.
  • The EU Trade Mark Directive 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, 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.

The referred questions relate to some important aspects of EU trade mark law and the functioning of the trade mark specification. It has prompted much discussion about the circumstances in which trade mark proprietors in the EU can expect to obtain and rely on broad specifications in registrations. A closer look at the CJEU decision will follow.