Advocate-General Tanchev has issued his Opinion dealing with the questions raised by the English High Court in Sky v SkyKick. The next stage will be for the Court of Justice (CJEU) to deliver its judgment. We will report substantively on the CJEU's decision when it is delivered, as the CJEU's conclusions will have potentially significant consequences for the EU trade mark system and, in particular, for the scope of protection provided by a trade mark specification.
The Advocate-General's Opinion, which is not binding on the CJEU (and which may therefore not follow the Opinion, in whole or in part), suggests answering the questions referred by the English Court as follows.
Can a trade mark be declared wholly or partially invalid on the grounds that it was registered for goods and services that are not specified with sufficient clarity and precision…?
A registered EU or national trade mark cannot be declared wholly or partially invalid on the sole ground that some or all of the terms in the specification of goods and services lack sufficient clarity and precision. A lack of clarity and precision in the specification of goods and services may nevertheless be taken into account when assessing the scope of protection to be given to such a registration.
If the answer to question 1 is 'yes', 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…?
The requirement of clarity and precision may be covered by the ground for refusal or invalidity of trade marks which are contrary to public policy (Article 3(1)(f) of the Trade Marks Directive and Article 7(1)(f) of the EU Trade Mark Regulation), in so far as registration of a trade mark for 'computer software' is unjustified and contrary to the public interest. A term such as 'computer software' is too general and covers goods and services 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 mark.
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?
In certain circumstances, applying for registration of a trade mark without any intention to use it in connection with the specified goods or services may constitute an element of bad faith, in particular where the applicant's sole objective is to prevent a third party from entering the market, including where there is evidence of an abusive filing strategy (this is for the referring court to determine).
If the answer to Question 3 is that it is bad faith, does this apply only to the specific goods and services for which there is no intention to use?
Where the ground for invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark will be declared invalid as regards those goods or services only (pursuant to Article 13 of the Trade Marks Directive and Article 51(3) of the EU Trade Mark Regulation).
Is section 32(3) Trade Marks Act 1994 compatible with the EU trade mark regime?
Section 32(3) of the Trade Marks Act 1994 (which requires an applicant to make a statement that it intends to use the mark) is compatible with the Trade Marks Directive, provided it is not the sole basis for a finding of bad faith
Mishcon de Reya LLP act for Sky in these proceedings.