Has Sky been given a kick by the Court of Justice?

29/01/20

The Court of Justice handed down judgment earlier today in Case C-371/18 Sky v Skykick which has been widely described as one of the most important IP references to the Court of Justice in recent years.

Sky is the owner of various EU trade marks including the word SKY and commenced infringement proceedings against Skykick which provides IT cloud management and email migration services. Sky’s trade marks include registrations in respect of “computer software” among other things.

Skykick alleged that the Sky trade marks in issue were invalid on the basis that certain of the goods for which they were registered lacked clarity and precision and that they were registered in bad faith because Sky did not intend to use them in relation to all of the goods and services covered by their registrations.

The case was heard by Arnold J (as he then was) who referred as series of questions to the Court of Justice asking whether a lack of clarity and precision can amount to a ground of invalidity, and in relation to whether bad faith might apply in these circumstances. The case was of importance because similar considerations might also apply to a large number of other EU and national trade mark registrations. Arnold J also asked the court whether the requirement in the UK Trade Marks Act 1994 that an applicant must state that he or she has a bona fide intention to use the mark in relation to the goods and services in the application is compatible with the directive.

In their ruling Judges Vilaras, Rodin, Šváby, Jürimäe, and Piçarra held that a trade mark cannot be declared wholly or partially invalid on the ground that the terms used to designate the goods and services lack clarity and precision. They also held that a trade mark registration may be filed in bad faith in certain circumstances where an applicant has the intention of undermining the interests of third parties or seeks an exclusive right for purposes other than those falling within the functions of a trade mark. The Court confirmed that the directive does not preclude national law requiring a statement of bona fide intention such as that in the Trade Marks Act 1994.

The Advocate General’s opinion and the Court’s ruling adopted the United Kingdom’s submissions.

The judgment is here. The Advocate General's opinion is here. Press coverage in The Times is here.