A recent judgment of the European Court of Justice makes it clear that trademark applicants must be very careful when filing a trademark application and must properly delineate the exact scope of the goods and services for which they seek protection.
There is a tendency in a trademark filing to ask for the widest possible protection for all possible applications. However, the Skykick judgment, which we will briefly explain below, teaches us that in such a case there is a risk that your trademark may be declared invalid retrospectively if there was a case of bad faith or that it will be refused by the trademark office beforehand.
The filing of a trademark therefore requires attention, accuracy and a thorough consideration of what is and what is not justifiable within the applicant’s activities.
Filing a trademark
If you file a trademark in the EU and the United Kingdom, the protection of your trademark only applies to the general class of goods and services you have designated. There is a limited list of 45 classes to choose from. For example, if you develop software, you can protect your name within class 9, which protects software, and within class 42, which protects services within the software world (such as development). Within a standard trademark filing you can choose two classes and that choice requires careful consideration beforehand. Expanding to three or more classes entails extra costs.
However, this does not imply that you will get protection for everything that can be catalogued under “Software”. Within each class you have to specify very precisely which goods or services you want to protect (“specifications”). In our example for software, this could be “operating systems” or “computer game software”.
Who wants to protect his trademark, of course, always wants to obtain the widest possible protection. Therefore, there is a tendency to choose as many specifications as possible and to formulate them as broadly as possible in order to make the trademark protection as broad as possible.
But are there limits to this? What if you impede others in their commercial activities in an irresponsible way? When does maximizing your trademark protection become an abuse of the trademark law system?
Key question: can I protect a trademark for goods or services that I do not sell at all…?
The above-mentioned pain point within trademark law was once again well exposed in the Skykick case (case C-371/18).
Sky is a well-known media and broadcasting company with a number of Union trademarks (“SKY”) and accuses Skykick, a small software company, of infringing its trademark by using the pictorial trademark “Skykick”.
Skykick counters these accusations by in turn attacking the validity of Sky’s trademarks:
- a lack of clear and precise specifications
- a bad faith registration
Skykick believes that Sky wrongly protected its trademarks for “computer software”. Although some of Sky’s products are related to computer software, she does not actually sell any software at all and there is no evidence that there are plans for this in the future. In such a case, says Skykick, Sky cannot obtain trademark protection for applications covered by “computer software”.
The two key questions that arise here are:
1) Can an insufficiently clear or precise specification (such as ‘computer software’, ‘financial services’, ‘telecommunication services’, …) constitute a ground for invalidity of a trademark?
2) Is there ‘bad faith’ if a trademark is registered for goods and services for which the applicant does not have the intention to use the trademark? And can a trademark be (partially) invalid because of it?
And what exactly does the European Court of Justice say…
The Court seemingly dismisses Skykick’s arguments to the effect that unclear and vague specifications do not invalidate, in whole or in part, a Community or national trademark. According to the Court, the reason for this is that a broad trademark registration is not contrary to public policy. Sky’s trademarks are therefore valid and Skykick cannot claim their invalidity.
In other words, Sky’s broad trademark registration is valid and Skykick was therefore able to file a trademark application that included “computer software”, despite the fact that it does not sell any software at all. This also means that Sky will most likely be able to prohibit Skykick from using the trademark ‘Skykick’ for computer software.
At first sight, trademark applications can be taken as broad as possible in the future, as they cannot be destroyed afterwards for that reason. However, the Court did add to its judgment that the national trademark offices and the EUIPO (the European Union Intellectual Property Office) can still carry out a prior check at the time of registration and refuse trademarks at that time because they are too vague or too broad in scope.
But what if there’s bad faith?
If, on the other hand, there is bad faith and it can be demonstrated that the trademark owner in reality has no intention at all to use the trademark for certain specifications for which protection is sought, this can indeed lead to the invalidity of the trademark according to the ECJ. This invalidity applies only to the specifications registered in bad faith.
There is bad faith if the trademark owner has filed the application:
(1) with the intention of dishonestly undermining the interest of a third party or
(2) of obtaining the right for purposes other than those falling within the functions of a trade mark (irrespective of any third party interests).
However, the fact that, at the time of applying for a trademark, one does not sell a certain product or provide a certain service does not automatically mean that there is bad faith. This would be unreasonable, given that many companies lack the money or expertise at the start of their activities to carry out all their future plans. It is bad faith if you only file a trademark in order to block another company, of course.
Why is this so important?
It will be interesting to see how EUIPO and other trademark offices will apply this judgment when granting new trademarks. After all, attorney General Tanchev quite rightly made the objection in his conclusion that if registrations could be obtained too easily or too widely, this would make it more difficult for third parties to enter the market due to a reduced supply of suitable trademarks. As a result, the trademark proprietor obtains an unfair monopoly and is able to raise its prices, which is contrary to the public interest.
For those considering a trade mark application, the judgment means above all that the applicant must think very carefully about what exactly he is asking for protection for. After all, if the descriptions are too vague or too broad, the application risks being refused, which entails unnecessary extra costs for a new application. In the case of a filing that is subsequently considered to be in bad faith because the applicant only wanted to “occupy the market”, the applicant risks invalidation afterwards, which entails even more costs. So seek professional advice in good time and let yourself be guided through every trademark application.