A common trade mark filing strategy in the UK and EU is to file a broad trade mark specification. A broad specification makes enforcement easier and allows room for the pivots that are common in new businesses. The down side of broad trade marks is that they block the register for future applicants.
This issue has been put into the spotlight thanks to the longstanding litigation between Sky and SkyKick - previously discussed here.
In the latest SkyKick judgment, the Court of Appeal has reversed a key finding regarding bad faith (Sky Ltd & Ors v Skykick, UK Ltd & Anor (Rev1) [2021] EWCA Civ 1121). The decision means that trade marks with broad specifications are less likely to be invalidated.
In July 2020, Mr Justice Arnold (as he then was) found (among other things) that Sky’s asserted trade marks for SKY were partially invalid due to lack of intention to use amounting to bad faith. The Court of Appeal has allowed Sky’s appeal against that finding.
Writing the judgment for the Court, Floyd LJ identified two main errors made by the first instance judge.
First, he had found that Sky did not intend to use the trade marks for some goods and services covered by the specifications, and there was no foreseeable prospect that the company would do so. But Floyd LJ said the problem with this conclusion was that its significance to a finding of bad faith varies depending on the goods and services being looked at: “It is true that Sky had no prospect of using the mark in relation to every conceivable sub-division of computer software, but that fact is not, in my judgment, a relevant or objective indication of bad faith.”
Second, the first instance judge had found that the marks were applied for pursuant to a deliberate strategy of seeking very broad protection, regardless of whether it was commercially justified. Here, Floyd LJ said it was necessary to establish whether this point had traction in relation to the selected goods and services: “An applicant for a trade mark does not have to formulate a commercial strategy for using the mark in relation to every species of goods or services falling within a general description. Such an applicant is entitled to say ‘I am using the mark for specific goods falling within description X. I have no idea precisely where my business in goods of that description will develop in the next 5 years, but there will undoubtedly be more such goods than there are now.’”
He added that such an applicant could not be accused of bad faith in the light of its strategy for applying for protection of sufficient width to cover some further, as yet unformulated, goods within the same category: “It follows that the absence of a commercial rationale or strategy, if by that is meant a plan under which the mark is to be used for all goods or services within a category of the registration, is not relevant to the enquiry about bad faith.”
Floyd LJ concluded that the judge’s conclusions “only have traction” if one treats the applicant as obliged to have a prospect of or strategy for using the mark in relation to every type of goods and services falling within a category, saying: “The applicant is under no such obligation.” In the absence of any other factors, it was not open to the judge to hold that any of the selected goods and services was applied for in bad faith.
The Court of Appeal went on to criticise the procedure at first instance, saying it was unfair to Sky insofar as the company did not have the opportunity to demonstrate its intentions and good faith related to the selected goods and services.
What does this mean?
Trade mark applicants who file broad specifications as a means of future-proofing protection will be relieved by the judgment, as such marks are now less likely to be found invalid on grounds of bad faith.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
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