This article examines some of the issues around the concept of use and intention to use a trade mark at the UK IPO and EU IPO, and looks at some of the more practical outcomes from the CJEU decision in Sky v Skykick (C-371/18).
The CJEU decision in Sky v Skykick at the beginning of 2020 was a timely reminder of the conflict that exists between the generally permissive office practices at the UK IPO and EU IPO in allowing wide lists of goods and services in trade mark registrations, and the possibility that such an approach could result in a trade mark registration that is invalid on the basis that there was no genuine intention to use and/or the application was filed in bad faith.
In reality, the CJEU decision in Skykick did not create any greater certainty, and in a very CJEU manner, the answer was pretty much: “Well, yes but it depends”.
The UK Courts in Skykick (the CJEU case was a referral originally from the UK courts) did eventually partially cancel some of the SKY registrations on the basis that particular goods and services were so broad (or so clearly unrelated to the applicant’s business) that the applications were filed in bad faith.
However the decision in the UK was probably easier to reach than may be possible in many other EU countries, since the UK law contains a requirement for a declaration that there is use of the mark, or an intention to use the mark, at the time of filing the application.
The option therefore to find bad faith in the UK as a result of an inaccurate declaration was a relatively obvious route to take, especially as the UK court had evidence to give them context and which demonstrated the nature of SKY’s more limited historical use.
In many other EU countries, where there is no specific requirement for a declaration of use, the CJEU decision on SKYKICK may well have to be interpreted differently, and with a greater requirement on the applicant for cancellation to prove in other ways how the proprietor has acted in bad faith.
This presumably means relying on the criteria set down by the CJEU that lack of intention to use can constitute bad faith, if the applicant intended (in a manner inconsistent with honest practices) to a) undermine the interests of third parties, or b) to obtain an exclusive right for purposes other than those falling within the functions of a trade mark.
This brings us to some more practical questions or problems that arise:
- Can we still file for wide lists of goods and services at the UK IPO or EU IPO?
Yes. However, there is an increased need to ensure that the goods and services are realistic and justifiable. The wider the list of goods and services, the greater the chance of a third party challenge, and perhaps particularly so in the UK.
However, at the moment, the UK IPO and EU IPO are continuing to accept applications that cover wide lists of goods and services. The impact on trade mark owners may well come more frequently at the point of enforcement instead.
- If many companies continue to file for very broad goods and services, and the UK IPO and EU IPO continue to allow these wide lists of goods, how can bad faith be proven?
Bad faith is an objective test, based in particular on the “intention” of the relevant party. In many cases, it may be difficult to prove bad faith, unless the context of the filing gives some clue as to intention.
It would be relatively easy to defend a claim of bad faith if the proprietor has documentary proof that justifies the wide nature of the goods or services. However neither the UK IPO nor EU IPO have any disclosure requirements that could oblige a proprietor to reveal why a particular list of goods and services were chosen, so the onus of proof remains firmly on the challenger to prove their case.
Context will be everything, so if you are a company that has historically sold only socks, and you file an application that covers fireworks, pharmaceutical preparations and pet-food, you are placing yourself at a much greater risk of a successful challenge.
However as IP offices and trade mark owners have collectively created a position where wide lists of goods and services are acceptable (so it can be argued to be “in accordance with honest practices”), it may take some time for the presumption of bad faith to rebalance in the other direction, if that is the way the Courts wish to move.
- What are the consequences of the goods and services being too wide (and bad faith being proven)?
This is one point on which the Skykick provided some certainty, since the CJEU specifically said that a successful claim results only in the cancellation of the goods or services for which bad faith is proven, and not for all goods and services claimed. The UK court did indeed only limit the scope of the registrations, rather than cancel them entirely.
This should bring reassurance to many trade mark owners who have understandably followed the UK IPO and EU IPO general practice on wide lists of goods and services.
- Is bad faith easy to prove?
In many cases, the simple answer is usually “no”. The EU IPO and UK IPO have historically viewed bad faith as a relatively serious claim to make. After all, the claimant is asserting that the other party has acted in some way dishonestly, and this can make cases involving this claim emotive and hard-fought.
The EU IPO and UK IPO are therefore reluctant to find bad faith when the claim is based on supposition and circumstance, and the evidential hurdle for success is set relatively high. It is possible that the Skykick decision will make it easier to succeed in a bad faith claim in relation to wide goods and services, but only time will tell. As the CJEU would probably say, “well, it all depends, doesn’t it?”
The European trade mark registers have become incredibly crowded over the last few decades as a result of the affordability of multi-class applications, the lack of any effective official examination on breadth of goods and services, and the lack of any US PTO style declarations of use, and at some point something had to give.
Whilst the decision in SkyKick did not bring about the immediate earth shattering impact that many had anticipated, it will perhaps prove to be a watershed moment in the longer term. It is possible that the EU IPO and UK IPO (and national registries around the EU) will modify their policies over time to tighten up on allowable specifications of goods, but it is much more likely that trade mark owners will react much quicker to reduce the risks to their filings.
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