Yesterday the CJEU handed down its long-awaited judgment in the SkyKick case (C-371/18).
The Court ruled that insufficiently clear and precise goods or services descriptions cannot be brought under any of the grounds to invalidate an EU or national trade mark. Disagreeing on this point with the Advocate General, the Court rules that such a deficiency is not contrary to public policy. The Court points out that the genuine use requirement is a sufficient remedy to deal with unclear/unprecise goods and services descriptions. This is a relief for the many owners of trademarks with broad goods descriptions such as ‘computer software’.
The judgment is also important with respect to bad faith and ‘intent to use’. Here, the Court confirmed the Advocate General’s view that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration can constitute bad faith if certain conditions are met. Referring back to its Koton decision (C-104/18 P), the Court rules that bad faith is upheld when the applicant “had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark”. An application can be ‘partially’ made in bad faith when the intention to use is absent only with respect to certain of the goods or services.
Finally, the Court had to rule on the compatibility with EU law of an ‘intent to use’ provision of the UK Trade Marks Act. This provision requires applicants to state that the mark is being used in relation to the goods or services of the application, or that they have the bona fide intention to use it. The CJEU rules that such a requirement is not unlawful as long as it does not constitute an invalidity ground of already registered marks.