Breaking news: The much anticipated CJEU decision in Skykick has been released this morning

The CJEU agreed with the Advocate General (“AG”) that there was no provision in the relevant legislation for invalidating a trade mark on the grounds that some or all of the terms in the specification lacked sufficient clarity and precision, as Article 51 of Regulation 40/94 is exhaustive. However, the CJEU confirmed that the decision in the ‘IP Translator’ case cannot be interpreted as meaning that the court intended to add an additional ground to invalidity not already included in the regulations. Further, where the registered goods/services lack clarity and precision this cannot be considered contrary to public policy and a ground to declare that the mark is invalid.

The CJEU also held that whilst the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered may constitute bad faith, this is only so when there are objective, relevant and consistent indicia showing that when the mark was filed by the applicant they had the intention of either (i) undermining the interests of third parties or (ii) obtaining an exclusive right for purposes other than those falling within the functions of a trade mark. This arguably sets a higher bar for a finding of bad faith than that indicated in the AG’s opinion. In addition, perhaps unsurprisingly, the CJEU confirmed that where bad faith is established in relation to certain goods and services only, the opposition or invalidity decision shall apply only in relation to such goods and services.  

Finally, the CJEU confirmed that Section 32(3) of the Trade Marks Act 1994 (which provides that, when making the application, the applicant must state that the mark is being used or there is a bona fide intention to use it) is compatible with Directive 89/104, and that an infringement of this obligation can constitute evidence of bad faith, but that such an infringement is not in itself a ground of invalidity.

The implication of the decision is that broad terms such as ‘computer software’ (which was cited in the reference to the CJEU) will not be objectionable per se, and whether the inclusion of such terms constitutes bad faith will depend on the circumstances and should be dealt with on a case-by-case basis. As a wider point, the reference to the CJEU in this case did not address the practice of ‘ever-greening’ (i.e. re-filing trade mark applications to avoid the requirements to make ‘genuine use’ of a mark), meaning that as things stand, this practice can amount to bad faith where there is an intention to circumvent the obligation to prove ‘genuine use’ (pursuant to the recent decision of the EUIPO Board of Appeal in the ‘MONOPOLY’ case (R 1849/2017-2)).

We now await the decision of the High Court in this case, and it will be interesting to see how the CJEU’s decision is applied.

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