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Sky vs Skykick: Business As Usual

Photo by Kevin Quezada for Unsplash

The decision "Sky v Skykick" of the Court of Justice of the European Union (C-371/18) has been received with relief and enthusiasm from trademark owners across Europe as it confirms the common practice of drafting extensive descriptions of goods and services in trademark applications.

The background case was initiated in the United Kingdom, where Sky, the well-known digital television company, sued newcomer SkyKick providing cloud migration services for trademark infringement. SkyKick denies the infringement and requests the invalidation of Sky's trademarks because (i) Sky's goods and services specifications lack clarity and accuracy; and (ii) Sky's trademarks were made in bad faith because Sky did not intend to use all protected products and services. This action came about because while Sky and SkyKick were feuding in the same class (namely, class 38, “telecommunication services”), the actual activities of each company were different.

The case reached the Court of Justice of the European Union which determined that trademark registrations containing broad terms such as “financial services” or “telecommunications services” cannot be invalidated in whole or in part to an alleged fault of clarity and precision of these terms.

The CJEU confirmed that the registration of a trademark without intent to use it in relation to the products and services covered will constitute bad faith, but only if the applicant intended to (a) undermine, in a manner incompatible with honest practices, the interest of third parties or (b) obtain a monopoly for purposes other than fulfilling the functions of a brand. It is also important to note that a potential determination of bad faith based on the lack of intention to use some of the covered goods and services would only invalidate the registration of those goods and services and not the entire registry.

The decision is excellent news for trademark owners (perhaps less so for trademark attorneys), since it keeps the statu quo and will not require to spend time and money in re drafting trademark descriptions to make them more specific. This case is one of those situations in which the best news is that there is no news.

You may read the full decision, here.


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