Advocate General Tanchev delivered his opinion on the Sky v Skykick case on 16 October 2019. This is the decision of the decade so far as European practitioners are concerned, we have truly been waiting with bated breath for the outcome of this matter.
For background detail, Peter Houlihan’s article, regarding the original reference to the Court of Justice of the European Communities (CJEU) sets the scene.
AG Tanchev’s opinion, if adopted by the CJEU, could have far-ranging effects. While existing registrations will not see challenges on the basis that terms in the specification are too vague, we can certainly expect a flood of challenges based on an abusive lack of intention to use a trade mark, when filing the application. Registrations which have been filed with a bona fide intention to use for part, but not all of the items covered, will not stand to be cancelled in their entirety, though, so the filing of such challenges will require considerable forethought.
We can also expect to see the registration authorities tightening up their practice again on what terms are considered too imprecise to be included in specifications of goods and services. Filing for ‘computer software’ in general certainly seems likely to be a thing of the past in the not too distant future.
The provision of UK law which requires an applicant to declare a bona fide intention to use the trade mark when filing the application was held not to be contrary to EU law, provided that this is not the sole basis for claiming bad faith. Paragraph 140 of the opinion clarifies this further. The provision in question is held to be merely a procedural requirement, which assists in adducing evidence of bad faith in all the circumstances of the case. This doesn’t seem likely to cause much of a shift in practice before the UK tribunals, given that in a case involving bad faith arising from a lack of intention to use a trade mark, one is generally looking at a situation involving some form of abuse of the trade mark system. AG Tanchev refers to such applications, in paragraph 110 of his opinion as being anticompetitive applications to prevent third parties from developing their own commercial activities, and it’s difficult to think of lack of bona fide intention to use cases which would not fall in that category.
We now await the ruling of the CJEU, and then, the application of that ruling to the UK legal proceedings, in relation to which Skykick must now be feeling much more optimistic!
By Cathy Ayers