CJEU judgement in Sky v SkyKick (case C-371/18)

To recap, Sky (with a core business in television broadcasting, telephony and broadband provision) objected to SkyKick’s use of its name in connection with Software as a Service and cloud migration services.

Sky relied on trade mark registrations which contained very broad terminology, such as “computer software”. SkyKick counterclaimed that Sky’s registrations were invalid because (i) their specifications were too broad and lacked clarity and precision, and (ii) at the time of filing the applications, Sky acted in bad faith as it had no intention to use its SKY mark for all of the goods and services covered by its registrations.

The High Court of Justice (England & Wales) referred several questions to the CJEU, summarised as follows:

1. Can a trade mark be declared wholly or partially invalid on the ground that some/all of the terms of the specification lack clarity and precision?
2. If yes, is a term like “computer software” too general to be considered “clear and precise”?
3. Is it bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods/services?
4. Is it possible to conclude that an applicant made an application partly in good faith and partly in bad faith, where they had intention to use the trade mark for some goods/services but not for others?
5. Is the "intention to use" requirement under UK law compatible with EU law.

The CJEU has answered the above questions as follows:

1. Dealing with questions 1 and 2: a Community trade mark or a national trade mark cannot be declared wholly or partially invalid on the ground that the goods/services of the specification lack clarity and precision.
2. Dealing with questions 3 and 4: A trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith if 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. When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services (that is, it is possible to find that a filing was made partially in bad faith).
3. Dealing with question 5: the "intention to use" requirement under UK law is not inconsistent with EU law (as it does not in itself act as a ground for invalidating trade marks that are already registered).