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CJEU hands down decision in Sky v SkyKick case

29 January 2020. Published by Ben Mark, Partner and Samuel Coppard, Senior Associate

This morning, the CJEU handed down its judgment for the much anticipated Sky v SkyKick case – certainly one of the most important trade mark referrals from the High Court over the past few years.

The High Court's referral requested the CJEU to clarify a number of EU trade mark issues, including (but not limited to) (i) whether lack of clarity and precision of a trade mark specification is a ground of invalidity, and (ii) whether it constitutes bad faith to register a trade mark without any intention to use it in relation to the specified goods or services.   This referral left open the potential that where part of a trade mark application is found to have been made in bad faith, the whole registration could be invalidated, and therefore could have had significant implications for trade mark owners holding wide registrations as these could become vulnerable to wholesale strike out as a result of invalidity challenges for bad faith (see our previous article here).

However, departing from Advocate General Tanchev's Opinion, the CJEU ruled that (i) an EU trade mark will not be declared wholly or partially invalid on the ground of lack of clarity and precision of its specifications, and (ii) a lack of intention to use an EU trade mark is not in itself a ground for bad faith.  This decision should be a welcome relief for brand owners seeking to maintain broader protection (albeit less so for companies seeking to clear new brands, as this decision will do little to "de-clutter" the trade mark register).

A full copy of the judgment is available here.

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