In a Judgment handed down on 6 February 2018, in a case raising important issues of European trade mark law, the English High Court has indicated that it will refer several questions to the CJEU.
The Claimants (“Sky”) owned inter alia four European Union trade marks and one United Kingdom trade mark comprising the word SKY, registered in relation to a broad selection of goods and services (including broadcasting, computer software, data storage, telecommunications and email services). Sky contended that the Defendants (“SkyKick”) had infringed these marks by use of the sign “SkyKick” in relation to cloud migration and backup software. The Defendants denied infringement, attacked the validity of the Sky trade marks, and claimed the benefit of an 'honest practices' defence.
Following trial the High Court ruled that, if the marks were validly registered (see below), a likelihood of confusion arose and that infringement had taken place. The Court rejected SkyKick's defence of honest practices. An additional claim in passing off was also rejected.
Mr Justice Arnold concluded that he was unable finally to adjudicate upon the validity of the trade marks in issue without the guidance of the Court of Justice of the European Union on the following questions:
1) Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification are lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark?
2) If the answer to (1) is yes, is a term such as “computer software” lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark?
3) Can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services?
4) If the answer to question (3) is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services?
5) Is section 32(3) of the 1994 Act compatible with the Directive and its predecessors?
The consequent form of order, including the final form of the questions to be referred, will be determined at a later hearing.
Philip Roberts of One Essex Court represented Sky.
The judgment can be read here.
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