CJEU rules on whether lack of clarity, precision and intention to use are grounds for the invalidation of trade marks

Case C‑371/18 Sky plc, Sky International AG & Sky UK Ltd v SkyKick UK Ltd & SkyKick Inc

In a highly-anticipated judgment delivered this morning [EU:C:2020:45] the Court of Justice of the EU has ruled:

- that an EU or UK trade mark cannot be declared invalid on the ground that terms used in the specification of the mark lack clarity and precision

- that an EU or UK trade mark cannot be declared invalid if the proprietor applied for the mark without an intention to use it unless the proprietor also intended to (i) undermine, in a manner inconsistent with honest practices, the interests of third parties, or (ii) obtain, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark

- that an EU or UK trade mark is not to be declared invalid in its entirety if a 'bad faith' objection only applies to a sub-set of the goods or services listed in its specification

- that that the declaration required by Section 32(3) of the Trade Marks Act 1994 is not incompatible with EU law provided that breach of that provision does not constitute, in itself, a ground for invalidity of a trade mark already registered.

The Judgment is available here.

Geoffrey Hobbs QC and Philip Roberts QC appeared for Sky plc (instructed by Mishcon de Reya LLP).