In a case of particular to trademark attorneys and brand owners, the Court of Appeal recently issued judgement in the latest instalment of Sky Ltd v Skykick.
In 2020 the High Court ruled, in line with CJEU guidance, that the registration was in part invalid as the term “computer software” was overly broad, as the term covered all types of software that were not of commercial interest to Sky.
Consequently the High Court ruled that the application had been filed party in bad faith as explained in the judgement:
“In my judgment Sky applied for the Trade Marks partly in bad faith in each of the three ways…
Not merely did they not intend to use the Trade Marks in relation to some goods and services covered by the specifications at the application dates, but there was no foreseeable prospect that they would ever intend to use the Trade Marks in relation to such goods and services.
Moreover, Sky made the applications pursuant to a deliberate strategy of seeking very broad protection of the Trade Marks regardless of whether it was commercially justified.
Sky thus applied for the Trade Marks with the intention of obtaining an exclusive right for purposes other than those falling within the function of a trade mark, namely purely as a legal weapon against third parties, whether in threats of infringement proceedings or actual infringement claims or oppositions to third party applications for registration…”
This would consequently mean that instead of filing applications for broad specifications of goods and services, such a ‘computer software’, any trademark applicant may be well advised to limit the specification as filed to the particular type of software of interest, for example ‘computer software for the monitoring of seismic activity’.
This represented a significant change of practice for UK trademark professionals, bringing the UK law more into line with USPTO practice, which does require particularization of any broad terms.
However, in its judgement of July 2021 the Court of Appeal has now reversed the High Court decision, holding instead that:
An applicant for a trade mark does not have to formulate a commercial strategy for using the mark in relation to every species of goods or services falling within a general description.
Such an applicant is entitled to say “I am using the mark for specific goods falling within description X. I have no idea precisely where my business in goods of that description will develop in the next 5 years, but there will undoubtedly be more such goods than there are now.”
Such an applicant would always be forced to accept that there was no prospect whatsoever that it would use the mark for every variety of goods within the description. Such an applicant could not, however, be accused of bad faith in the light of its strategy for applying for protection of sufficient width to cover some further, as yet unformulated, goods within the same category.
For this reason, I consider that the concession that an applicant with but one item of computer software can apply in good faith for computer software as a whole to have been correctly made.
It follows that the absence of a commercial rationale or strategy, if by that is meant a plan under which the mark is to be used for all goods or services within a category of the registration, is not relevant to the enquiry about bad faith.
This is a mixed judgement for brand owners, as on one hand it means that they are open to file with broad specifications of goods/services without the fear of their applications later being held invalid owing to the wording of the specification.
On the other hand unduly broad specifications will continue to clutter the UK trademark register making it more difficult to determine if prospective trademarks are free for use and registration.
The decision is of course open to appeal to the Supreme Court, and perhaps on appeal Skykick will give Sky a kicking back…