February 24, 2020

The EUIPO has welcomed the decision in Case C-371/18 Sky plc v SkyKick UK Ltd EU:C:2020:45 (reported in N2K 31 January to 6 February 2020).

The EUIPO says that it considers that the CJEU provided important guidance on the requirement for clarity and precision of the specification of goods and services on the one hand, and the concept of bad faith on the other.

The main issues arising from the questions referred to the CJEU are the following :

The EUIPO considers that these clarifications contribute to ensuring legal certainty. The answer to the first question reassures EUTM owners that they will not face invalidity actions for registrations that include broad terms solely on the basis of the fact that those broad terms may lack clarity and precision. This confirms the current practice of the EUIPO, which does not include the lack of clarity and precision of the specification among the absolute grounds for invalidity (see Guidelines, Part D, Cancellation, point 3, Absolute Grounds for Invalidity).

Moreover, as the CJEU did not question the clarity and precision of the term “computer software”, it also does not call into question EUIPO and Member States’ practice on terms lacking clarity and precision, reflected in the Common Communication on the Common Practice on the General Indications of the Nice Class Headings.

Finally, the EUIPO considers that the CJEU has clarified the circumstances in which the ground of bad faith can be invoked against registrations for goods and services that the applicant has not any intention to use, according to Article 51(1)(b) of the Trade Mark Regulation (40/94/EC). See Guidelines, Part D, Cancellation, point 3.3.2.1, Factors likely to indicate the existence of bad faith, indent 3 (c).

The EUIPO invites applicants to “carefully consider their business needs before applying for overly long lists of goods and services”. In particular, applicants are advised against including goods and services in the application solely with the intention of extending the scope of their exclusive right or for purposes other than those falling within the functions of a trade mark. Applicants who fail to comply with this principle may face invalidity actions on the ground of bad faith and suffer the total or partial invalidation of their registration, as well as bear the costs of the proceedings. To read the EUIPO’s statement in full, click here.