In a High Court case heard last month between Sky and Skykick in which Sky claimed Skykick had infringed its EU and UK trade marks, Skykick responded by attacking Sky’s trade marks, alleging they were invalid in whole or in part due to the specifications lacking clarity and precision and/or that the applications had been made in bad faith.

Sky’s trade mark specifications were extremely broad, with some registrations containing over 8,000 words.  Skykick argued that the applications had been made in bad faith because Sky had no intention to use the trade marks in respect of all of the specified goods and services.  By way of an example, the specifications included “whips” and “bleaching materials” and Sky was unable to explain the commercial reason for having applied for them.

An applicant for a UK trade mark has to have a bona fide intention to use the trade mark for the goods and services applied for.  A trade mark may be revoked if within the 5 years since the application the trade mark has not been put to use in respect of the goods and services applied for and there is no proper reason for the non use.

The Judge concluded that when the applications for the trade marks were filed, Sky did not intend to use the trade marks in respect of all of the goods and services covered by the applications.  However, the Judge said that the case law was not clear on whether an application could be found to be made partially in good faith and partially in bad faith and therefore whether the part made in bad faith could be invalidated leaving the other part in force or if the whole application was invalid.  If the whole application was invalid, the trade marks would be revoked and Sky’s claim for infringement would fail.

The Judge has referred this question to the Court of Justice of the European Union (CJEU). A response is not likely before the UK leaves the EU and it is not clear how much weight will be given to a decision of the CJEU post Brexit.  However, trade marks may be vulnerable to revocation if the specifications include goods and services in respect of which the marks are not used and there was no commercial rationale for applying for those goods and services at the time.

As can be seen from this case, sometimes the best form of defence is attack.  If your business is threatened with trade mark infringement proceedings, it is worth considering the validity or otherwise of the trade marks.  If you are applying for trade marks, it is important to ensure that you have a commercial justification for the goods and services covered by the application if you do not intend to use the marks in respect of all goods and services immediately.  It would also be a good idea to review any current trade marks to ensure that they are not vulnerable to attack.  If you have any concerns about the veracity of your trade marks, please contact us.

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