Lawyer Monthly Magazine - March 2020 Edition

goods and the initial view of Arnold J (as he then was) in the UK High Court (Sky Plc & Ors v Skykick UK Ltd & Anor [2018] EWHR 155 (Ch)) was that the term was generally too broad for a trademark registration. Recalling that this was not the first time the term had been considered, he referred to the 1995 Mercury case when Laddie J found that the term “software” granted too broad a monopoly and that software should be defined by its function (Mercury Communications Ltd v Mercury Interactive (UK) Ltd [1995] F.S.R. 850), adding that in the present day “computer software is even more ubiquitous than it was in 1995”. As the Judge noted, this approach is in line with the practice in the USA. Arnold J also referred to the IP Translator case (CJEU Case C-307/10 June 19, 2012) which had found that the list of goods and services covered by a trademark application must be described with sufficient precision and clarity. This principle is also now reflected in Article 33(2) of the EUTMR. Prior to the decision of the CJEU, the Advocate General (“AG”) gave his opinion that “registration of a trademark for ‘computer software’ is unjustified and contrary to the public interest” as it would give the owner of the trademark a “monopoly of immense breadth which cannot be justified by any legitimate commercial interest”. This would have been a potential game changer for filing practices and may have forced a change in filing practice amongst companies such as Sky. However, the CJEU ruled that a trademark cannot be declared wholly or partially invalid on the grounds that the specification of goods lacks sufficient clarity and precision. The Court also held that it is therefore not contrary to public policy for the terms used in a trademark specification to lack clarity or precision if the sign itself is not contrary to public policy. As a result, the CJEU did not need to consider whether the term ‘computer software’ lacked sufficient clarity or precision. The CJEU’s decision does not in itself indicate that trademark owners should avoid the practice of including broad terms in their specifications. The CJEU has essentially just maintained the status quo in this regard. This is advantageous to brand owners who file trademarks for a broad range of products and services, and so obtain protection in potential business areas as well as their existing ones. The question still remains as to whether it is possible for registration to be wholly or partially challenged on 41 MAR 2020 | WWW.LAWYER-MONTHLY.COM Special Feature By Kate O’Rourke, Mewburn Ellis IN THEUK AND THE EU, TRADEMARK OWNERS OFTENFILE APPLICATIONS FORPRODUCTS ANDSERVICES THAT THEY INTEND TO TRADE IN THE FUTURE, ASWELL AS THOSE THAT ARE COVEREDBY THEIRCURRENT BUSINESS. Conflicting views on the legitimacy of filing trademarks with broad lists of goods and services have been aired for many years. Most recently, it was the CJEU decision in the Skykick case (C- 371/18 Sky v. Skykick) that has excited trademark commentators. This case has been hotly discussed and debated by practitioners and brand owners alike, due to the potentially far- reaching ramifications if it was found that registrations could be invalidated on the basis that they contain broad terms such as, ‘computer software’; bad faith could be established where terms are specified beyond a trademark owner’s core business operations and perhaps also those that are ancillary to their core activities. In the UK and the EU, trademark owners often file applications for products and services that they intend to trade in the future, as well as those that are covered by their current business. This leads to applications seeking broad protection as owners pursue to cover related or aspirational markets. In the Skykick case, the specific SKY registration covered 22 different classes, contained thousands of words and covered a broad range of products and services including insulation materials, furs, fire extinguishers and whips which seem remote to the commercial interests of Sky. Whether this practice constitutes bad faith, is contrary to public policy or contravenes Section 32(3) of the UK Trademarks Act 1994, has still not been answered definitively. The term that prompted Skykick to argue that Sky’s trademarks should be declared partly invalid (as it covered goods which were not specified with sufficient clarity and precision), was “computer software”. The term can undoubtedly cover a huge range of