Lawyer Monthly Magazine - March 2020 Edition

corresponding to the goods and services of the application. The Court also held that such a finding of bad faith would only invalidate a trademark partially, i.e. for those particular goods and services only. Nevertheless, a trademark owner is at risk of a registration being revoked for non-use if, within a continuous period of five years after registration, the trademark has not been put to genuine use in the relevant territory in relation to the goods and services covered by the registration. The CJEU indicated that such non-use revocation is the appropriate way for third parties to remove unclear and imprecise terms from another’s trademark registration. Bad faith cannot be presumed just becauseat the timeof filing, theeconomic activity of the trademark applicant did not align with the goods and services in the trademark specification. Of course, this does not assist a Defendant or a potential applicant for a trademark when the registration is not yet more than five years old. Brand owners may take some comfort from the decision and continue to file broadly, but it does leave open the possibility of a challenge against trademarks which cover a broad range of products or services, unless the brand owner can establish a demonstrable commercial strategy for including all of the items. The CJEU in the Skykick case also considered whether Section 32(3) of the UK Trademarks Act 1994 is compatible with EU trademark law. This section mandates for a statement of use or intended use in relation to the goods or services covered by an application. There is no equivalent requirement in EU trademark law. The Court held that while the UK section is compatible, breach of this obligation is not, in itself, a ground for invalidity of an existing trademark registration. This appears contrary to the English authorities discussed by Arnold J in the High Court proceedings in paragraphs 210 – 223 and his suggestion that “at least in certain circumstances, it may constitute bad faith to apply to register a trademark without any intention to use it in relation to the specified goods or services” (paragraph 225). If this view is taken into consideration with Section 3(6) of UK Trademarks Act 1994 that “a trademark shall not be registered if or to the extent that the application is made in bad faith”, we may see the weaponising of the bad faith requirement to deal with abusive practices in trademark filing. This could manifest itself through overly broad filing applications without a commercial justification or by “evergreening” when identical or near-identical new applications are filed to prolong the five- year non-use period of a registration. This may be a particular issue for brand owners post-Brexit when the views of 42 WWW.LAWYER-MONTHLY.COM | MAR 2020 Special Feature By Kate O’Rourke, Mewburn Ellis the basis of bad faith where there is no rationale for filing a broad specification. Importantly, the CJEU established the limiting principle that only where there are “objective, relevant and consistent” factors demonstrating that, when the application was filed, the applicant’s intention was to either undermine the interests of third parties or obtain an exclusive right for motives not falling within the functions of a trademark, can there be a finding of bad faith. In practice, this requirement will make it difficult to try to invalidate a trademark for bad faith. A party bringing an invalidity action will face a significant challenge of having to prove, seemingly through evidence of fact, the trademark proprietor’s intentions, quite possibly many years prior and perhaps without the opportunity for disclosure depending upon the forum of the dispute. The threshold of the test to establish whether a trademark application has been made in bad faith is also high and cannot be presumed simply on the basis that at the time of filing the application, the applicant had no economic activity IT IS STILL TOOEARLY TO DETERMINE THE ULTIMATE IMPACT OF THE SKYKICK DECISIONAS THEHIGHCOURT WILL NOWNEED TOAPPLY THE JUDGEMENT THE CJEU’S DECISIONDOESNOT IN ITSELF INDICATE THAT TRADEMARK OWNERS SHOULD AVOID THE PRACTICEOF INCLUDINGBROAD TERMS IN THEIR SPECIFICATIONS