Lawyer Monthly Magazine - March 2020 Edition

and where use or an intention to use is still preferred is conflict arising with advances in technology. The argument presented by many pharmaceutical companies and creative businesses is that it is impossible to predict the future uses of innovative products and that broad specifications such as “pharmaceutical products” and “computer software” are required to protect those possibilities. The long battle between Apple Computers and Apple Corps epitomises the difficulty in forecasting where technology will result in different industries colliding. The opinion of the AG of the CJEU in the Skykick case that broad terms in trademark registrations are invalid due to being contrary to public policy may be a view that strikes a chord with UK legislators and judges post-Brexit. Section (3)(a) of the UK Trademarks Act 1994 already states that “a trademark shall not be registered if it is contrary to public policy or to accepted principles of morality” while Article 17 of the TRIPS Agreement entitled “Exceptions”, stipulates that Members may provide for exceptions to the rights conferred by a trademark, provided that such exceptions are (1) limited, (2) take account of the legitimate interests of the owner of the trademark and of those of (3) third parties. Although the CJEU may have disagreed with the AG in relation to public policy and there has been little interpretation of Article 17, could we see a post-Brexit UK deciding to use these provisions as a partial justification for addressing particularly egregious cases of broadly filed trademarks? 43 MAR 2020 | WWW.LAWYER-MONTHLY.COM Special Feature By Kate O’Rourke, Mewburn Ellis Judges in the UK will predominate and decisions will diverge from the acquis of the European Union. We may see the UK courts taking an early opportunity to clarify the importance of the need for an intention to use a trademark on filing – a concept not seen as so important on the Continent. However, it is still too early to determine the ultimate impact of the Skykick decision as the High Court will now need to apply the judgement and it is still open to the court to make a finding that the Sky marks are wholly or partially invalid on the grounds of bad faith. If that is seen to be the way forward in the UK then brand owners will need to adopt practices more common in the USA where only specific limited terms are acceptable, such as “computer software for streaming audio-visual and multimedia content via the internet”. This will then impact on future filing strategies as businesses would need to clear and file additional trademarks at the time of expansion, as opposed to the current methodology of some businesses which file applications broadly covering hundreds, if not thousands of individual goods and services to try and future proof the protection of their trademarks. The other potential consequence of a switch to a more US style system, where more precision is needed in describing the scope of a trademark application