Sky V Skykick - Does This Mark The End Of Computer Software And Other Broad Trade Mark Specification Terms?

This issue stems from a long-running dispute in which Sky plc brought trade mark infringement proceedings against SkyKick, Inc. (a US supplier of cloud migration software), in respect of its use of the mark SKYKICK. 

In response, SkyKick claimed that Sky’s trade marks were invalid based on the fact that Sky’s trade mark specifications lacked the requisite “clarity and precision” for terms such as ‘computer software’. In addition, SkyKick claimed that Sky’s marks were registered in bad faith because its specifications contained certain goods and services which it had no intention of using, e.g. whips.

Mr Justice Arnold’s judgment was subject to the Court of Justice of the EU providing guidance on a number of points but in advance, the much anticipated opinion of the EU Advocate General (AG) has been released. To summarise his key points:

• Clarity and Precision - A trade mark registration cannot be declared invalid based merely on a lack of clarity and precision, as this is not among the exhaustive grounds of invalidity laid down by EU legislation. However, such lack of clarity and precision, for example, in relation to overbroad terms such as ‘computer software’, is unjustified in that it imposes a wide-ranging monopoly that is contrary to public interest.
• Bad Faith - “In certain circumstances”, where an applicant registers a mark without an intention to use it for the specified goods and services and wants merely to prevent a third party from entering the market, this may amount to bad faith.

The Court of Justice of the EU (CJEU) will now issue a formal ruling. This could have a wide-ranging impact if it agrees with the AG’s opinion, with trade mark owners facing a greater risk of invalidation proceedings if their trade mark specifications fall outside the scope of their business. 

In addition, broad terms such as ‘computer software’ and ‘financial services’ could become unacceptable. Notably, a requirement for much narrower specifications with the type/purpose of the software and field of use being specified is the practice of the US Patent and Trademark Office. In view of the way in which computer software has developed and the fact that it is now used in just about every industry in the world, granting a monopoly over it is far from ideal and such a change would no doubt be welcomed by many.