- Broad trade mark specifications cannot constitute grounds for invalidity but marks may be vulnerable to revocation where there is a positive lack of intention to use (Sky v SkyKick)
- What are the practical implications of this case?
- What was the background?
- What did the court decide?
- Case details
IP analysis: This long-awaited decision is important, but not as significant as it would have been if the Advocate General’s (AG) opinion had been followed. Trade marks can be invalidated for bad faith if there is not an intention to use for the goods or services applied for. But, this test may be harder than the AG had suggested—bad faith can only be established by ‘objective, relevant and consistent indicia’ of an intention to obtain a registration for illegitimate purposes. And where bad faith only exists in respect of some of the goods or services registered, the mark should only be declared invalid as regards to those goods or services. Marks cannot be invalidated just because the specification is imprecise. The AG’s innovative opinion said that broad terms such as ‘computer software’ were contrary to public policy for want of any ‘legitimate commercial interest’. The Court of Justice dismissed that argument. Written by Giles Parsons, partner, and Hayley Smith, trainee, at Browne Jacobson LLP.
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