Trade Mark registrations under threat?

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sual practice with registered trade mark prosecution is to claim widely in relation to the goods and services of interest to the applicant, narrowing down to the specific items in respect of which the applicant uses or imminently intends to use the trade mark.  The objectives include:  (1) obtaining a broad monopoly at least for the first 5  years life of the registered trade mark which can be enforced despite not being used;  and (2) thereafter if under threat, withdrawing down to the narrower goods and, or services in respect of which genuine use of the trade mark can be established.

That practice has recently come under scrutiny by Arnold J. in the UK High Court and the very existence of broadly-worded trade mark registrations threatened.  The two cases were:

• Sky plc v. Skykick UK Limited, essentially concerning the term “computer software”; and 

• Fil Limited v. Fidelis Underwriting Limited, disputing the term “financial services”.

The arguments in brief run:

First, that such terms are too wide to meet the requirement for clarity and precision in specifications of goods and services, and therefore any registrations containing such terms are liable to be declared invalid (i.e., treated as if the trade mark had never been registered in whole or in part).

Second, and undoubtedly more worryingly, broad-claiming can signify a lack of intention to use the trade mark for such goods and services at the time of filing, which is tantamount to “bad faith”.  Bad faith in the application is a ground for invalidity of the trade mark and, taking the argument to its limit, bad faith taints the whole application, rendering the registered trade mark invalid in its entirety (i.e., even for the narrowly-specified goods and services).

Arnold J. has referred questions on these issues to the Court of Justice of the EU (CJEU) (presently the highest court in these matters).  Answers are unlikely to be forthcoming for some time.

In the meantime, defendants in registered trade mark infringement cases can make hay challenging the validity of claimants’ trade mark registrations containing wide terms.

Registered proprietors with wide specifications on the other hand will have justifiable concerns that their exclusive trade mark rights may be compromised, leaving their registrations invalid.

Arnold J’s judgments in Skykick and Fidelis are not without controversy, and it is understood that a challenge to the Skykick reference to the CJEU may be heard by the UK Court of Appeal.

For further information, contact enquiries@humphreys.law.

Humphreys Law