News & Insight

IP February 24, 2022
Registered trade mark wide-claiming: the pendulum has swung

Registered trade mark wide-claiming: the pendulum has swung

Registered trade mark monopolies for goods and, or services specified in wide terms like computer software have always been controversial in modern trade marks law.

Shortly after the new trade marks law was introduced in the UK Trade Marks Act 1994, Laddie J stated in Mercury Communications v. Mercury Interactive (1995) his view that:

              “[I]t is thoroughly undesirable that a trader who is interested in one limited area of computer software should, by registration, obtain a statutory monopoly of indefinite duration covering all types of software, including those which are far removed from his own area of trading interest.”

In January 2020, the Court of Justice of the EU (“CJEU”) gave a ruling on trade mark wide claiming in Sky v. SkyKick. The ruling was in response to questions referred to the CJEU by Arnold J who was hearing the case in the High Court.

The CJEU essentially ruled that wide-claiming in trade mark application was not per se a ground for invalidity of any resulting registration.  Although applying for a trade mark with no intent to use could render a registration invalid for reasons of bad faith in the application, this was only if some culpable conduct was additionally present.  An example of the latter is evergreening: that is, re-applying for a trade mark in order to evade the 5-year use requirement in relation to registered goods and, or services as occurred in the MONOPOLY case.

According to EU normal procedure, the ruling was handed down by the CJEU for application by the national court to the facts in hand.

Post-Brexit, however, it was likely that the English judiciary might express differing views, which was exactly what happened here.

When Sky v. SkyKick returned to the High Court, Arnold LJ (who had been meanwhile promoted to the Court of Appeal) held at first instance that Sky’s trade mark registrations were partially invalid for computer software. Sky had not intended to use their trade marks for computer software at large but only those types of software related to Sky’s businesses of broadcasting, telephony and broadband provision. Sky’s trade marks had partially been applied for in bad faith. Arnold LJ cut down Sky’s computer software specifications to reflect Sky’s trading interests.

Arnold LJ’s decision provided a useful counter-attack to defendants accused of registered trade mark infringement of wide terms like computer software or financial services at points of time when claimants’ registrations were too young for standard 5-year non-use challenges.

That defence has gone (at least for the time being) following the result of Sky’s appeal to the Court of Appeal, which was handed down and published on 26 July 2021.

Sir Christopher Floyd (a retired member of the Court of Appeal) giving the judgment of the Court held that Arnold LJ had erred at first instance. Sky’s registrations for computer software were, on the contrary, valid in their entirety. Sky had intended on application to use their trade marks in relation to Sky’s substantial businesses in computer software albeit not all computer software. There was no bad faith:

An applicant for a trade mark does not have to formulate a commercial strategy for using the mark in relation to every species of goods or services falling within a general description”.

The decision was welcomed by proprietors whose existing registrations covered wide terms.

However, it is always prudent to frame applications for trade mark registration in ways that reflect a trader’s current and prospective trading interests.

A trade mark registration must genuinely be used across the specification within 5-years of registration and in any 5-year period thereafter.

If a specified term of goods or services comprises recognisable sub-categories (as with computer software) it is liable to be cut down to match only proven uses once the registration passes its 5th birthday.

Our team at Humphreys Law are specialists in registered trade mark prosecution, maintenance and enforcement, including drafting appropriate specifications, as well as in all types of intellectual property legal work.  If you or your business are affected by any of the above issues, contact Tristan Morse.

All the thoughts and commentary that HLaw publishes on this website, including those set out above, are subject to the terms and conditions of use of this website.  None of the above constitutes legal advice. Much of the above will no doubt fall out of date and conflict with future law and practice one day. None of the above should be relied upon.  Always seek your own independent professional advice.

Humphreys Law