Union trade marks - ECJ confirms right to wide scope of protection

In an eagerly awaited ruling (C-371/18), the European Court of Justice (ECJ) clarified on 29 January 2020 that EU trademarks can, as before, claim protection for goods and services to a large extent. According to this ruling, a comprehensive claim for protection is neither vulnerable to cancellation due to a lack of clarity, nor can it be regarded as being in bad faith without further ado.

The decision was based on a question submitted by the High Court of Justice (England & Wales) in connection with a dispute between the Sky broadcasting group and the cloud software provider Skykick. Skykick was sued by Skykick for infringement of its EU trademarks SKY, which also claimed protection for software in Class 9 and various other goods and services similar to cloud software and corresponding services. In the UK main proceedings Skykick had defended itself, inter alia, by arguing that the indication of goods „software“ as claimed by Sky’s trademarks was too vague, as it did not clearly and unambiguously indicate what kind of software exactly was to be understood by this. Furthermore, Skykick argued that Sky could not have intended to offer software and related services under the trademark SKY and that the trademarks had been applied for in bad faith for this reason. The High Court of Justice now wanted to know from the ECJ how the arguments presented by Skykick were to be assessed under European Union trademark law.

In the event that Skykick’s arguments would have been accepted by the ECJ, this would have had serious consequences for a large number of other European Union trademarks with a comparably broad claim to protection, which would have become vulnerable to cancellation as a result.

No legal basis for cancellation due to lack of clarity or precision

However, the ECJ has come to the conclusion that a lack of clarity or unambiguity does not constitute a ground for invalidity or cancellation, as there is no legal basis for such a ground. The ECJ was also unable to identify an infringement of public order due to lack of clarity or unambiguity of the goods or services claimed. The fact remains that a detailed specification of the goods and services claimed – as required by the US Trademark Office, for example – is not necessary in the EU.

Extensive specification of goods and services per se does not constitute bad faith

Furthermore, the ECJ has clarified that filing an application for a trademark without the intention of using it for the goods and services covered by the registration may constitute bad faith if the applicant for the trademark in question had the intention either to harm third party interests in a manner contrary to fair trade practices or to obtain an exclusive right for purposes other than those belonging to the function of a trademark even without reference to a specific third party. However, the mere fact that a trademark application was filed with a broad list of goods and services is not sufficient for the ECJ to assume that the application was filed in bad faith, even if the goods and services claimed have little or nothing to do with the applicant’s field of activity. However, the ECJ emphasises that all goods and services for which the trademark has not been used after five years from registration can of course be successfully attacked with cancellation requests.

All-clear for trademark owners

Even after the ECJ’s decision, trademark applicants will still be able to use general designations for goods and services within the scope of a (EU) trademark application, as has been the case up to now, and also have the possibility to claim trademark protection to a greater extent than is appropriate for their own activities, at least for the five-year period from registration. Such a broad claim to protection can make sense in particular if an actual expansion of one’s own activity cannot be excluded at the time of application, even if there are no concrete indications for this.