Advocate General Evgeni Tanchev of the European Court of Justice has released his opinion on the ongoing Sky v Skykick case.
Sky, the well-known telecommunications company, brought proceedings for trademark infringement and passing off against Skykick, a business providing cloud technology services.
Sky relied upon its UK and EU trademarks for “SKY”, which cover a broad list of goods and services. Skykick argues that Sky had no genuine intention to use the “SKY” mark in respect of many of these.
One of the recommendations made by the Advocate General was that applying for an EU trademark without any genuine intention to use it for certain goods and services applied for, may, in certain circumstances, constitute bad faith, leading the mark to be invalidated at least in part.
If the Advocate General’s findings are adopted, lawyers have warned that infringing parties could raise arguments regarding lack of genuine intention to use as a matter of course, and consequently, costs could increase for trademark owners looking to protect their intellectual property rights.
Thomas Kirby, a solicitor in the Intellectual Property team at national law firm Clarke Willmott LLP, said: “We will obviously need to wait to see if the [Court] follows the Advocate General’s opinion. If this is the case, new businesses will no doubt welcome the finding that broad monopolies over terms such as ‘computer software’ could become a thing of the past”.
He continued: “Trademark owners and practitioners alike would need to be wary of applying for goods and services for which there is no genuine intention to use, but the Advocate General’s recommendation that this results in only partial invalidity takes much of the sting out of this as trademark owners would lose only those goods or services for which they had a weaker rationale for seeking protection for in the first place”.
The case is yet to be decided, but the Advocate General’s opinion will play an important and persuasive role in the decision.