Good news for trademark owners: Trademarks with extensive lists of goods and general terms can generally neither be cancelled for bad faith nor for being contrary to public interest. This has now been confirmed by the European Court of Justice (ECJ). The ruling could nevertheless have an impact on the examination practice of the trademark offices.
In the initial trademark dispute, well-known pay TV broadcaster Sky had sued cloud service provider SkyKick for infringement of its Sky trademarks. SkyKick countered with an application for cancellation of the Sky trademarks. According to SkyKick, Sky's trademarks had partially been registered for goods and services that a telecommunications company did not offer. In fact, some Sky trademarks are registered for “whips”, “bleaching preparations” or “beauty care for animals”, among others. The marks were therefore only registered to prevent other companies from entering the market which would constitute bad faith. Furthermore, certain items used in the list of goods of the Sky trademarks were too general and undefined, such as “computer software”. The resulting extensive protection was contrary to public policy.
The ECJ did not follow SkyKick’s argumentation and decided that a lack of clarity or precision of the terms applied for were no grounds for a subsequent cancellation of the trademarks. Sky had not acted in bad faith either. According to the ECJ, a trademark owner acts in bad faith if he applies for trademark protection either with the intention of undermining the interests of third parties or for purposes other than those falling within the functions of a trademark. However, the bad faith of the trade mark applicant cannot be presumed on the basis of the mere finding that, at the time of filing his or her application, the applicant had no economic activity corresponding to some of the goods and services referred to in that application.
Tip for the practice:
Also in the future, applicants do not have to limit the list of goods and services to those which they will certainly offer. They can instead keep up the practice of using terms from the Nice Classification. Even if these indications are generic, there is no threat of cancellation after registration due to a conflicting public interest. However, certain vague terms could be examined more strictly by the trademark offices in future.