ECJ in the SKY / SkyKick case: good news for trademark owners

Trademark owners can let out a sigh of relief. An unclear description of goods and services of a trademark does not invalidate the trademark registration. And if the applicant is not at all economically active in relation to the goods and services concerned, this is no reason to assume 'bad faith'. For example, a telecom operator can simply apply for a trademark for whips or chewing gum. Even if it is very likely that the applicant will not use the trademark after all, bad faith is not given. Bad faith is when objective, relevant and consistent evidence shows (i) that the applicant intends to unfairly undermine the interests of third parties, or (ii) that the trade mark serves a purpose other than that for which it is intended (in particular: as an indication of origin). This decision of the Court of Justice in SKY/Skykick is closely related to what is called 'abuse of rights' under Dutch law. The Court of Justice also refers to the recent judgment in the Koton case.

In trademark land, SKY/Skykick was eagerly awaited. A stricter judgment would mean that many trademark portfolios would be under a magnifying glass: registered too vaguely and too broadly, possibly invalid? It is all not that serious.

‘Bad faith' is an open standard that is fleshed out on the basis of concrete, objective circumstances. Anyone who does not use a trademark, but does file a new trademark application every 4-5 years in order to circumvent the rules for 'normal use', is at risk: bad faith can then be assumed for the repeated application. Or is an initial repeat application not a sufficiently 'consistent' indication yet? The judge has plenty of room to give an appropriate interpretation. On a case-by-case basis, it will be examined whether the filing has an 'unfair' purpose.

Want to know more about bad faith or trademark invalidity?

Maarten Haak