We’ve just had the benefit of a rare thing - a judgement from the UK Supreme Court dealing with an intellectual property issue. This time, it is to do with trade marks, and in particular the scope of a trade mark that is appropriate and permissible to apply for.
I often explain that a trade mark application basically consists of just three pieces of information - who are you, what trade mark do you want to protect, and what goods & services do you want to protect it for? You’d think, then, that a trade mark application is a simple thing to create. However, I’ve seen examples where one or more of these were either plain wrong or (at least) sub-optimal. I was once asked to help with an application where the applicant had managed to get all three wrong, which I thought was quite impressive, but we won’t dwell on that. In essence, though, careful thought is needed in relation to an application’s content. Today, we’re concerned with the scope of the statement of goods & services for which you want to protect the mark.
Now, in theory, the correct approach is to formulate a clear & concise statement of the goods and services that (a) you are using the mark on and (b) that you have a bona fide intention to use the mark on within a foreseeable future. Or, you can do what a number of larger companies do, and just list everything under the sun. Step forward Sky, the well-known UK broadcaster, who - if you take their trade mark filings at face value - intended at one point to expand from broadcasting TV shows and providing internet access to providing a wider range of goods and services including animal skins, walking sticks, and whips, harness and saddlery. One might raise a quizzical eyebrow at this - I can’t recall any other broadcaster ever expanding into the supply of walking sticks, and I have to say I would be surprised if my broadband provider emailed me with this week’s 2-for-1 offer of a range of whips in combination with my DSL line.
Now, once the registration has been in place for more than 5 years, it’s doesn’t present a problem as anyone can apply to limit the registration down to what its owner has actually used the mark on. So there is a 5 year grace period, and then reality hits home. But what about the time up to then? What if a company wields its registrations within that initial 5 years, based on a scope that it has clearly no commercial interest in ever using?
 That’s arguably what Sky have done - they have aggressively enforced those registrations in numerous cases. There is a suggestion in the judgement of around 800 decisions around the world in which Sky have secured a positive decision, many in relation to marks that merely included the letter string SKY in combination with other words and for services remote from Sky’s core business. One of those companies on the receiving end was Skykick, who offer a data migration service to help businesses transition to operating in the cloud (“kick your data into the sky”… geddit?). Skykick fought back, though, and some.
Skykick’s main argument was that Sky had filed the applications in bad faith, because they covered goods & services for which Sky had no intention of using its marks, and that once you cut down the registrations to just the services that Sky had a bona fide intention to use the mark, they would be much narrower and would not cover Skykick’s activities. They very nearly made it, too - the final decision agreed with them in principle but didn’t quite cut the registrations down far enough, and there was a small overlap with part of Skykick’s business (sadly for them, the growing and profitable part…).
Although a disappointment for Skykick, the judgement is a useful one for the rest of us. It confirms that filing an application without any real intention to use the mark on some or all of the goods & services is bad faith, in some circumstances. We can’t deduce bad faith from just the fact of a very wide specification, but that can be enough to place the onus on the applicant to provide a plausible explanation for the breadth, and if they cannot or will not do so that then weighs against them. In addition to the breadth, there needs to be something else, usually that the application was filed with some aim in mind which is other than to protect the applicant’s bona fide interest in the mark. If there is some way in which the applicant has tried to use the rules of the trade mark system to secure an outcome that it was not intended to provide, then that is bad faith. Also, using broad, vague generic terms does not get you off the hook; vagueness is a reason to interpret the terms literally and narrowly, rather than broadly.
In short, if you have one of these over-broad registrations, it’s going to be a challenge for a third party to prove they are invalid provided that you don’t do anything silly like, say, enforce the registrations against a third party operating in an unrelated field.
This is going to be very useful.  There are a large number of very broad registrations on the UK Register at the moment, partly because the UK IPO has been quite lax about examining the breadth of applications, as opposed to the EUIPO who have been completely disinterested in examining applications in this respect. We secured the limitation of a pair of such registrations just last week - fortunately, they had just turned 5 years old so it was a straightforward process for us. We now have guidance on how to approach the younger registrations of this type.
Anyway, as ever, there are a few things to learn from this.
- Don’t bother filing ridiculously broad specifications. It won’t work – if you try to enforce them then you create the evidence needed in order to invalidate them. There are legal routes to enforce your registration more widely in relation to similar goods and services, and even more widely if your mark has a reputation; use those instead.
- Don’t be intimidated by an over-broad trade mark registration. There are things that can be done to fix that.
- TAKE CARE when writing a specification of goods and services. I do think this is an art form - you want the broad generic terms because they may come in handy, but you also want the specific terms since they will be enforceable no matter what. They also signal to third parties where your real interests lie, and can make pre-opposition discussions at more amicable and constructive. Talk to me if you need help with that.
- And finally, if you’ve been filing for everything under the sun for the last few years, maybe give it a rest, put those registrations to the back of the filing cabinet, and apply a little more thought and intelligence to your filings from now on. Again, if you need help with that….
All the best. Keep safe, and may all your actions be in good faith...
Until next time.
Michael |
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