Sky vs. SkyKick: The CJEU lets trademark owners breathe a sigh of relief

On 29 January 2020 the CJEU delivered its eagerly awaited judgment in the Sky vs. SkyKick case. However, the ruling does not have the wide-ranging consequences that were initially expected based on the opinion of the Advocate General. As a result, the CJEU did not follow the opinion of the Advocate General for the most part. This means that trademark owners can now breathe a sigh of relief.

The judgment in Sky vs. SkyKick (CJEU 29.01.2020, C 371/18.) is the response to a preliminary ruling by the British High Court in trademark infringement proceedings between the Pay-TV provider Sky and SkyKick, a provider of e-mail migration and cloud backup services. Sky registered its trademark "Sky" for goods and services, which included very broad terms such as "computer software" or "telecommunications services". Therefore, the referring court found a collision with SkyKick. SkyKick, however, denied trademark infringement and argued that the trademark "Sky" was invalid because the list of goods and services was too vague. In addition, the application for registration would have been filed in bad faith due to lack of intention to use the mark.

Clarity and precision

Although the Advocate General's original opinion called for strict clarity on the terms used in the lists of goods and services, the CJEU finally deviated from this legal interpretation.

The CJEU stated that a trademark cannot be declared invalid on the sole ground that the terms in the list of goods and services lack clarity and precision. It also made clear that apparently unclear and imprecise terms such as "computer software" are not defined so broadly as to be "contrary to public policy". The concept of "public policy" focuses only on the sign itself (in this case "Sky") in a commercial context and not on the terms used for the goods and services concerned. Such a clarification is a welcome relief for many trademark owners. 

Bad faith

Originally, the Advocate General held that an application for a trademark is made in bad faith if the applicant applies for registration of a trade mark in a field for which he does not wish to use the trademark at all or only applies for registration in order to make it more difficult for competitors to enter the market. The CJEU backed off from this point as well and clarified that bad faith may not be assumed simply on the basis that the trademark applicant had not prepared for a business sector corresponding to the goods and services covered by the trademark application.

Instead, the CJEU refers to the 5-year grace period for use of a registered trademark. In this context, bad faith can only be assumed if there are conclusive and objective indications that the applicant intends to harm third party interests.

What are the consequences of the judgement?

The CJEU maintains the current status quo and there is no alignment with the US trademark system, according to which trademark registrations can be challenged on the grounds that there was no intention to use the mark at the time of registration. As a consequence, European trademark law will not require proof of the trademark applicant's intention to use the trademark.

Generally speaking, owners of trademarks which are protected for extensive goods and services do not have to fear the immediate cancellation of their trademarks if they are still within the 5-year grace period for use.

At the same time, the judgement highlights that future trademark applicants must conduct comprehensive research for possible conflicting trademarks before applying for their intended trademark. The reason for this is that registered trademarks which are protected for a wide range of goods and services may block the intended trademark application. Applying for a new trademark without infringing on any existing rights is therefore becoming an increasing challenge.

Co-Author: Angelika Stütz