The legal environment in which AI brand owners can secure robust trade mark protection is itself subject to a critical degree of uncertainty. In particular, a case currently pending before the European Court of Justice (CJEU) specifically raises the question of how far brand owners may legitimately go in securing valid trade mark protection of a scope wider than warranted by current commercial needs and concrete plans of the trade mark owner.
In comparison with the US trade mark system, the European system has traditionally been seen to offer greater scope for technology companies to secure adequate forward looking brand protection that is not pinned specifically to the products for which they have current use or verifiable plans. Unlike its US counterpart, the European system does not require an applicant for registered trade mark protection to specify the products and services it wants to cover with any particular degree of specificity. Nor need an applicant show actual use of its trademark for the products or services it specifies, or even establish that it intends to use the trade mark for those products. (In comparison, applicants for a UK trade mark have to declare an intention to use or licence the use of the mark applied for.) The EU trade mark system thus has the virtue that the owner of a new technology brand can opt for very wide protection at the outset.
Although the EU system does allow for the possibility that the extent of a trade mark’s protection would be cut back if it is not used for all of the products and services originally covered (the “use it or lose it” principle), that possibility arises only after five years. This gives the brand owner a substantial grace period within which to see how its technology and product offering develops. The brand owner may have to accept an eventual curtailment of its scope of protection. However, supporters of the EU approach would argue this is better than the brand owner having to try to cover new ground via new applications in future, having been constrained in the first instance to obtain a protection that with hindsight proves to have been too narrow.
The pending EU case concerns the enforcement of trade mark registrations which protect the trade mark in question for a very wide spectrum of disparate goods and services, covering around half of the 45 classes into which goods and services are classified. The coverage includes technology and telecommunications products and services of a broad description. In particular, it includes “computer software”, without any limitation by reference to the function or purpose of the software. The validity of these broad trade mark registrations are challenged on the basis that the trade mark owner could not conceivably have had a legitimate commercial interest in such wide trade mark protection and that the description of goods and services provided in the registrations lacks the clarity and precision which EU trade mark law requires. The point about lack of clarity and precision is levelled specifically at the unlimited reference to “computer software.” The question before the CJEU is whether or not these arguments amount to proper grounds on which the trademark registrations could be cancelled.
If the CJEU were to rule in favour of cancellation, this would significantly affect established EU trade mark practice, and could impact on a large number of existing trade mark owners. However, whatever the outcome of the case, it does raise some important issues: what does the EU law requirement for clarity and precision actually require in practical terms; what consequences (even if not the cancellation of the registration) would flow from failure to meet this requirement; and what does this mean for AI companies in particular?