IP partner Sahira Khwaja comments on Sky v Skykick AG Opinion
LONDON, 17 October 2019 - Sahira Khwaja, partner at Hogan Lovells, said: "In a thorough and thoughtful opinion, Advocate General Tanchev has agreed that a trade mark cannot be declared "invalid" solely because the terms used in its specification are insufficiently clear and precise. However, AG Tanchev also said that "computer software" is too broad and variable a term to be included in a mark's specification and still be compatible with the trade mark acting as an indicator of origin. As such, registration of a mark for "computer software" without any qualification was "unjustified and contrary to the public interest".
"The remaining questions referred to the CJEU concerned whether applying for a mark without any intention to use it amounted to "bad faith", and if so what effect that should have. The AG concluded that, in certain circumstances, applying to register a mark without any intention to use it for the specified goods or services might constitute an element of bad faith, particularly if it is done with the sole object of preventing a third party from entering the market.
"If the CJEU follows the AG's Opinion then holders of registrations for "computer software" will be faced with an immediate problem in determining the scope of trade mark protection afforded by those registrations. This means the scope of protection may end up being narrower than had been previously thought. Companies may need to review their brand portfolios and brand protection strategies, and make any necessary adjustments.
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