Warning over broad scope trade mark applications

Out-Law News | 27 Feb 2020 | 9:35 am | 1 min. read

Businesses have been warned to ensure there is a close link between the types of goods or services they sell and the scope of trade mark protection they seek to obtain in light of a recent ruling by the EU's highest court.

The EU Intellectual Property Office (EUIPO) said the ruling shows brand owners risk their trade marks being invalidated if the scope of their applications is overly broad.

"The EUIPO would like to invite applicants to carefully consider their business needs before applying for overly long lists of goods and services," it said in a statement. "In particular, applicants are advised against including in the application goods and services solely with the intention of extending the scope of their exclusive right or for purposes other than those falling within the functions of a trade mark. Applicants who fail to abide by this principle may face invalidity actions on the ground of bad faith and suffer the total or partial invalidation of their registration, as well as bear the costs of the proceedings."

The EUIPO's warning came after the Court of Justice of the EU (CJEU) issued a judgment in a recent case referred to it by the High Court in London, which involves broadcaster and telecoms provider Sky and SkyKick, a US supplier of cloud migration software.

The CJEU said in that judgment that trade mark applications made without any intention to use the trade mark in relation to the goods and services specified will be considered to have been made in 'bad faith' and subsequent registrations may be invalidated "if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark".

The court also said that a lack of clarity and precision could lead to subsequent revocation if it can be shown the marks have not been put to "genuine use" in respect of the goods or services for which they were registered.

Trade mark law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law, said the EUIPO's warning was significant.

"It represents the start of a change in approach regarding 'bad faith' trade mark registrations in that if overly-long specifications are filed, they are unlikely to get a sympathetic hearing later," he said.

Florian Traub, also a trade mark expert of Pinsent Masons, said: "The approach regarding trade marks in the EU is still a long distance away from other systems, most notably the US, where detailed specifications and proof of use are required. Yet, trade mark owners are well advised to keep good record of their commercial strategy behind trade mark applications in order to be able to counteract possible invalidity actions later down the line."