The long-running Skykick saga recently reached its conclusion.

We discussed the case of Sky Plc v Skykick UK Ltd and Another last year. Sky, which owns a registration for the trade mark Sky for a broad specification of goods including "computer software", tried to enforce its registration against Skykick. Skykick responded by claiming that Sky's registration was too broad.

The UK court that heard the matter felt that the term "computer software" was indeed too vague and broad. In its words, the registration was "unjustified and contrary to the public interest because it confers on the proprietor a monopoly of immense breadth which cannot be justified by any legitimate commercial interest of the proprietor."

The UK court referred certain specific legal questions to the Court of Justice of the European Union ("CJEU"). The practice is that the Advocate General ("AG") hands down an opinion before the CJEU considers the matter. The AG took the view that the term "computer software" isn't sufficiently clear. In the words of the AG, the term "lacks precision". It creates a "monopoly of immense breadth". Seeking such broad coverage "may constitute an element of bad faith". A registration covering the term leads to "register clutter". Moreover, it "imbalances the IP bargain against the public interest".

So, what did the CJEU make of these issues of lack of precision and bad faith? The CJEU generally follows the advice of the AG, but on this occasion it took a different approach. The CJEU held that the use of the term "computer software" was not problematic on the grounds of imprecision or lack of clarity, as these are not grounds for invalidity.

But the CJEU did say that the use of the term "computer software" could amount to bad faith in certain circumstances. One such circumstance would be a lack of intention to use the mark for those goods at the time when the application was filed. Another might be indications that at the time of filing the application, the intention was to dishonestly undermine the interests of others or indications that the intention was to obtain an exclusive right "for purposes other than those falling within the function of a trade mark".

The case then went back to the referring court (the UK court), which now had to apply the CJEU's guidelines. The UK court held that Sky had registered the trade mark in bad faith. There were various reasons for this finding. For starters, when Sky originally filed the application for registration, it had no intention of using the mark for the goods covered, in other words, computer software. Even now, there was no foreseeable prospect of the company ever intending to use the mark for these goods. The company had, in the words of the court, adopted a deliberate strategy of seeking very broad trade mark protection "purely as a legal weapon".

The court went on to hold that as the term "computer software" was too broad, it had to be qualified by reference to particular services such as television and home entertainment. Moreover, the term "data storage", that also appeared in the specification, was also too broad and needed qualification.

The Skykick decision obviously isn't binding on South African courts, but judgments of the CJEU are certainly very influential. South African companies would do well to take note of this decision.

Brand owners are generally very keen to get the broadest possible protection for their trade marks, but this can clearly leave registrations open to attack. Trade mark law does provide trade mark owners with broad enforcement rights. These rights go beyond the exact goods or services that are covered by the registration, and in the case of a trade mark that has a reputation, sometimes well beyond the actual goods or services covered. So, it makes sense to be somewhat circumspect when it comes to deciding on the specification of goods or services. In the case of computer software, the obvious solution is to simply add a qualification, as in computer software with a particular purpose or function.

Reviewed by Ilse du Plessis, an Executive in ENSafrica's IP department. 

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