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SkyKick preview: will the CJEU whip up a storm? (free)



Ed Conlon, London


Europe’s highest court will decide Sky v SkyKick tomorrow, January 29, in a case that has attracted much attention in trademark circles

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The Court of Justice of the EU is set to clarify whether trademarks that are too broad contravene public policy, resolving a dispute between UK telecoms company Sky and cloud management business SkyKick.

Sky argues that SkyKick has infringed four of its EU trademarks and one UK mark, while SkyKick says those marks lack clarity and were registered in bad faith. Generally it takes issue with Sky’s broad range of protected goods and services, most notably “whips”.

In October last year advocate general (AG) Evgeni Tanchev issued his opinion. He advised the CJEU to rule that applying for a trademark without an intention to use it may constitute bad faith. However, he said a trademark cannot be invalidated on the sole ground that some specifications lack clarity and precision.

At the time, lawyers speaking to Managing IP said a finding that overly broad marks may be contrary to public policy would create concern among brand owners – particularly those with trademarks that have broad specifications.

One lawyer predicted that the tactic of registering broadly and ‘evergreening’ marks would probably be “dead in the ground”. Another said that if the CJEU adopts the AG's view it would be “another nail in the coffin for broad specifications and defensive registrations”.

In-house counsel seemed less concerned than their private practice counterparts when we sought their reaction. But they did comment that Sky’s filing strategy had been surprising and that the company had gone overboard.

The CJEU, which will issue its judgment at 9:30am CET, does not have to follow the AG’s opinion but the consensus is that it will.


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