Sky v SkyKick: Be Careful with your Software Specifications!
In a dispute between Sky and the owners of a cloud storage and migration product SkyKick (Sky Plc v SkyKick UK Limited  EWHC 155 (Ch)), some pretty interesting questions are due to be referred to the European Court of Justice (ECJ).
Software: too vague as a specification category?
Brand owners will want to be careful around the use of the blanket term Computer software in Class 09 of their specifications.
Sky have a number of marks using this particular wording in their specifications, and SkyKick are hoping to scrub them out for being too vague. The argument is that there are all sorts of computer programs out there, covering flight simulators and hospital design. To cover them all via a blanket term should be considered imprecise and unclear.
Of course, there are plenty of EU and UK marks already out there that cover Computer Software. Their owners, like Sky, would disagree.
Everyone will have to wait as the European Justice will now have to determine:
- Whether a term like this lacks clarity or precision and, if so;
- Can a mark that is already registered be declared invalid on this basis?
If the answer comes back that, yes, computer software and its ilk are imprecise and can be invalidated, we can only assume that there is likely to be a wave of litigation off the back of it. For a start, we will not know whether any further specification terms will suffer the same fate. It seems logical to expect Software as a Service to follow a similar fate in Class 42.
Hopefully ™ owners will be given the opportunity to amend specifications in some sort of a grace period (as happened after the IP Translator case with Article 28 – I won’t go into that here ).
Bad faith to be greedy in your spec?
It is common practice to try and grab as much IP real estate as reasonably possible when drafting a specification. In the UK, we have always been reasonably cautious as there is a requirement to declare a bona fide intention to use a mark in respect of the goods and services in its spec. However, there is no such declaration required by the EUIPO.
Mr Justice Arnold, presiding over this case, suggests that European decisions indicate that EUTMs that go for more than they can reasonably claim to be interested in using, are vulnerable to being invalidated for bad faith.
The ECJ has been asked to rule on whether it is bad faith to apply for a mark without an intention to use specific goods and services, and whether this would invalidate the whole or part of the mark.
The ECJ is likely to confirm that it is bad faith, and one would expect that it would only be bad faith to the extent of the specification terms that were never intended to be used. Not an especially radical change, but a caution against overly broad specifications.
What will the effects be?
Take the following utterly made-up EUTM spec as an example:
Class 09: Computer software; computer software for sofa design.
Let’s imagine a world following ECJ’s confirmation that computer software is too vague, and that bad faith can apply to overly broad specifications where the registrant has no intention of use. The equally made-up SoFear company, who produce black metal recording software could potentially invalidate the mark, in whole or in part, on the grounds that:
- Computer software is too vague, it can’t possibly cover all software including black metal recording software, and;
- SOFEAR had no intention of ever producing the black metal software covered by the mark, it was applied for in bad faith.
Still confused? Don’t worry about the ECJ’s decision, and speak with our IP experts to make sure that your marks are protected.