• Henry Park

EU trademark descriptions - Just a little narrower

Last year, I blogged about the Sky v. Skykick trademark case in light of the Advocate General's (AG) opinion that found that broad description of goods and services were against public policy.

On January 29, 2020, the Court of Justice for the European Union (CJEU) issued its ruling and it did not hew to the AG's opinion (see Curia link).

The CJEU found that broad descriptions of goods and services is not a ground of invalidity, and that a lack of clarity and precision in the descriptions of goods and services is not against public policy, which was a ground for invalidity (Opinion at paragraphs 54-71).

The CJEU found that a trademark applicant that a trademark application made without any intent to use the mark on goods and services constitutes bad faith if the applicant "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", and that bad faith would only apply against specific goods and services (Opinion at paragraphs 72-81).

The CJEU found that national laws could require applicant state that the mark is being used, or that the applicant has an intent to use the mark -- so long as that requirement does not constitute a grounds for invalidity (Opinion at paragraphs 82-87).

Photo by Inge Wallumrød from Pexels


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