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“SKYKICK” – INTENTION TO USE AND “OVER-CLAIMING” IN EU TRADE MARK LAW

By 5th November 2019 No Comments

The CJEU’s Advocate-General Tanchev has potentially kicked the hornet’s nest…

Ever since the CTM/EUTM system case into being, there have been some unanswered questions of doctrinal orthodoxy at its heart that reflect the different approaches of the common-law and Roman-law based systems of the EU’s constituent member states to “bad faith” and the presence of an intention to use a mark at the point of filing.

To a lesser – but perhaps no less important – extent, there has been a rumbling question around the terminology used in specifications – how widely can terms be drafted? Should a wide term such as “computer software” – which gives protection for all myriad forms of software – be permitted, thus granting a wide monopoly to registrants, or should it be limited to particular, precise terms related to the applicant’s actual product as evidenced?

Although the world at large may regard these as technical questions of interest only to trade mark attorneys and aficionados, in fact they go to the heart of the public policy justification for trade mark protection, namely how much of a monopoly should the state give to businesses? In addressing these issues in his opinion on SKYKICK, AG Tanchev may have laid the ground not just for the CJEU’s determination of the last major doctrinal questions in the EUTM system and far-reaching changes in the interpretation of the harmonised trade mark law, he may also have opened the floodgates to a deluge of procedural amendments, oppositions and invalidity claims.

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