[background]

　　Sky And its affiliates (Hereinafter referred to as "Sky company" ) It has four Community registered trademarks and one UK registered trademark, All inclusive text "SKY" , Specifies that the No 9 Class sum control 38 Class a large number of goods and services items.

　　Sky Corporate action SkyKick The company infringes on the above trademark rights. SkyKick counterclaim, Petition for court affirmation Sky The company's disputed registered trademark is absolutely invalid, It shall be declared void. Reasons include, The description of the specified goods and services in the application for registration of the disputed trademark is vague, broad, Does not meet the legal requirements of clarity and accuracy; Specified goods and services that exceed their actual or planned use, Malicious registration. 　　The court of Cassation requested the European Court of Justice (Court of Justice) Give a ruling on the following issues:

　　Whether the description of the specified goods and services is unclear and accurate when applying for trademark registration, Declare the registered trademark invalid?

　　Whether the goods and services specified by the trademark are beyond the actual or planned scope of use, It is determined that the trademark owner has bad faith when applying for registration, Declare the registration of the trademark invalid?

　　When an applicant submits an application for trademark registration under the laws of the Member States, It is required to declare that it has actually used or has a genuine intention to use the trademark on the goods and services to be registered, Whether it violates EU legal norms?

　　 [conclusion]

　　The European Court of Justice first clarified, Settle disputes over trademark invalidation, The applicable law is the law in force on the date of registration of the disputed trademark application.

　　In this case, The application of the disputed trademark spans from 2003 years 4 month 14 sunrise 2008 years 10 month 20 day, So the applicable law is "European Community Trade mark Regulation (The first 40/94 No) " , and "Directive of the First Council of the European Union on the harmonization of trademark legislation in the Member States (The first 89/104/EEC No) " . Among them, "European Union regulation 40/94 No" Direct regulation of Community trademarks, "European Union regulation 89/104/EEC Number instruction" It is to standardize and guide trademark legislation of member states.

　　about "Whether the trademark in the application for registration of the specified goods and services item description is not clear and accurate, Declare the registered trademark invalid" , The European Court of Justice answers this question in two ways:

　　first, "The description of the goods and services specified in the trademark registration application is not clear and accurate" , Are not the grounds expressly listed in EU law for the invalidation of a registered trademark.

　　 "European Union regulation 40/94 No" The first 96 Article provision, A registered trademark is declared invalid through a counterclaim application, Shall be based on the invalid grounds set out in these Regulations. And control 51 Is not included in the invalid grounds specified in the clause "The specified goods and services are not clear and accurate" A term.

　　 "European Union regulation 89/104/EEC Number instruction" preamble 7 The paragraph makes it clear, The grounds for rejection or invalidation set forth in this directive are exhaustive, Member States may choose to apply specific grounds according to their national circumstances, Provided that no additional reasons may be added to the reasons listed. And instruction control 3 Neither are the grounds for trademark rejection or invalidation specified in the article "The specified goods and services are not clear and accurate" A term.

　　second, "The description of goods and services specified in the trademark registration application is not clear and accurate" , Nor can it be understood as one of the other invalid grounds already included in EU law.

　　First of all, "European Union regulation 40/94 No" The first 7 (1) (a) Article provision, Where a registered Community mark does not distinguish the source of the goods and services specified, Should be rejected. "European Union regulation 89/104/EEC Number instruction" The first 2 The article also has similar requirements for trademark laws of member States. Therefore, SkyKick Company proposition, Goods and services specified in a registered trademark must be clear and accurate, Otherwise, the function of distinguishing the source of the trademark cannot be realized.

　　The European Court of Justice stated that, Sieckmann case (2002 years 12 month 12 day, Case number: C-273/00) The ruling requires that the drawing of the registered trademark be clear enough, To enable other operators to accurately understand the registered trademarks or trademark applications of their existing or potential competitors, And relevant rights information. But the clarity and accuracy here, The trademark is applied for the mark itself, This requirement cannot be extended to the item description of goods and services specified by the trademark.

　　secondly, "European Union regulation 40/94 No" The first 7 (1) (f) Bar sum "European Union regulation 89/104/EEC Number instruction" The first 3 (1) (f) Article provision, Where a trademark application violates public policy, Should be rejected.

　　The European Court of Justice stated that, Under the semantics of the above specification "Public policy" The concept cannot be understood as, And the trademark application itself features——For example, the clarity and accuracy of the goods and services specified by the trademark——correlation, Regardless of the characteristics of the mark applied for registration.

　　Specified goods and services beyond the scope of actual or planned use, Whether the trademark owner can be identified as malicious when applying for registration, And declare the registered trademark invalid?

　　 "European Union regulation 40/94 No" The first 51 (1) (b) Bar sum "European Union regulation 89/104/EEC Number instruction" The first 3 (2) (d) All provisions, The applicant has bad faith when submitting the trademark application, A trademark may be declared invalid.

　　Although the above regulations and directives are not correct "malicious" The term is clearly defined, But according to its common meaning in everyday speech, Consider the background of trademark legislation, The European Court of Justice held that, "malicious" Should be understood as: Dishonest intent and attempt in trading activities. The aim of EU trademark legislation is to protect free competition within the EU. To encourage operators to attract and retain consumers by providing high-quality goods and services, Business operators are allowed to register trademarks, Enable consumers to accurately distinguish the operator's goods and services from other operators.

　　Therefore, "Malicious application" Should be understood as: When the applicant submits an application for trademark registration, Not for the purpose of fair play, Willfully impairing the interests of a third party in a dishonest manner; or, Not for a specific third person, Attempts to acquire exclusive rights other than trademark functions.

　　Only existence objective, Related and consistent evidence, Indicate the applicant at the time of submission of the application, exist "Not for the purpose of fair play, Intent to harm a third party in a dishonest manner; or, Not for a specific third person, Attempts to acquire exclusive rights other than trademark functions" Equal subjective intent, To be able to determine that the application was filed in bad faith. Not only when the applicant files an application for trademark registration, No economic activity related to registered goods and services has been carried out, That it constitutes malice.

　　When an applicant submits an application for registration under the law of the Member State, You need to declare that you have actually used the trademark on the goods and services to be registered or that you have a genuine intention to use it, Whether it violates EU legal norms?

　　 "British trade mark law (1994 years) " The first 32 (3) Article requires the applicant to file a trademark application, It must declare that it has actually used the trademark or has a bona fide intention to use it for the goods and services to be registered.

　　On one hand, "European Union regulation 89/104/EEC Number instruction" preamble 7 The paragraph is clear, Although Member States are allowed to choose to apply the grounds for rejection and invalidity set out in the directive, But member states are prohibited from adding additional reasons.

　　On the other hand, The directive preamble No 5 Paragraph point out, Member States have the right to decide on trademark registration, Revocation and invalidation of program specifications.

　　Therefore, Member States may require applicants to provide statements of true or bona fide use in the rules of procedure. Breach of such obligations, Evidence that may constitute bad faith in the filing of the trademark application, However, the violation of this requirement cannot be directly regarded as the ground for invalidating the trademark.

　　 [comment]

　　The ruling in this case reaffirms the exhaustive list of grounds for trademark rejection and invalidation set out in EU law, Member States shall have the right to choose among the stated reasons for application according to their actual national circumstances, But no other reason may be added to this.

　　There is another point in this case that deserves special attention, The English Court of Admissibility mentioned, "Due to the "British trade mark law (1994 years) " The first 32 (3) Provision of article, In the practice of trademark law in Britain, British courts and judges pay more attention to the real intention of the applicant when submitting the application for trademark registration" .

　　2020 years, Britain is officially leaving the European Union, Eu law is no longer binding on UK law. According to the current trend of practice in Britain, Whether the real use and bona fide use intentions of trademark applicants will be examined more strictly in the future, Even listed it as the reason for trademark invalidation, All these are worthy of the attention of the trademark owner.

　　author: Liu Dan, Esabarry Legal Counsel

　　source: Esabaril (ELZABURU) Intellectual property rights