Brand protection experts said, In light of a recent ruling by the High Court in London, Enterprises should carefully check their trademark protection scope.

2020 Summer of New Year, The judge of the high court ordered the trademark dispute "winner" Bear one's own burden 150 Ten thousand pounds in legal costs. The fee is a sanction against the winning company for specifying goods and services that are too broad.

Florian, a trademark expert．Traub (Florian Traub) representation: "After the court's decision, If the range of goods or services specified by the trademark is too broad, Bringing a lawsuit would be risky——Not only was the trademark partially invalidated, And the court may order against the trademark owner in terms of costs. "

The case involves British telecoms providers Sky And U. S. cloud migration software provider SkyKick. Sky Sue SkyKick Infringe upon 5 A UK and EU trademark. SkyKick right Sky Challenge the validity of the trademark, And said the trademarks were registered in bad faith, The reason is that it covers too broad a range of goods and services, It should therefore be revoked.

Early in 2020 years 1 month, The European Court of Justice clarifies the legal issues involved in this area, It points out that if the applicant for trademark registration violates the good faith practice and deliberately damages the interests of a third party, Or not against a specific third party but for a purpose other than the function of the trademark, Applications for registration that do not intend to use the trademark in respect of specified goods and services will be considered "malicious" , The trademark should be revoked.

The High Court of Justice in London Sky The decision of the European Court of Justice was referred to in the case, identification Sky Deliberately for some goods and services (It is not intended to apply the trademark to such goods and services) Registered trademark, Therefore declare Sky in "Computer software" and "Data storage" Class trademark is invalid.

Traub said: "Companies seek trademark protection not only for core goods and services, It also extends rights to unrelated goods and services, To prevent direct competitors and anyone who wants to exploit its brand reputation from using the logo. Before that, This is all perfectly legal. " Ian, an intellectual property law expert．Connor (Iain Connor) representation: "In light of the latest ruling, Trademark owners should reflect before proceeding in the UK, Otherwise, they could face legal costs. "

Traub said, The trademark owner might want to "Clear one's head" , To prepare for future enforcement actions. "The process requires a review of the scope of each trademark registration that is critical to the business. " Traub also points out that, High court decision Sky v SkyKick The ruling underscores the importance of searching before launching a new brand. SkyKick argue, The court should consider the financial burden it faces in rebranding to avoid violating the injunction, So the court should not grant the injunction, But the court disagreed. Injunction pair SkyKick Influence of "To a large extent SkyKick self-inflicted" .

One reason is that "SkyKick No international trademark search was conducted" . "Before the expansion of the enterprise, The launch of a new product or service or entry into another jurisdiction should proceed 'Freedom of management' retrieval, To ensure that there are no barriers to using the brand name. Early search can save a lot of time and cost, You can look for other brand names when the search is unclear. Searching across multiple jurisdictions and industries can be expensive, It is therefore critical to determine the appropriate search scope. "

The high court's ruling is not the final word. Sky and SkyKick Both can be appealed against tort and malice. The appeals court will probably decide 2021 The question was heard in the second half of the year.

(Compiled from www. pinsentmasons. com)

Reprinted from China Intellectual Property Network   translation: Rason group　proofread: Wang Dan

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