Recent court decisions about bad faith, clarity, acquired distinctiveness and jurisdiction issues with enforcement have impacted on portfolio management best practice. In this webinar, Bonita Trimmer and Giles Parsons provide a trade mark litigator’s perspective on how these decisions should influence the choices of brand portfolio managers in the UK and throughout the EU. View further resources on our website - https://www.brownejacobson.com/sectors-and-services/sectors/brands

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Trade mark litigation considerations
for portfolio management

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Connect with Giles Parsons
Giles.parsons@brownejacobson.com
+44 (0)207 337 15050
Trade mark litigation considerations
for portfolio management
Connect with Bonita Trimmer
Bonita.trimmer@brownejacobson.com
+44 (0)121 296 0675

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• Sky v SkyKick - clarity, bad faith
• recent cases highlighting benefits of dual filing strategies
Overview

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• Sky v SkyKick [2017] EWHC 1769 (Ch) (13 July 2017)
• Sky v SkyKick [2017] Unreported (21 December 2017)
• Sky v SkyKick [2018] EWHC 155 (Ch) (6 February 2018)
• Sky v SkyKick [2018] EWHC 943 (Ch) (27 April 2018)
Sky v SkyKick

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SkyKick Q1
"(1) Can an EU trade mark or a national trade mark
registered in a Member State be declared wholly or
partially invalid on the ground that some or all of the
terms in the specification of goods and services are
lacking in sufficient clarity and precision to enable
the competent authorities and third parties to
determine on the basis of those terms alone the
extent of the protection conferred by the trade
mark?”
“In my judgment it is clear that lack of clarity and
precision in the specification of goods and services is
not a ground of invalidity”
(Stichting BDO v BDO at 44 -
www.bailii.org/ew/cases/EWHC/Ch/2013/418.html)

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SkyKick Q2
“(2) If the answer to question (1) is yes, is a
term such as 'computer software' too general
and covers goods which are too variable to be
compatible with the trade mark's function as
an indication of origin for that term to be
sufficiently clear and precise to enable the
competent authorities and third parties to
determine on the basis of that term alone the
extent of the protection conferred by the
trade mark?”

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SkyKick Q3
(3) Can it constitute bad faith simply to apply
to register a trade mark without any intention
to use it in relation to the specified goods or
services?”

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SkyKick Q4
“(4) If the answer to question (3) is yes, is it
possible to conclude that the applicant made
the application partly in good faith and partly
in bad faith if and to the extent that the
applicant had an intention to use the trade
mark in relation to some of the specified
goods or services, but no intention to use the
trade mark in relation to other specified goods
or services?”

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SkyKick Q5
“(5) Is section 32(3) of the UK Trade Marks Act
1994 compatible with Parliament and Council
Directive 2015/2436/EU and its
predecessors?"”
32 (3) – “The application shall state that the
trade mark is being used, by the applicant or
with his consent, in relation to those goods or
services, or that he has a bona fide intention
that it should be so used.”

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Increased
importance of dual
filing strategies

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• Kitkat EUTM Appeals (C-84/17 P, C-85/17 P and
C-95/17 P)
– Advocate General’s Opinion (19 April 2018)
– Validity
• AMS Neve Ltd & Other v Heritage Audio Ltd
– UK Court of Appeal (1 Feb 2018)
– Enforcement – jurisdiction of the UK court
UK TMs v EUTMs - recent developments

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Société des produits
Nestlé SA v Mondelez
UK Holdings & Services
Ltd (C-84/17 P)
• EUIPO also appealed (C-95/17P)
- GC considered national borders
• Mondelez also appealed (C-85/17P)
- GC applied wrong test
- EUTM not distinctive in UK etc.
- Inadmissible (not unsuccessful)

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Nestle v Mondelez
• applicable to many EUTMs (not just shape
marks)
• proof of acquired distinctiveness
separately in every MS where not
inherently distinctive?
• here no evidence for Luxemburg and
insufficient evidence for Belgium,
Ireland, Greece and Portugal

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Nestle v Mondelez
• every MS? No, evidence can be
extrapolated but only with good reason
• vast majority is not “the EU”
• “Market comparability”
• geographical proximity
• historical links
• common language
• common customs or practices

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Nestle v Mondelez
• GC didn’t consider “whether… the
acquisition of a distinctive character
through use in [those 5 MS] could be
extrapolated, on the basis of the
evidence provided for the other…
markets”
• but Nestle hadn’t led any evidence re
“market comparability”
• therefore Appeal should be dismissed

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CAMS Neve Ltd &
Other v Heritage
Audio
• Court of Appeal
• enforcement – the jurisdiction of the
courts of England & Wales
• web site infringements
• different depending on whether a
national (UK) mark or EUTM?
• CJEU reference pending

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CAMS Neve Ltd &
Other v Heritage
Audio
• UKTMs + other national rights “Recast
Brussels Regulation”
• Defendant’s domicile
• "the place where the harmful event
occurred or may occur"
• the place of the event giving rise to the
damage; or
• the place where the damage occurred

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CAMS Neve Ltd &
Other v Heritage
Audio
• website targeting UK (& other) consumers
using a UK mark?
• L’Oréal SA and Ors v eBay International
BV and Ors = use of the offending sign in
the UK
• the place where the damage occurred (in
respect of such use)?
• place where right is registered

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CAMS Neve Ltd &
Other v Heritage
Audio
• websites targeting UK (& other)
consumers using a EU mark?
• EUTM Regulation:
• Defendants domicile
• the MS “in which the act of
infringement has been committed or
threatened”
• not the same as under Brussels Regulation

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CAMS Neve Ltd &
Other v Heritage
Audio
• Nintendo v BigBen (C-24/16 & C-25/16) –
September 2017
• infringements in different MS “an overall
appraisal of the defendant’s conduct to
determine the location to which its
original activity could be traced”
• website offers - “the place where the
process of putting the offer for sale
online by that operator on its website
was activated”

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CAMS Neve Ltd &
Other v Heritage
Audio
• Court of Appeal clearly unhappy
• referred 3 questions to CJEU
• hoping for a ‘yes’ to 1st question. This
asked whether it had jurisdiction in this
type of case (where the Defendant was
domiciled in Spain and had offered for
sale identical goods under an identical
sign via its website which was targeted at
UK consumers and other EU consumers)

22. Have your say @brownejacobson
Connect with Giles Parsons
Giles.parsons@brownejacobson.com
+44 (0)207 337 1505
Get in touch
Connect with Bonita Trimmer
Bonita.trimmer@brownejacobson.com
+44 (0)121 296 0675