Establishing a strong brand is essential to the success of a tech business, and so is protection of that brand against IP theft. The digital age has made misappropriation of brands so much easier, all the more reason to obtain registered trade mark protection. One of the challenges of registering your trade mark is to decide what classes to register in, and to prepare a specification describing the goods and services for which you intend to use the brand. It's not in your interest to make the specification too broad, and that just got more important - particularly in class 9 that includes "… data processing equipment, computers, computer software …"
The UK High Court has confirmed the CJEU’s ruling in Skykick: trade marks that are filed with overly broad specifications can be partly invalid for being filed in bad faith.
In this particular case, the term “computer software” in Sky’s registered trade marks was held to be partially invalid. Sky couldn’t possibly have intended to use their trade mark for *all* computer software. The trade marks were therefore filed in bad faith for this particular term. As a result, the High Court narrowed down their specifications to cover only specific kinds of software that Sky had commercial justification for.
What does this mean for trade mark owners?
When filing for trade marks in the future, it is important that applicants are specific in their coverage. The US offers an insight into the kind of drafting that we may eventually see over here in the UK as standard: not “software”, but “geolocation software”, or “software for …”. Certainly avoid “computer software” (and by extension “software as a service”), unless you really do intend to use your mark for all of it. Also consider whether there are any other vague or overly wide terms in your specifications.
Any trade mark owner with broad terms on the books should expect to see counterclaims for invalidity when enforcing their rights. If this happens, it may be appropriate to consider limiting specifications to avoid wasting legal costs. It may even be sensible to consider amending portfolios prior to legal action. Will a term like “computer software” act as a deterrent at all, when the Skykick decision makes it clear that it is unlikely to survive a counterclaim?
The High Court held today that bad faith was proved in so far as Sky applied to register its trade marks for “computer software”