Sky plc and Others v Skykick UK Limited and Skykick Inc.
Date: 2020-01-29
49


In that regard, it must be pointed out, as the Advocate General observed in point 33 of his Opinion, that, in the case of applications for a declaration that EU and national trade marks are invalid, the date on which the application for registration of those trade marks was made is determinative for the purposes of identifying the applicable substantive law (see, to that effect, judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12 and the case-law cited).
56


As regards, first, the provisions of First Directive 89/104, it must be noted that Article 3 of that directive provides a list of the grounds for invalidity which do not include the lack of clarity and precision of the terms used to designate the goods and services covered by the registration of a national trade mark. The seventh recital of that directive states that those grounds for invalidity are listed in an exhaustive manner, even if some of those grounds are optional for the Member States (see, to that effect, judgments of 18 June 2002, Philips, C‑299/99, EU:C:2002:377, paragraph 74; of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 78; and of 9 March 2006, Matratzen Concord, C‑421/04, EU:C:2006:164, paragraph 19). Consequently, First Directive 89/104 prohibits Member States from introducing grounds for invalidity other than those expressly provided for in that directive (see, by analogy, judgment of 27 June 2013, Malaysia Dairy Industries, C‑320/12, EU:C:2013:435, paragraph 42).
61


In any event, it must be added that the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361) cannot be interpreted as meaning that the Court intended to recognise additional grounds for invalidity, not included in the list in Article 7(1) and Article 51 of Regulation No 40/94 and Article 3 of First Directive 89/104. The Court stated, in paragraphs 29 and 30 of the judgment of 16 February 2017, Brandconcern v EUIPO and Scooters India (C‑577/14 P, EU:C:2017:122), that the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361) provided clarifications only on the requirements relating to new EU trade mark registration applications, and thus does not concern trade marks that were already registered at the date of that latter judgment’s delivery (judgment of 11 October 2017, EUIPO v Cactus, C‑501/15 P, EU:C:2017:750, paragraph 38).
64


Admittedly, the Court held, in paragraph 51 of the judgment of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748), as regards the requirement of graphic representability, that operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties. Nonetheless, those considerations apply only in order to identify the signs of which a trade mark may consist and it cannot be inferred from this that such a requirement of clarity and precision should also apply to the terms used to refer to the goods and services in respect of which the trade mark in question has been registered.
73


As regards, in the first place, the question whether Article 51(1)(b) of Regulation No 40/94 and Article 3(2)(d) of First Directive 89/104 must be interpreted as meaning that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith within the meaning of those provisions, it must be borne in mind that those provisions state, in essence, that a trade mark may be declared invalid where the applicant was acting in bad faith when he or she filed the application for the trade mark. Neither that regulation nor that directive provides a definition of the concept of ‘bad faith’. It must, however, be pointed out that that concept is an autonomous concept of EU law and that, in the light of the need for a coherent application of the national systems and the EU system of marks, the concept of ‘bad faith’ must be interpreted in the context of First Directive 89/104 in the same manner as in the context of Regulation No 40/94 (see, by analogy, judgment of 27 June 2013, Malaysia Dairy Industries, C‑320/12, EU:C:2013:435, paragraphs 34 and 35).
74


The Court has held that in addition to the fact that, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, regard must be had, for the purposes of interpreting that concept, to the specific context of trade mark law, which is that of the course of trade. In that regard, the EU rules on trade marks are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).
75


Consequently, the absolute ground for invalidity referred to in Article 51(1)(b) of Regulation No 40/94 and Article 3(2)(d) of First Directive 89/104 applies where it is apparent from relevant and consistent indicia that the proprietor of a trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in the previous paragraph of the present judgment (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 46).
76


Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of 5 years for beginning actual use consistent with the essential function of that trade mark (see, to that effect, judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas?), C‑541/18, EU:C:2019:725, paragraph 22).