Preliminary questions: bad faith when applying to register a trade mark without any intention to use it?

Case C-371-18 Sky v Skykick. Request for preliminary ruling. England and Wales High Court (Chancery Division).

Trade Mark Law.  Sky is the registered proprietor of a number of EU trade marks “SKY”, among which two figurative marks. Sky contends that Skykick have infringed these EU trade marks. SkyKick denies infringement and issued a counterclaim for a declaration invalidly of the trade marks on the grounds that the specifications of goods and services lack clarity. Skykick refers to the judgment of the CJEU in case CIPA v Registrar (IPPT20120619). The court wonders whether a lack of clarity and precision of the specification can be asserted as a ground of invalidity and if the answer is yes, if a term such as “computer software” is lacking in sufficient clarity or precision. The court also wonders whether it constitutes bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services. The court proposes to refer the questions below to the CJEU, the precise wording of which the Court will hear the parties on, but the essence of which are as follows:

“(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?

(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?

(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?

(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 good or services, but no intention to use the trade mark in relation to other specified goods or services?

(5) Is section 32(3) of the UK Trade Marks Act 1994 compatible with Parliament and Council Directive 2015/2436/EU and its predecessors?”

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