CJEU fails to provide clarity on the term ‘computer software’ for trade marks

The CJEU last week had the opportunity to rule on whether the term ‘computer software’ was too broad for the purposes of a trade mark registration. The case considered various questions of trade mark law, including if it was possible to obtain trade mark protection for goods and services in the class of ‘computer software’ – a term which can cover a huge array of goods and services in the modern world. Unfortunately, the CJEU did not need to give its view on this point due to its conclusions on other issues, and so there remains an element of uncertainty in this area.

Background

The CJEU judgment was part of an ongoing and wide-ranging dispute between the Sky group (of satellite and digital TV broadcasting companies) and a cloud software start-up called SkyKick. The core of the dispute centres on Sky’s claim that SkyKick had infringed its trade mark registrations for the word SKY. SkyKick’s defence included arguing that Sky’s trade marks should be declared partly invalid, as they covered goods and services which were not specified with sufficient clarity and precision. Sky’s registrations covered a wide range of goods and services, including ‘computer software’.

The UK High Court (the judge was Arnold J) referred a number of questions on the case to the CJEU . Two of the questions were: (a) whether a trade mark can be declared wholly or partially invalid on the ground that some or all of the terms in the class of goods and services for which the mark is registered lack sufficient clarity and precision; and (b) if yes, whether ‘computer software’ is such a term.

Previous Opinions on ‘Computer Software’

Arnold J’s initial view was that ‘computer software’ was generally too broad for a trade mark registration. He said it should be treated similarly to the term ‘machines’ in the EU (for which it is not possible to register a trade mark without further specification). Referring to a 1995 case, he added that in the present day ‘computer software is even more ubiquitous than it was in 1995’. There is much force in these comments and, as the judge himself added, this approach is in line with the practice in the US, for example.

Moreover, prior to the CJEU judgment, the Advocate General (“AG”) gave his opinion on the case. The AG agreed with Arnold J that ‘registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest’, as it would give the owner ‘a monopoly of immense breadth which cannot be justified by any legitimate commercial interest’. As an interesting aside, the AG also suggested that trade marks registered for ‘telecommunications services’ and ‘financial services’ may also be overly broad.

CJEU Judgment

Regrettably, the CJEU’s judgment did not specifically discuss the term ‘computer software’. Having found that a trade mark cannot be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services lack sufficient clarity and precision, it was not then necessary for it to look into the term ‘computer software’ itself.

The CJEU did provide a degree of comfort to SkyKick, and anyone who finds themselves in a similar position. It stated that ‘a national or Community trade mark registered for a range of goods and services designated in a manner which lacks clarity and precision is, in any event, capable of being protected only in respect of the goods and services for which it has been put to genuine use.’ So, Sky’s trade mark could not be challenged for invalidity due to being registered for a term which lacks clarity and precision. However, if ‘computer software’ is held to lack such clarity and precision, Sky would only be able to bring an infringement claim against SkyKick in respect of goods and services for which Sky’s mark has been genuinely used. Unfortunately though, the CJEU did not opine on whether ‘computer software’ was such a term.

As the CJEU did not rule definitively on this question, the law here has not been clarified as far as could be wished. Nevertheless, it would seem that those registering a trade mark in the field of computer software should consider if they want to clarify the goods and services for which protection is sought (e.g. ‘computer software for [●]’, as is in fact common practice often anyway). Further, the holder of such a right intending to bring infringement proceedings should gather evidence to show it has made ‘genuine use’ of the mark in respect of the same or similar goods or services to the alleged infringement.