Case C-371/18, Sky vs. Skykick, gives new valences to the interpretation of bad faith as a ground of invalidation of a trademark. From here, the jurisprudence will bloom with some further criteria of appreciation of bad faith. In the mentioned case, CJEU answered the questions referred for a preliminary ruling focusing on invalidity mechanisms, and stated that: (i) lack of clarity and precision in the goods and services specification in respect of which the trademark was registered does not represent ground for invalidity of the trademark, but the corrective measure in such case is revocation for non-use, and (ii) the registration of a trademark without any intention to use it may constitute bad faith, if there are objective, relevant and consistent indications that the applicant had the actual intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or 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.

See the Judgement here.

C-240/18 P concerns the registration of the trademark “Fack Ju Göhte”, the name of a German comedy of 2013, which raised debates on the principles of morality, as ground for refusal under Art. 7(1)(f) EUTMR. Although both the Board of Appeal of EUIPO and the General Court ruled that this registration would be contrary to the accepted principles of morality due to the phonetic reproduction from English of the terms “Fack Ju”, CJEU comes to disagree with this approach, when examining all the relevant circumstances of the case. The CJEU stated therefore the criteria for assessing an EUTM application under “contrary to accepted principles of morality” objection, which includes: (i) public morality is not a “bad taste check” and (ii) requires a breach of “fundamental” moral values and standards of society at a given time, (iii) contextual elements relevant for the perception of the sign have to be taken into account, such as the current use of the sign (the comedy was successfully played). Also, not to forget (iv) the freedom of expression.

See the Judgement here.

C-766/18 P, HALLOUMI vs. BBQLOUMI, refers the matter of distinctive character when analyzing the likelihood of confusion with an earlier collective trademark. In this case, CJEU ruled that, although the essential function of a collective mark (namely to distinguish the goods and services of the members of the association that is the proprietor, from those of other undertakings) must be taken into account to understand what likelihood of confusion means, the case-law establishing the assessment criteria of likelihood of confusion is equally applicable to cases involving an earlier collective mark, without derogations, and the distinctiveness of the earlier collective mark must not be assessed differently than for individual marks.

See the Judgement here.

Author: Florina Enache