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EU courts have recently begun to show great concern about dishonesty in registering trademarks in the European member states.

What is unfair behavior in this case? Case law makes it clear that it is a transaction that does not comply with the standard of acceptable commercial conduct. But what does this mean in relation to protecting the rights to TM? This, in particular, means that some companies intentionally register trademarks in areas where they do not even plan to use them so as not to allow other companies to register and use a brand that includes any element of the trademark, whether verbal or graphic.

Today, we are investigating an example of unfair behavior on the basis of a specific court trial. The article will be in handy to those who are interested in protecting property rights to trademarks in Europe.

How to divide the Sky?

Recently, a high-profile case has been concluded between the SkyKick software provider and Sky broadcasting company. The latter was accused of acting in bad faith when it extended the protection of its brands to a wide range of goods and services that were not related to its business. This created obstacles and limited the opportunities of other companies in relation to their own brands in these areas.

The High Court found that Sky was not even going to use the trademarks in the UK that it had registered without any economic feasibility. Moreover, some of its applications were under “a deliberate strategy to obtain the broadest possible trademark protection in the UK and the EU.” 

As confirmed during the investigation, Sky filed an application for registration of TM in the UK but did not intend to use these trademarks for all services covered.

In simple words, the television company acted as a medieval invader that seizes agricultural land, while knowing that it will not grow anything on these lands, but does not allow others to use these lands. In modern commercial relationships, this behavior is unacceptable.

Therefore, the court made a fair decision that some trademark registrations of a television company should be partially recognized as invalid.

Protection too tight

Excessive brand protection coverage can be a problem for any company seeking to launch a new brand in Europe and other jurisdictions. This problem is only exacerbated by the fact that in many jurisdictions, TM owners are allowed to protect brand rights at the international level for a very wide range of goods and services, and mechanisms to counter unfair behavior in such situations are still not well developed.

The outcome of this case creates optimistic prospects for discouraging unfair commercial behavior in relation to TM.

IQ Decision UK Services

If you are interested in registering a trademark in the UK or obtaining intellectual property rights protection in the EU, we suggest that you first consult with an experienced specialist.

Our legal advisors have the necessary knowledge and experience to provide you with competent assistance in resolving issues related to the protection of brand rights in the UK and other jurisdictions upon your request. Contact us by filling out the application form on the website or in any other convenient way.