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03 Dec 2019
BY Gerard du Toit

I want computer software… is that clear?

It’s not often that courts get involved in the real nitty-gritty of trade mark practice, they tend to stick to the bigger issues like the infringement and revocation of trade mark registrations. But from time to time they are required to look at what goes on at the coal face of trade marks, the trade mark registry.

Here are two examples. A few years back, in the case of Cochrane Steel Products (Pty) Ltd v M-Systems Group (Pty) Ltd, the South African Supreme Court of Appeal was required to go into the detail of the wording of the disclaimers and admissions that trade mark owners are sometimes required to enter against their registrations. In Europe there was the famous IP Translator case, where the EU’s highest court had to consider the issue of whether a trade mark that is filed for the class heading (for example “all goods in class 9” or “all services in class 35”) automatically covers all the goods and services that fall into that class. The court’s answer was pretty wishy-washy, something along the lines of yes maybe, but it’s best to make it clear by adding appropriate words.

The computer software conundrum has now found its way to Europe’s highest court in the case of Sky Plc v Skykick UK Ltd and Another. The computer software conundrum is basically this: is the term “computer software” in a class 9 trade mark specification sufficiently clear and precise? The case is a referral from a UK court. It deals with the alleged trade mark infringement and passing off by Skykick of the Sky trade mark. There is also a counterclaim by Skykick for the revocation of the registration based on the claim that Sky has no business in software, and particularly cloud computing software.

If you have had any experience of trade marks, especially trade marks is class 9, you will know that businesses love to cover “computer software”. You will also know that businesses often love long specifications – apparently some of Sky Plc’s registrations have specifications that are over 8000 words. The judge in the UK court who referred the matter to the Court of Justice of the European Union (“CJEU”) took the view that a registration for computer software was “unjustified and contrary to the public interest because it confers on the proprietor a monopoly of immense breadth which cannot be justified by any legitimate commercial interest of the proprietor”.

The Advocate General (“AG”) has recently handed down his opinion and the matter now goes to the CJEU for its judgment. Experience suggests that the CJEU will follow the AG’s opinion.

The AG is very clearly of the view that the broad term “computer software” is not appropriate. The AG has a number of issues with it:

  • It is not clear enough. “While in one sense the term ‘computer software’ is clear (it comprises computer code), it undoubtedly lacks precision in the sense of covering goods that are too variable in their function and field of use to be compatible with the function of a trademark.”

  • It is far too broad because it creates a “monopoly of immense breadth”, one that cannot be justified by any legitimate commercial interest.

  • It lacks good faith: “Applying for registration of a trademark without any intention to use it in connection with the specified goods or services may constitute an element of bad faith, in particular where the sole objective of the applicant is to prevent a third-party from entering the market.”

  • It undermines the whole trade mark registration system, the bargain that is involved when the state grants a company a monopoly to a mark: “Register clutter imbalances the IP “bargain’’ against the public interest.”

There is nothing particularly new in this thinking. Some 25 years ago the well-known UK IP expert, Judge Hugh Laddie, raised doubts about the term “computer software” in trade mark registrations. In the case of Mercury Communications v Mercury Interactive 1994 FDR 850, he said this: “There is a strong argument that a registration of a mark simply for ‘computer software’ will normally be too wide.”

The issue of trade mark specifications might sound very dull and procedural, but it is critically important because trade mark specifications define the rights that the trade mark owner has. It is also worth bearing in mind that, whereas a patent lasts for 20 years and copyright for much longer, a trade mark registration can conceivably last for ever, all that is required is that it must be renewed at regular (normally 10-year) intervals. So broad specifications can have huge impacts and they can seriously clutter trade mark registers.

We have previously pointed out that the trade mark registers of the world are becoming hopelessly overcrowded, and that it is becoming increasingly difficult to find available trade marks. A large part of the problem is that specifications are often far broader than they need to be. So the AG’s opinion is welcome.

The likely impact of this case is that companies will need to be more specific with their specifications. Given that trade mark law already provides protection that goes beyond the specification (to similar goods or service in all cases and, in the case of marks with a reputation, dissimilar goods or services) trade mark owners surely have all the protection they need!

Reviewed by Ilse du Plessis, an Executive in ENSafrica’s IP department

Gerard du Toit

Senior Associate | IP

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