Recently the Advocate General (AG) of the European Court of Justice rendered an opinion in the case of Sky Plc & Ors. v. Sky Kick UK Ltd. & Anr, C‑371/18 (hereinafter referred to as the “Sky Case”). It is noteworthy that certain issues in the Sky Case were considered by the Supreme Court of India in the 1996 judgment of Vishnudas Trading as Vishnudas Kishandas v. Vazir Sultan Tobacco Co. Ltd., Hyderabad and Ors., AIR 1996 SC 2275. (“the Charminar case”)
In the Sky Case, Sky PLC (“Plaintiff”), the owner of SKY-formative trademarks in relation to television broadcasting, telephony and broadband, alleged trademark infringement by Sky Kick UK Ltd (“Defendant”), user of SKY-KICK and SKY-KICK formative marks in relation to email migration or cloud backup services. The Defendant sought to invalidate the Plaintiff’s EU registrations on the ground that the specifications of goods and services covered by these registrations lacked clarity and precision and that the Plaintiff had obtained these registrations in bad faith.
The AG held as follows:
There is no provision in any of the relevant legislation and/ or regulation for the invalidity of a registered trademark on the ground of insufficient clarity and precision of the specifications of goods and services. While dissenting with the referring court’s decision, the AG pointed out that the issue of clarity and precision can only be remedied before or after the registration.
Registration of a trademark for ‘computer software’ is unjustified and contrary to public interest as it confers a monopoly of immense breadth which cannot be justified by any legitimate interest of the proprietor.
A deliberate intention to acquire rights over a trademark, without having any intention to use the mark and to prevent third parties from using the registered mark for the sale of those goods and services, constitutes bad faith.
A trademark may be declared partly invalid if the application was made partly in bad faith.
A review of Indian jurisprudence reveals that, in the 1996 Charminar case, the Supreme Court of India had also held that trader or manufacturer who deals only in one or more of the articles falling under the broad classification of goods and services without a bona fide intention to use the mark on or in relation to all goods and services should not be allowed to enjoy monopoly over the entire set of goods and services. Therefore, it is possible, under Indian law, to partially cancel a registration on the ground of partial bad faith of the registrant.
Moreover, just like the European Union, the Indian Trade Marks Act, 1999 does not provide any grounds for cancellation of a trademark registration based on insufficient clarity and precision of the specification of the goods and services for which the mark is registered.
The 1996 Charminar case has been followed in numerous cases, most pertinently, in the case of Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd, AIR 2018 SC 3516. In this case, the Supreme Court reiterated its decision that the owner of the prior registered mark NANDINI Device cannot be allowed to enjoy monopoly over the entire class of goods, as it dealt only in milk and milk products, and had no intention to expand its business to other goods belonging to that class.