“So Precisely What Will You Use Your Trade Mark for?” Bad Faith and Clarity in Trade Mark Specifications

Abstract

The requirements for the specification setting out the list of goods and services covered by a trade mark registration are rarely considered in the literature or by the courts. The reference in C-371/18 Sky v. Skykick will enable to Court of Justice to consider two critical issues connected with the precision of the specification: whether clarity of the specification is a substantive requirement, and whether it is necessary to intend to use the mark on the date of filing. It is argued here that the Court of Justice should find that clarity is a substantive requirement for the registration of a trade mark and confirm that a lack of intention to use a mark is a type of bad faith which can lead to (partial) revocation of the trade mark.