On October 16, 2019 the Advocate General (AG) of the European Court of Justice rendered an opinion in Sky Plc & Ors v. Sky Kick UK Ltd. & Anr. (“the Sky case”) in a reference by Justice Arnold of the England and Wales High Court (Chancery Division). The AG’s opinion caught my attention because the opinion as well as the facts of the case resonated the 1996 order of the Indian Supreme Court in Vishnu Das Trading v. Vazir Sultan Tobacco Ltd., famously known to IP lawyers as “the Charminar case”. While AG’s opinions are only advisory in nature, statistics indicate that courts largely follow the same in arriving at a final judgement.
Let’s examine what makes these two cases similar.
Sky v. Sky Kick
The brief facts of the Sky case are that Sky PLC (“Sky”), who owned several SKY trademarks in the EU in various classes including 9 and 38, sued Sky Kick UK Ltd (“Sky Kick”), a cloud migration information technology service start-up, for trademark infringement. While Sky has used the mark SKY in connection with a range of goods and services and, in particular, goods and services relating to its core business areas of television broadcasting, telephony and broadband provision, it did not offer any email migration or cloud backup goods or services. Nor was there any evidence that it planned to do so in the immediate future. Sky Kick, therefore, denied infringement and, in counter claim, sought invalidity of Sky’s marks as these lacked clarity and precision and were made in bad faith. All the five questions by the referring court to the AG centred around the role and function of ‘specification of goods or services’.
For the purposes of the discussion here, I am limiting myself to the first two questions referred to the AG for opinion, which I summarise as follows:
- Can a trademark be declared wholly or partially invalid because the terms in the specification of goods and services lack sufficient clarity and precision?
- If yes, is the term “computer software” sufficiently clear to enable determination of the extent of protection conferred by the trademark in question?
The AG answered the first question in the negative because any lack of clarity and precision in the specification of goods could always be remedied before or after registration of the mark.
As regards the second question, the AG agreed with the referring court that the registration of a trademark for “computer software” was unjustified and contrary to the public interest because it conferred on the proprietor a monopoly of immense breadth which cannot be justified by any legitimate commercial interest of the proprietor. In support of his opinion, the AG quoted from the 1995 case, Mercury v. Mercury, where Justice Laddie made the following observations regarding the specification “computer software”:
‘the defendant argues that ………… the plaintiff’s registration creates a monopoly in the mark ….. when used on an enormous and enormously diffuse range of products, including products in which the plaintiff can have no legitimate interest. ……. The registration of a mark for “computer software” would cover ………..not just the plaintiff’s type of products but games software, accounting software, software for designing genealogical tables, software used in the medical diagnostic field, software used for controlling the computers in satellites and the software used in the computers running the London Underground system. …. In the end he accepted that some of these were so far removed from what his client marketed …………..in my view there is a strong argument that a registration of a mark simply for “computer software” will normally be too wide… …….. In my view it is thoroughly undesirable that a trader who is interested in one limited area of computer software should, by registration, obtain a statutory monopoly of indefinite duration covering all types of software, including those which are far removed from his own area of trading interest.’
Charminar v. Charminar
Charminar is a 15th century monument and mosque in the city of Hyderabad. Briefly, the facts are that the respondent Vazir Sultan & Co (“VSC”) manufactured cigarettes under the mark CHARMINAR and owned a registration for the same for “manufactured tobacco” in class 34. The appellant, Vishnu Das Trading (“VDT”), subsequently commenced manufacturing ‘quiwam and zarda’ (chewing tobacco products) under the device mark CHARMINAR. The respective marks used different images of Charminar. However, VSC objected to the trademark application of VDT. VDT in turn filed for rectification of VSC’s mark on ground of non-use in respect of chewing tobacco, which was allowed by the Registrar of Trademarks. VSC’s appeal before the Single Judge of the High Court of Madras was allowed on the ground that the sub-classification of “manufactured tobacco” applied by the Registrar of Trademarks was not permitted. VDT appealed before the Division Bench of the Court which upheld the Single Judge’s order holding that there could be no separate registration for cigarettes in class 34 as it spoke only of “manufactured tobacco” and hence VSC’s mark could not be removed on ground of non-use in respect of chewing tobacco, even if these had never been manufactured or intended to be manufactured by VSC. This led to the final appeal before the Supreme Court by VDT.
The Supreme Court allowed VDT’s appeal. Noting that the object of the Trade Marks Act was “to enlarge the field of registrability”, the Court held as follows:
In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification.
The Supreme Court also made a cautionary note that the order only dealt with the issue of validity of the order of rectification and not on issues of infringement or passing off, thereby leaving the legal recourse of a passing-off action to the registered proprietor.