It is most often than not that brand owners are keen to obtain the broadest coverage of goods or services at the time of filing a new trademark application, although they may or may not actually use or have the intention to use such goods or services in the course of their business. While selecting broad terminology may appear ideal as it provides wider protection as compared to adopting narrower terms (e.g. ‘make-up’ instead of ‘mascara’ in Class 3), the ultimate concern is whether such broad term will be regarded as lacking clarity and precision which may possibly be detrimental to the applicant.

In Malaysia, Regulation 11(4) of the Trademarks Regulations 2019 (“TMR 2019”), provides that:-

“In the case of an application for registration in respect of all the goods or services included in a particular class in the Third Schedule, or of a large variety of goods or services, the Registrar may refuse the application unless the Registrar is satisfied that the specification is justified by the use of the trademark which the applicant has made, or intends to make if and when the trademark is registered.”

The above regulation would mean that adopting a broad term in the specifications of goods or services would likely attract formality objections under the TMR 2019. For example, using the term ‘retail or wholesale services’ will most likely be objected to as such term would be considered too wide, and the applicant will need to limit the specification to specify the exact items to those traded or proposed to be traded (e.g. ‘retail or wholesale services relating to make-up’).

However, in trademark non-use cancellation actions, would securing an overly broad term which was not of commercial interest to the applicant cause any detriment? Given that there is a dearth of authority in Malaysia to provide clear guidance on this subject matter, it would be interesting to see if the Malaysian courts would adopt the same approach taken by the recent UK Court of Appeal judgment in Sky v SkyKick ─ a case widely recognised as one of the most important IP cases in recent years in the UK in relation to the protection for a broad range of goods and services.

What is the position in the UK?

Sky Ltd and others v SkyKick, UK Ltd and another [2021] EWCA Civ 1121

Sky, a British broadcasting company, brought a trademark infringement claim in the UK High Court against SkyKick, a cloud management software company, for using the mark “SKYKICK” in relation to SkyKick’s cloud migration, cloud backup and cloud management services. Sky had secured registrations for “SKY” in the EU and UK for a broad range of goods and services, including for ‘computer software’. SkyKick denied the infringement and counterclaimed that Sky’s trademarks were not valid because (i) the specifications of goods and services were unclear and imprecise; and/or (ii) the applications were made in bad faith since Sky had no intention to use its marks for all the goods and services covered by the registrations.

Some key points were referred to the Court of Justice of the EU (CJEU) and in applying its guidance, the UK High Court ruled that Sky had registered part of its goods and services in bad faith and as it had no intention of using its trademarks for all of the specifications of goods and services applied for, such specifications were partially invalidated. Despite this, SkyKick was still found to have infringed Sky’s registrations. Both parties appealed to the Court of Appeal.

The Court of Appeal allowed Sky’s appeal against the High Court’s decision and reversed the finding of bad faith. It held that merely applying for a trademark to cover a very broad range of goods and services is not evidence of bad faith. Further, it will not automatically be bad faith if the applicant does not intend to use the marks for all of those goods and services but it will also be necessary to establish that the sole purpose of the applicant in doing so is to undermine the interests of third parties or to obtain an exclusive right for other purposes than to indicate trade origin.

SkyKick has further appealed to the UK Supreme Court. While a decision is still pending, the outcome could have major implications on trademark filing strategies in the UK and may possibly have spillover effects in other Commonwealth jurisdictions, including Malaysia.

What is the position in the Singapore?

Interestingly, in Singapore, it appears that the authorities have adopted a more stringent approach when relying on the use of a narrow item to defend the use of a broader term in a non-use revocation action.

Choi Sun Mi v Comfort Lab Inc. [2022] SGIPOS 2

This case involved a non-use revocation action against the mark “COMFORTLAB”. Comfort Lab had registered the mark “COMFORTLAB” in Singapore covering ‘coats, sweaters, shirts, underwear (underclothing), nightwear, socks and stockings, T-shirts, headgear for wear, shoes and boots; all included in class 25’. Choi Sun Mi, the applicant, filed an application for revocation against the registered mark on the ground of non-use. Comfort Lab only adduced evidence of use of the registered mark on ‘insoles’ and argued that such use would be the same as use for ‘shoes’. The applicant succeeded in the revocation action as it was held that use for ‘insoles’ is not the same as use for ‘shoes’ and thus such evidence was not sufficient to defend a revocation action for non-use. This decision demonstrates that a registered proprietor would not be able to rely on evidence of use of its registered mark in relation to only some and/or related goods or services (as opposed to all of the goods or services) in a non-use revocation action, although the nature and function of insoles arguably fall within the essence of a ‘shoe’.

What is the position in the Malaysia?

Notwithstanding the above judicial decisions in the UK and Singapore, since the Trademarks Act 2019 has only come into force on 27 December 2019 and there is still lack of judicial decisions in Malaysia to provide clear guidance, the Malaysian Courts have the discretion to decide whether to adopt a broad or narrow approach in deciding whether to remove or maintain certain specifications due to non-use, taking into account the evidence adduced by the parties. In the meantime, it would be prudent for brand owners to include both broad and specific terminology in the specifications when filing an application, and maintain records of use or genuine intention to use its trademark for such goods or services covered by the application.

Rachel is an Associate at Wong Jin Nee & Teo. Her practice is focused on trademark prosecution matters including opposition proceedings and she has vast experience in worldwide trademark coordination.