A third recent case also touches on matters similar to those addressed in Scotch Whisky  in relation to specifications of goods. In Sky Network Television Limited v Skyfiber, Inc, Mallon J considered an uncontested appeal by Sky Network Television against a decision of the Assistant Commissioner of Trade Marks ruling, in the course of an action by Skyfiber for revocation for alleged non-use, that the SKY registered trade mark specification should be amended. 

Many of the items in SKY’s specification were in use, but in some cases only because the items were part of a package, and in all cases the description of the items was widely drawn.

It was necessary for Mallon J to interpret s66 of the Trade Marks Act 2002, which provides that a registration may be revoked if it has not been put to genuine use in the course of trade during a continuous period of three years or more in relation to the goods for which it is registered.

After briefly considering United Kingdom law, Mallon J held that the first task is to find as a fact what goods and services there has been genuine use of the trade mark in relation to, and then to arrive at a “fair specification” of goods having regard to the use made. In determining a “fair specification”, Mallon J endorsed an approach which is “objective and impartial, balancing the competing interests” (which includes the underlying policy). Mallon J noted (diverging from UK law) that the view of the relevant trade in this regard will be much more informative than how the notional consumer would describe such use (since the value judgment of what is a fair specification of use requires an understanding of the underlying policy and it is artificial to impute that to the average consumer).

Mallon J then referred to propositions in the UK case law to offer assistance in determining the appropriate scope of a specification:

(a)   The assessment “has nothing to do with the defendant”. Defining the goods negatively by reference to the defendant’s activities is therefore not the approach;

(b)   The proprietor has protection outside his or her specification of goods in areas where he or she can demonstrate a likelihood of deception under other provisions. “There is no pressing need, therefore, to confer on the proprietor a wider protection than his [or her] use warrants by unduly broadening the specification of goods.”;

(c)  The width of the surviving specification “must depend largely on questions of fact and degree”, and “wide words can cover what are commercially quite different sorts of articles”. If there is shown to be use of just one of those things “it would be commercially nonsense to maintain the registration for all goods caused by the wide words”. 

In the end result, Mallon J regarded the amendment settled on by the Assistant Commissioner as unduly narrow and unclear and directed that Sky file a memorandum setting out an accurate specification in light of the conclusions reached.