In the EU, trademark applicants can still claim protection for "computer software" in Class 9—without saying what kind. This appears to not be aligned with the Court of Justice of the European Union (CJEU)'s IP Translator ruling, which requires clarity and precision. Why is a non-fungible token (NFT) - a unique digital asset, proving ownership of a specific digital item, like art or music - too vague but "computer software" acceptable?

The risk: overly broad trademarks give companies unjustified monopolies.

The CJEU said in the SkyKick case (Sky v. SkyKick, 29 January 2020, C-371/18) that an unclear specification does not invalidate a mark—but bad faith filings can. Courts are now using partial revocation and narrow interpretation to limit these vague claims. In practice, "computer software" covers too many fields—owners must prove use by subcategory.

Should the European Union Intellectual Property Office (EUIPO) not revise its guidelines and require more specific wording?

For applicants, generality is risky. Be precise. Protect what you use. Precision is not a formality—it is a safeguard for fair and free competition in a digital world.

Trademark overreach

In today's economy, nearly every product or service can be personalised or delivered through software. Yet, strangely, the EUIPO and EU courts continue to accept trademark applications with the generic specification "computer software" in class 9 without requiring any further detail.

It's a situation that has consequences for every company doing business in Europe. The very broad generic specification of computer software grants artificial and unlimited monopoly to owners of earlier trademarks with such specification. It allows the owner to prevent other companies from using a similar sign to identify software in a highly specialised field, even if that field does not compete directly with the one in which the earlier mark is used.

The situation creates a clear restriction on the market in general and prevents non-competitors from entering the EU Market.

It also creates distortion of the right to trademark in the EU. For instance, EU trademarks filed under national priority - from EU member states - benefit from leniency in specification. Meanwhile, those filed under US priority face stricter scrutiny due to their origin jurisdiction's requirements.

As a result, it creates a two-tier system within the framework, which could be seen as inconsistent, given the guidelines of the United States Patent and Trademark Office (USPTO) applicants for US trademarks designating software must specifically indicate the subject matter or function of the software. Current EU practice stands in contrast to the 2012 "IP Translator" decision (Chartered Institute of Patent Attorney, 19 June 2012, C-307/10), in which the CJEU ruled that trademark applicants must clearly and precisely identify the goods and services they want to protect. The objective is to enable the competent authorities and economic actors, to determine the exact scope of protection conferred by the trademark.

Despite this, the EUIPO still allows broad specifications for "computer software". The CJEU later ruled in the SkyKick case that a lack of precision and clarity of a specification does not automatically make a trademark invalid. Recital 28 and Article 33.2 of the EU trademark Regulation No 2017/1001 and Recital 37 and Article 39.2 of the EU Directive No 2014/2436 require precision and clarity and Article 33.4 and 39.4 respectively of the Regulation and the Directive provide that this requirement is only a ground for refusal of registration which would lead to an objection at the examination stage. It can therefore be corrected by the applicant within a deadline set by the relevant Office.

Precision in trademark law

However, the question left unanswered is whether "computer software" in class 9 can be considered intrinsically clear and precise. The Communication of the European Trademark and Design Network (TMDN) of 20 November 2013 regulates the use of certain terms such as "machines" in class 7. The Communication considers that "the term "machines" does not provide a clear indication of what machines are covered. Machines can have different characteristics or different purposes, they may require different levels of technical capabilities and know-how to be produced and/or used, could be targeting different consumers, be sold through different sales channels, and therefore related to different market sectors."

If "machines" can have different purposes or characteristics, what about "computer software" which irrigate all aspects of business, social, personal and corporate life?

The High Court of Justice for England and Wales referred several questions to the CJEU in the SkyKick case. One of which asked whether a trade mark could be declared invalid if its specification lacked clarity and precision. However, this question was deemed to be contingent — it would only be relevant if the CJEU first affirmed that such an omission could indeed be a ground for invalidity.

The Advocate General considered that the question had to be considered even though the requirement of clarity and precision does not fall within the grounds for invalidity of a trademark. In his opinion, the Advocate General stated that "while, in one sense, the term "computer software" is clear […], it undoubtedly lacks precision in the sense of covering goods that are too variable in their function and field of use to be compatible with the function of the mark". He underlined how problematic the issue seen "computer software" covers a range of products, from apps that track your fitness to software that powers cars or manages bank. Those products are dissimilar but if an earlier trademark covers a sign designating "computer software" this earlier mark - irrespective of the field it is used - can bar a second trademark application similar to the earlier trademark.

As underlined by the Advocate General, this consequence confers to the owner of the earlier trademark "a monopoly of immense breadth which cannot be justified by any legitimate commercial interest" and is therefore contrary to the public interest. The Advocate General also appealed to the practice of the USPTO which refuses trademark applications for "computer software" without any specification related to the type/purpose of software and field of use.

Probably because it was troublesome, the CJEU simply did not address this question, taking advantage of how it was combined with the first one. This silence was followed by a frank position of the General Court of the EU in a case Vroom (Bezos Family Foundation v EUIPO, 24 February 2020, T-56/20) rejecting an appeal against a decision of the EUIPO Board of appeal having decided that "computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education" were included in the broad category of "computer software" covered by the prior mark. The General Court found that "computer software" is sufficiently clear and precise and, that in any event, it would not prevent from comparing these goods and services, in opposition proceedings, to appreciate the likelihood of confusion. The General Court simply reiterated its analysis of the case Shadow Complex (Chair Entertainment Group v OHIM, 29 April 2014, T-717/13).

Despite the opinion given by AG Tanchev and the cited caselaw, the EU authorities have not taken into consideration this issue and keep granting monopolies for any kind of computer software whatever their specific purpose. The EUIPO keeps arguing that the EU trademark system differs from the US trademark system where the intent to use is mandatory. EU trademark law does not impose the intent to use at the trademark application date. But according to the EUIPO, after five years it is possible to seek the revocation of a trademark for lack of use, and therefore if the trademark is used in one field only, it should be limited to that field and partially revoked.

Time for alignment

At registration level, the EUIPO trademark guidelines in the Section dedicated to Classification do not mention "computer software" as lacking clarity and precision. Interestingly, the EUIPO includes in these guidelines a specific section focusing on "virtual goods, services in virtual environments and NFTs". stating that "the term "non fungible tokens" on its own is not acceptable. The type of digital item authenticated by the NFT must be specified". If the EUIPO appreciates that "non fungible tokens" are not acceptable per se without the digital item it authenticates, the term "computer software" should also be specified by its purpose or destination.

Should the EUIPO not follow the USPTO practice, while the EUIPO itself required more detail for "machines" or NFTs, so why not to do the same for "computer software".

Pending a correction from the EUIPO and the national offices, Courts have developed other ways to limit overly broad software trademarks.

1. Bad faith filings

If someone files a trademark just to prevent others from using a generic term like "computer software" — without intending to use it or with the mere intent to use in specific fields — courts can strike it down. In the SkyKick case the CJEU held: "Filing a trademark without any intention to use it in relation to the goods and services claimed may constitute bad faith, particularly when it is done with the aim of monopolising a broad range of goods and services to block market entry by others."

This strategy, which is not aimed at protecting a legitimate commercial activity, curtails competition and allows for the obtaining of undue exclusivity over a term with commercial value, i.e. "computer software". In such cases, bad faith filing can be a corrective mechanism to prevent the misuse of the trademark system for anti-competitive purposes.

Further to the CJEU decision in the SkyKick case, the High Court invalidated the marks based on bad faith filing, but the decision was overturned on appeal. The UK Supreme Court finally held on 13 November 2024 that the trademarks were partly invalid for bad faith filing. The court ruled that it must be assessed whether the application with a broad specification was made with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties; or with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trademark and the essential function of indicating origin.

2. Revocation for non-use

The CJEU set in its decisions Aladin of 14 July 2005 (T-126/03), ACTC/EUIPO of 16 July 2020 (C‑714/18 P) and Ferrari SpA v. DU of 22 October 2020 (C-720/18 and C-721/18), that if a trademark designates a broad category of products that can be subdivided into several subcategories, genuine use must be demonstrated for each of these subcategories. Failing to produce such evidence, the trademark will be revoked for the subcategories for which genuine use has not been demonstrated.

Courts in France have for example revoked trademarks by splitting broad categories, such as:

  • Transportation: in Groupe Rousselet v. G7 (Court of cassation, 14 May 2025, No RG 23-21.296), the mark designated services of transportation while only taxi services were performed, the Court ruled "when the applicant for revocation claims that the category of goods or services for which the trademark was registered can be subdivided into subcategories and alleges a lack of genuine use in respect of some of those subcategories, the court must determine whether the category covered by the trademark registration can be divided, objectively and non-arbitrarily, into autonomous and coherent subcategories, even if such subcategories were not identified by the trademark applicant at the time of filing or during the revocation proceedings."
  • Cosmetics in Univers Pharmacie v. Skin'Up (Court of cassation, 14 May 2025, No RG 23-21.866), a similar solution was arrived at.

If the trademark owner cannot show genuine use of the trademark for all types of software within five years, parts of it should be revoked.

This reasoning has been adopted by the Board of Appeal of the EUIPO in a decision of 11 January 2023 (R2040/2021-5, Menschmachine Publishing GmbH v. Asianajotoimisto Heinonen & Co Oy), stating that "computer software' is an extremely broad term, which can be divided into several subcategories" (§62).

The French IPO also decided in a decision of 5 October 2023 (Zendesk v. Sopartech, No DC23-0008), that given the use of the contested trademark was demonstrated only for software in the sole specific field of insurance, it had to be partially revoked for any software outside this specific field.

3. Narrow interpretation in disputes

When assessing infringement or likelihood of confusion, courts and offices may interpret vague terms narrowly. If a trademark just says "software" but the dispute involves a specific type of app, the general claim may not hold.

In the event the prior trademark's holder is not required to show proof of use, the office or courts can simply take the position that the specification lacks clarity and precision. In its decisions of 28 May 2010 (B 1103979, Hand Held Products, Inc. v. Orange Brand Services Limited), 19 December 2014, (B 2249608, Clasus, LDA. v. X), 29 March 2017 (B 2547852, X v. Ave Innovation s.r.o) and 23 August 2022 (B 3122655, CON SOFT S.A. v. X), the EUIPO considered that the term "computer software" was deemed too general to justify a finding of identity with more specific types of applications. Without further description as to the purpose or function of the computer software, the Opposition Division found that identity of goods could not be presumed. The reliance on the generic "software" classification is insufficient for enforcement purposes without clarifying the specific field of application. The technical function and intended user group must be considered when assessing similarity in modern software environments.

The same reasoning was taken by the Paris Judicial Court (Free v Claranova, 1st February 2018, RG No 17/04143) which had to compare the goods in class 9 and assess the similarity between "software" or "programs" in Class 9, and "computer applications for ordering and receiving photo prints on paper, in particular albums, calendars, thank-you cards and, more generally, all types of media or objects". The Court held that a broad specification does not entitle the right holder to enforce its trademark against third parties across the entire software industry. The Court limited the enforceability of the mark to the specific types of software for which use could be demonstrated, thus neutralising the scope of the monopoly initially claimed: "The price of generality, here a source of imprecision, cannot be the unchecked extension of the monopoly granted, including to products unforeseeable at the time of filing, but must lead to a strict assessment of identity and similarity of goods and services in question."

In other words, those decisions have made clear that general claims over "software" do not give owners the right to stop anyone operating in the tech space. Owners must prove use for the specific kind of software in question.

How do trademark owners and applicants navigate claim protection from here?

All these mechanisms help prevent abuse — but they are workarounds. What is really needed is for EUIPO to officially treat "computer software" like other vague terms (such as "machines" or "NFTs") and require applicants to specify the software's purpose. The current situation concerning computer software undermines public interest by creating "a monopoly of immense breadth which cannot be justified by any legitimate commercial interest" and creates a distortion of treatment between owners of EU trademarks filed under US priority and EU trademarks directly filed with the EUIPO or under a national priority/seniority of a trademark filed with another EU member state.

The EUIPO cannot just respond by stating that addressing this question would lead to a complete review of the existing EU trademarks and national trademarks in Europe. This was done further to IP Translator, guidelines and precision and clarity have been expressly imposed for NFT trademarks, so why should software remain unclear and unprecise?

In the meantime, it lies upon trademark applicants and owners to adapt by drafting precise, purpose-specific specifications. In the age of rapid digital innovation, strategic generality is no longer a safe option — being clear and specific is not just advisable, it is essential.

For more information or further details regarding trademarks, get in touch with Marianne Schaffner, Charlotte Chambon and Mathilde Grammont or a member of the team.