Preventing a state of confusion: SKYPE and SKY?

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In a recent decision, the General Court of the European Union has ruled that the refusal of Microsoft’s application to register a trademark for the Skype brand name and bubble-design logo in Europe was justified as the Skype and Sky brand names are too similar and will lead to consumer confusion.

Background

Following Microsoft’s acquisition of Skype, it sought to register a trademark for the Skype brand name and bubble logo as a service ‘providing a voice over internet protocol (VOIP) peer-to-peer communications, electronic transmission of data and documents over computer terminals and instant messaging services; providing high speed access to areas of networks and a global computer information network’. Its application for a Community trademark was filed with the Office for Harmonisation in the Internal Market (Trade Mark and Designs) (OHIM).

However, the British Sky Broadcasting Group plc (now Sky plc) and Sky IP International Ltd opposed this application on the basis of their earlier Community word mark SKY corresponding to ‘telecommunications, including videoconferencing services and sharing of files, images, music, videos, photos, drawings, audio-visual, text, documents and data; but not excluding telegraph communication services’.

In January 2013, OHIM decided that the services covered by the marks were identical and that there was an average degree of ‘visual, aural, conceptual similarity between the marks’. It found that the SKY brand/mark enjoys a high degree of distinctiveness in the UK in relation to telecommunications and online services and that there was a likelihood of confusion. Microsoft appealed this decision to the General Court of the European Union.

Judgment of the General Court

The General Court agreed with OHIM that the SKY mark did have an enhanced distinctiveness in the UK for the services it provides and the public recognition was not overstated. According to the Court, the fact that SKY’s extended range of products stem from its traditional television broadcasting services, does not preclude the mark’s enhanced distinctiveness. Similarly, arguing that the word ‘sky’ is highly evocative of television broadcasting services, which in turn resulted in ‘dilution’ for the services at issue was ineffective said the Court because even if taken into account, this would be overridden on account of recognition by the relevant public.

With regard to peaceful co-existence of marks, the Court found that this is the case of only peer-to-peer communications and as an isolated and highly specific service it cannot diminish the likelihood of confusion about all the services provided. In agreeing with the decision of the OHIM, the Court stated that “the signs at issue are visually, phonetically and conceptually similar”.

Additionally, the Court considered the figurative element of the mark and found that it “merely highlights the word element…as it appears as a border that closely traces the contours of the word ‘skype’.” While an application for a mark is considered in its entirety, in this case, it was found that the figurative element does not add a lot since phonetically ‘it is not capable of producing a phonetic impression’ and conceptually it is not apparent what concept it might convey, in isolation it might suggest a cloud. In this case though, the Court said “[that] would further increase the likelihood of the element ‘Sky’ being recognized within the word element ‘Skype’, for clouds are to be found ‘in the sky’ and thus may readily be associated with the word ‘sky’.

In a statement following the decision, Microsoft has said it is “confident no confusion exists between these brands and services and will appeal”.

If you would like advice on intellectual property issues please contact Daniel Milnes at Forbes Solicitors.

 

Nat Avdiu

About Nat Avdiu

Nat Avdiu is a Paralegal in the Contracts and Projects team at Forbes Solicitors. Nat provides updates for clients on a range of issues including: governance, data protection and freedom of information, procurement and charity law.
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