‘Battle of the skys’ – Sky prevents Skype trade mark registration in long-running dispute

Microsoft-owned Skype Ultd (‘Skype’) has had its community trade mark application rejected by the General Court of the European Union (“the Court”), due to a likelihood of confusion between the word mark and the earlier word mark ‘Sky’ registered by Sky plc (‘Sky’).

In a dispute which has been ongoing since 2006, the companies have been battling over the ‘Skype’ word mark, which Skype applied for in 2005 in the same classes of goods and services as covered by Sky’s mark.

The Office for the Harmonisation of the Internal Market (“OHIM”) previously decided in Sky’s favour, as the application covered identical goods and services and the marks were “visually, phonetically and conceptually similar”.

Skype appealed to the Court on the following grounds:

• In practice the associated goods and services were different and were significantly different, both visually and phonetically when considered as a whole.
• The Skype mark had ‘a secondary meaning’ and was now a descriptive term for the Skype brand and software.
• The marks had been co-existing for many years without confusion.

The Court refused Skype’s appeal, in particular noting that the comparison of marks should be made on the basis of the goods and services categories in which the mark is registered, rather than those it is actually used in.

The Court considered that the public would compare the products and services of Sky and Skype and that there was a likelihood of confusion. As such, OHIM was right to refuse the registration of the Skype marks.

This case acts as a reminder of the importance of due diligence when branding a new business or product. By carrying this out and seeking legal advice early on, businesses can reduce the risk of issues arising in the future which may restrict the use of their own brands. Another important point for businesses considering trade mark registration is to consider the scope of the registrations and apply only for the classes which are applicable to the goods and services then being provided (or are reasonably contemplated). If Skype had narrowed the scope of the protection sought, Sky may not have pursued its claim.

Skype is expected to appeal to the Court of Justice of the European Union.  We will keep you updated.

To read Sky’s other recent IP law victory, click here