The General Court has delivered its verdict in the heavyweight trade mark clash between British Sky Broadcasting Group (now Sky plc and Sky IP International) (“SKY”) and SKYPE.
This is the latest decision in a long running trade mark dispute between the two parties, the heart of the matter being whether their trade marks are sufficiently similar to create a likelihood of confusion on the part of the public as to trade origin, when used on identical goods and services. The issue in question is whether or not the marks can be registered alongside each other as trade marks; not whether they can be used as such, though ultimately the former may have a bearing on the latter.
In 2005 and 2006 respectively, SKY opposed SKYPE’s CTM trade mark applications for the marks depicted below, on the basis of an alleged likelihood of confusion with its plain word mark SKY.
In both cases, the CTM Office (OHIM) found in favour of SKY and those decisions were subsequently upheld by the OHIM Court of Appeal. The General Court’s recent decision relates to SKYPE’s attempt to annul those decisions.
The General Court confirmed that the marks are confusingly similar. The similarity of trade marks is assessed by comparing them visually, aurally and conceptually. The Court stated that the letter ‘y’ would be pronounced the same in the word ‘skype’ as in the word ‘sky’, making the marks phonetically similar. The Court also pointed out that the word ‘sky’ is clearly identifiable within the word ‘skype’, giving the marks a degree of visual and conceptual similarity.
The fact that SKYPE’s logo mark contains what could be interpreted as an image of a cloud counted against them. The Court pointed out, helpfully, that clouds are to be found in the sky, thus the presence of what could be a cloud in SKYPE’s logo could cause consumers to associate the logo with the word ‘sky’.
An appeal to the Court of Justice of the European Union may well follow - watch this space.
David Yeomans, Trade Mark Assistant