Recently, the General Court of the European Union dismissed Skype action against the decision of the Office for Harmonization in the Internal Market (OHIM) confirming that there is a likelihood of confusion between the figurative and word sign “Skype” and the word mark “Sky”.
Let’s have a look at how it all started.
In 2004/2005 Skype applied to the OHIM for the registration of this CTM
Click here to view image.
for goods and services in classes 9, 38 and 42 of the Nice Classification.
The broadcaster Sky – which, in the past already forced Microsoft’s SkyDrive to rebrand as OneDrive – filed an opposition against the registration claiming the likelihood of confusion between the trademark filed by Skype and its prior Community word trademark “Sky” registered for the same good and services in classes 9, 38 and 42 of the Nice Classification.
In 2012/2013 (cases T-423/12, T-183/12 and T-184/13) the OHIM upheld the opposition, ruling that the above mentioned trademarks raise a likelihood of confusion due to “their average degree of visual, phonetic and conceptual similarity and that the conditions for establishing a reduction of that likelihood had not been satisfied” (according to the Press Release of the General Court available here). Skype then sought annulment of the above mentioned decisions before the General Court.
In particular, Skype claimed that:
- the signs at issue are not similar;
- the mark applied for has itself acquired, through extensive use, a secondary meaning for the goods and services at issues, serving to counteract any similarity between the signs;
- the marks at issue have been coexisting on the market without confusion for many years.
On May 5th, 2015 the General Court ruled on the issue confirming the OHIM position. First of all, the Court made a comparison of the goods and services, based on settled case-law, according to which “all the relevant factors relating to those goods should be taken into account“. After a comprehensive review, the goods and services covered by the marks at issue were held identical.
The Court then made a comparison of the signs, and held that:
- From a phonetic point of view: there is no much of a difference in the pronunciation as the only difference shall be identified in the pronunciation of the letter “p”. According to OHIM, and then to the General Court, the two signs are pronounced in one syllable, (“skaip” and “skai”) and the beginning of the marks coincided, the only difference being, in fact, in the final “p”.
- From a visual point of view: the word “sky” is clearly identifiable in the word “skype”. The General Court ruled that “the figurative element merely highlights the word element, specifically on account of the fact that it appears as a border that closely traces the contours of the word “skype”, without adding any other identifiable shape“. In particular, according to the Court, “The two small bumps occurring on the left and right of the word element do not immediately hold a person’s attention and will therefore not reduce the overall impression of the figurative element being perceived as a simple border“. Even though the word element of the mark applied for is written as one word, the relevant public would notice the three letters “sky” common to the two marks, as they are located in the beginning of that word element;
- From a conceptual point of view: the meaning of the word “sky” would be clearly identifiable also in the “skype” word. The Court underlined that the figurative trademark does not solve the issue as the use of a cloud profile would further convey the idea of the sky.
In addition to the above, the General Court held that, even in the event that the term “skype” had actually acquired an autonomous meaning with regard to the identification of the telecom services provided by the company Skype, it would thus be a generic term, and therefore a descriptive one, for that type of service.
Finally, as per the likelihood of confusion, the General Court ruled that it was not mitigated by the coexistence of the trademarks on the market. The coexistence of the marks at issue in the UK can concern only peer-to-peer communication services, and not other goods and services covered by the mark applied for.
From the Italian perspective, usually the courts apply the same principles implemented by the General Court, with the effect that in front of an Italian court, the outcome would probably be the same.
Do you agree with the above? Shall we expect an appeal by Microsoft, also taking into account the value that the “Skype” trademark has acquired during these years?