Following a lengthy ten-year dispute, the European General Court has denied registration of Community Trade Mark (“CTM”) applications incorporating the word SKYPE on the basis that they are confusingly similar to earlier CTMs for SKY.
Sky opposed the registration of two SKYPE CTM applications filed in 2004 and 2005, claiming that they were confusingly similar to corresponding SKY CTMs filed in 2003. The Opposition Division at the Office for Harmonisation in the Internal Market (“OHIM”) ruled in favour of Sky in 2010 with the OHIM Board of Appeal upholding the oppositions in 2013 and 2012 respectively.
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Logo Mark : Filed 2005; Classes 9, 38, 42
Skype appealed to the General Court alleging infringement of Article 8(1)(b) of Regulation No. 207/2009. In support of its single plea, Skype claimed:
- The marks were not similar.
- The SKYPE marks had acquired, through extensive use, a secondary meaning for the goods and services concerned.
- The SKYPE and SKY marks have been coexisting on the market without confusion for many years.
On 5 May 2015, the General Court delivered separate judgments on each case rejecting all three grounds of appeal, thus ruling in favour of Sky in both cases.
Regarding the comparison of the marks, the General Court agreed with the Board of Appeal’s findings, confirming that the dominant element of the mark consisted of the first three letters S-K-Y, which appeared at the beginning of the mark and formed part of the basic vocabulary of the English language. Specifically in relation to the logo mark, the General Court endorsed the Board of Appeal’s view that the figurative element is a ‘simple border’ which closely traces the contours of the word element such that it resembles a cloud, effectively increasing the degree of conceptual similarity between the marks.
Skype’s second claim, that the mark had acquired a secondary meaning through extensive use, was also rejected by the General Court who stated that the likelihood of confusion must be judged by reference to the public’s recognition of the earlier mark, not the mark applied for. Further, if indeed the mark had acquired a secondary meaning such that “to skype” meant “to make video calls”, then this would be a descriptive term and therefore not registerable.
Finally, Skype’s claim that the marks have coexisted on the market for several years without being confused was also dismissed. The General Court noted that although the coexistence of earlier marks on the market can reduce the likelihood of confusion, in the present case, co-existence concerned only one isolated and highly specific service, namely peer-to-peer communication, which was outside Sky’s core business. Accordingly, such could not diminish the likelihood of confusion for the entirety of the remaining list of goods and services covered by the marks. Furthermore, Skype’s peer-to-peer communication service had only launched for 22 months at the date of filing which was a manifestly insufficient period of activity for assuming that the coexistence was based on the absence of a likelihood of confusion.
Thus, Skype’s single plea in law was rejected and the action dismissed in its entirety. Microsoft, having acquired Skype in 2011, has announced its intention to appeal to the Court of Justice of the European Union.