Sky and Skype and the likelihood of confusionPrint publication
The General Court has delivered a ruling in the long-running dispute between Sky and Skype, owned by Microsoft, concerning Skype’s Community trade mark application for the word mark SKYPE and the SKYPE device mark .
The applications were made in 2004 and were successfully opposed by Sky. Skype’s appeal to the Board of Appeal was unsuccessful from where Skype appealed to the General Court. The General Court agreed with the Board of Appeal that there was a visual, phonetic and conceptual similarity between the competing marks. It considered that the average consumer would not break the word SKYPE into two components and that the word SKY was the dominant element of the word. As the evidence showed that Sky enjoyed a “very wide and impressive reputation, and that the SKY brand is one of the most well-known brands in the United Kingdom and is regarded by consumers as being at the leading edge of digital media innovation” the General Court held that there was a likelihood of confusion.
The use of the cloud shape that surrounds the SKYPE mark had a merely decorative function, which was immaterial when considering the competing marks. If anything, its use militated against Skype as clouds are readily associated with the sky.
The Court also rejected Skype’s argument that the peaceful co-existence of the two signs was evidence of an absence of a likelihood of confusion.
Skype argued that its mark had achieved a “secondary meaning” through its extensive use but the General Court dismissed this argument as actually counter-productive to Skype’s case as it would mean the mark had become generic and therefore descriptive and, as such, incapable of registration.
Microsoft has indicated an intention to appeal to the Court of Justice of the European Union.
At first blush the decision might be surprising as surely no-one would confuse Sky and Skype? It is possible that Skype did not adduce sufficient evidence to support its position on confusion. However, it is also worth considering that the Skype applications were made in respect of a broad range of services and it is conceivable, with further convergence in technology, that Sky and Skype will compete in more areas than they currently do.
It is arguable as to how far the Skype mark has become generic. The word “skype” is certainly used as a verb but is this only the case when used in respect of Skype’s own service and not, for example, competing services such as FaceTime?
 Skype Ultd v OHIM, Cases T-183/13, T-184/13 and T-423/12