The General Court has handed down its judgment in cases
T-423/12,
T-183/13 and
T-184/13 Skype Ultd v OHIM, confirming that there exists a likelihood of confusion between the words SKYPE and SKY. In 2005, Skype attempted to register the words SKYPE as a CTM. This was opposed by British Sky Broadcasting and based on their earlier Community trade mark SKY. British Sky Broadcasting based their opposition on the likelihood of confusion ground, their earlier unregistered rights and their reputation. This matter then went on the Board of Appeal, which also found a likelihood of confusion. Skype then appealed to the General Court. In May of this year, the General Court handed down its decision. Noting that the word marks have a medium degree of visual, phonetic and conceptual similarity, the General Court confirmed that the pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’, the word ‘sky’, part of the basic vocabulary of the English language, remains clearly identifiable in the word ‘skype’ and the element ‘sky’ in the word ‘skype’ can perfectly well be identified by the relevant public, even if the remaining element ‘pe’ has no specific meaning. In relation to the figurative mark SKYPE, the General Court held that the jagged border in the shape of a cloud or bubble does not affect the average degree of visual, phonetic and conceptual similarity. In addition, insofar as the argument by Skype was that the term “skype” is highly distinctive, the General Court held that, even if the term ‘skype’ had acquired a meaning of its own for identifying the telecommunications services provided by the company Skype, it would be a generic, and consequently descriptive, term for services of that kind. Finally, peaceful coexistence of the signs was not taken into account so as to demonstrate a lessened likelihood of confusion because the peaceful coexistence of the signs in the UK relating to a specific service (peer-to-peer communication services) cannot serve to lessen the likelihood of confusion in respect of many other goods and services covered by the signs. Furthermore, that coexistence has not lasted long enough to give grounds for the assumption that it was based on the absence of any likelihood of confusion in the mind of the relevant public.
What Stobbs Says: Almost two years ago, Microsoft (which now owns Skype) was obligated to rebrand its “SkyDrive” cloud service to “OneDrive but it seems unlikely that Skype will rebrand, given the fact that it is now widely recognised by the general public. Moreover, the case was not a legal challenge to Skype’s use of its mark – it was directed at its registration. It is more likely that Skype will appeal this decision.
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