Who: Skype vs BskyB [Case R 2524/2010-4]
When: 22 May 2013 (became available July 2013)
Where: OHIM
Law stated as at: July 2013
What happened:
As readers of marketinglaw.co.uk may be aware, BskyB and Skype have been having a long running dispute about Skype’s 2006 application to register a figurative “Skype” mark as a CTM. BskyB opposed the registration, arguing the name ‘Skype’ was too similar to one of its trade marked trading names, ‘Sky’, and won – OHIM stating that ‘a likelihood of confusion’ existed.
Skype naturally appealed, but the appeal was dismissed by the OHIM Board of Appeal, again finding a ‘likelihood of confusion’.
Reach for the Sky
Skype ran several arguments as part of the Appeal as to why they believed there was in fact no likelihood of confusion between the two marks including:
– even if the initial ‘SKY’ letters were the dominant part of the ‘Skype’ mark, there is no real reason why consumers would break it down into ‘SKY’ and ‘PE’;
– Sky’s reputation was, at best, for television broadcasting, and did not extend to Skype’s services;
– the term ‘SKY’ is highly allusive and widely used by third parties in relation to television broadcasting which has diluted the ‘SKY’ mark; and
– the signs have co-existed for the last 7 years.
As you would expect, BskyB disagreed, citing amongst other reasons that:
– the marks are visually similar to a high degree (Skype is apparently derived from ‘SKY PEER TO PEER), so ‘SKY’ and ‘PE’ would be considered separately by consumers;
– the marks are phonetically similar, with the ending ‘P’ of the applicant’s mark doing very little to distinguish them;
– Skype did not prove that ‘SKY’ was widely used by third parties; and
– Skype’s claim that the marks have co-existed for the last 7 years had no factual basis.
Sky [didn’t actually] fall
As with the initial case, OHIM found in favour of Sky, citing that the Appeal was ‘admissible but not well founded’. OHIM re-asserted that there was a ‘likelihood of confusion’, finding that there was a ‘medium degree’ of aural, visual and conceptual similarity, and that ‘the intensive use of the trade make ‘SKY’ over a long period of time and for a broad range of products and services … has strengthened its distinctive character.’ The Board also noted that at the time of filing the application, the ‘Skype’ mark had only been on the market for a relatively short period, specifically stating that ‘the applicant can by no means benefit from a possible reputation it obtained after filing its application.’
Why this matters:
For Skype, the case of course matters hugely. As it stands, it is prohibited from being able to use its proposed mark which it has sought to build over the past few years.
More generally, brands looking to register and build on trademarks need to take stock of the general marketplace before doing so.
Although it can be argued that in 2013 Sky and Skype are distinct in terms of their branding, in 2006 that was a different story, so timing of the application can be key.
