Sky's the limit! Skype trade mark refused

Sky's the limit! Skype trade mark refused
The General Court of the European Union has ruled that Skype may not be registered as a trade mark because it is too similar to the trade mark for Sky. What lessons can be learnt from Skype's unsuccessful attempts to register its marks? Skype Ultd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Sky plc and Sky IP International intervening): T-423/12, T-183/13 and T-184/13

What is this case about?

This ruling from the General Court of the European Union is the latest stage in a long-running trade mark dispute between Skype, provider of internet-based video chat and voice calls and Sky plc and Sky IP International Ltd (together ‘Sky’ and formerly British Sky Broadcasting Group), a telecommunications company which provides television and internet services.Skype has been attempting to register its three Community trade mark (CTM) applications for SKYPE for about ten years. Skype filed its CTM applications in 2004 and 2005 for the figurative and word marks SKYPE in classes 9, 38 and 42 for various goods and services including peer-to-peer communications, high speed access to area networks, computer services and software development. Sky opposed Skype’s CTM applications based on its earlier CTM for SKY (word) registered in identical classes (9, 38 and 42). To date, Skype’s efforts to register its marks at the Office of Harmonisation in the Internal Market (OHIM) have failed on the basis that they are too similar to Sky’s marks and likely to cause confusion.This General Court ruling follows Skype’s appeal to the OHIM Board of Appeal. On 30 January 2013, OHIM dismissed Skype’s appeal and found that the goods and services covered by the marks in question were identical and the marks were similar (ie there was an average degree of visual, aural and conceptual similarity between the marks). OHIM viewed SKY as a brand which enjoys a high degree of distinctiveness in the UK. The conditions for establishing a reduction in the likelihood of confusion on account of a peaceful coexistence of the marks were not established.

On what grounds did Skype appeal to the General Court?

Skype appealed agai

Subscription Form

Latest Articles:

Already a subscriber? Login
RELX (UK) Limited, trading as LexisNexis, and our LexisNexis Legal & Professional group companies will contact you to confirm your email address. You can manage your communication preferences via our Preference Centre. You can learn more about how we handle your personal data and your rights by reviewing our  Privacy Policy.

Access this article and thousands of others like it free by subscribing to our blog.

Read full article

Already a subscriber? Login