EU court sides with Sky in trademark battle against Skype

DetailsEditor | 06 May 2015

In a delicious irony given the general antipathy of the station's leading shareholders to the EU, the General Court of the European Union has ruled for pay-TV giant Sky in a trademark battle with Skype.

Essentially, the court confirmed that there exists a likelihood of confusion between the figurative and word sign 'Skype' and the word mark 'Sky', particular when expressed in capital letters. In 2004 and 2005 Skype, now owned by Microsoft, applied to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for registration of the figurative and word signs SKYPE as a community trade mark for audiovisual goods, telephony and photography goods and computer services relating to software or to the creation or hosting of websites. In 2005 and 2006, British Sky Broadcasting Group, now Sky plc and Sky IP International, filed a notice of opposition, pleading the likelihood of confusion with its earlier Community word mark SKY, filed in 2003 for identical goods and services.

In 2012 and 2013, OHIM upheld the opposition, considering, in essence, that there existed a likelihood of confusion of the signs at issue on account. In particular it believed that there was an 'average degree' of visual, phonetic and conceptual similarity and that the conditions for establishing a reduction of that likelihood had not been satisfied.

In this latest judgement, the Court dismissed Skype's actions and by so doing confirmed that there exists a likelihood of confusion between the figurative and word signs.

The court also confirmed that account cannot be taken of the peaceful coexistence of the signs at issue as a factor that could reduce the likelihood of confusion, the conditions in that connection not being satisfied. It noted that the 'peaceful coexistence' of those signs in the United Kingdom concerns only one isolated, highly specific service (namely, peer-to-peer communications services) and cannot, therefore, lessen the likelihood of confusion in respect of the many other goods and services covered by the signs. In addition, 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.

Microsoft is thought to be lodging an appeal against this judgement