EU Court Sides With Sky in Skype Trademark Battle

     (CN) – People are likely to confuse the word marks for British broadcasting group Sky and Microsoft-owned Internet phone service Skype, the EU’s lower court ruled Tuesday.
     The dispute goes back to 2004, when Skype applied for a mark of its figurative and word signs with the EU’s trademark office.
     The following year, British Sky Broadcasting Group filed a notice of opposition since it had already trademarked the similar Sky in 2003 for nearly identical goods and services.
     In 2012 and again in 2013, the EU’s trademark office upheld Sky’s opposition – finding consumers would likely be confused by the dueling Sky and Skype trademarks, given their visual, phonetic and conceptual similarities.
     On appeal to the European General Court, Skype argued that the marks are not similar and even if they are, they’ve been coexisting in the marketplace for years without confusion.
     The EU lower court dismissed Skype’s appeal in a trio of opinions on Tuesday, finding the marks are too similar – particularly given that they’re both single-syllable words.
     “The fact that the identical part of the signs at issue is found in the beginning of the mark applied for is merely one circumstance among others giving rise to similarity between the signs at issue,” the Luxembourg-based court wrote. “The mere fact, relied on by Skype, that visual and phonetic differences are of greater importance in short signs – such as the signs at issue – is not sufficient, in this case, to counteract the similarity created by the elements mentioned above.”
     Furthermore, the strength of Sky’s brand – particularly in the United Kingdom, where millions of households receive the channel – gutted Skype’s argument that opposing mark was weak and diluted, the court said.
     And although the two marks have coexisted “peacefully” in the EU for years – with Skype even advertising on Sky programming – Skype hadn’t been around long enough when it applied for the mark to rely on that argument, the court found.
     “Skype’s peer-to-peer communication service, launched in August 2003, had existed for 22 months. Even accepting Skype’s claim that that service immediately saw great success following its launch, a period of coexistence of 22 months, concerning an activity that was not part of the Sky’s ‘core business’, was manifestly insufficient for assuming that the coexistence was based on the absence of a likelihood of confusion in the mind of the relevant public, a criterion which the applicant must show to exist,” the court wrote.
     “As Sky was correct to emphasize during the hearing, the fact that they did not bring, before filing the community trade mark application, infringement proceedings against Skype could be based on a variety of reasons and would not necessarily mean that they believed there to be no likelihood of confusion between the marks at issue. It must therefore be held that Skype has not shown that criterion to exist,” the court concluded.
     Skype has two months to lodge an appeal with the European Court of Justice.

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