General Court: Skype and Sky are too similar

The General Court of the European Union decided in its judgement on 05 May 2015 that there exists a likelihood of confusion between the word-/figurative mark “Skype” and the word mark “Sky” (T-432/12, T-183/13, T-284/13).

Almost a decade ago, the internet telephone company Skype applied for the registration of the word-/figurative mark “Skype” as Community Trade Mark among others for goods and services in classes 9, 38 and 42. British broadcaster Sky filed an opposition against this registration arguing a likelihood of confusion between the sign Skype and its prior trade mark Sky registered as a Community Trade Mark for the same goods and services.

The Office for Harmonization in the Internal Market (OHIM) in Alicante ruled in favour of Sky. This decision was now confirmed by the General Court.

The Court argued that the visual, phonetic and conceptual similarity of the sign leads to an average degree of similarity as the word “sky” remains an identifiable part in the word “skype”. Furthermore, the jagged border in the shape of a cloud or a bubble which surrounds the word Skype does not diminish the average degree of similarity. In fact, the shape of a cloud may readily be associated with the word „sky“.

Skype had argued that the sign Skype is highly distinctive because it is known by the public. However, the Court pointed out that even if the term “skype” had acquired a meaning of its own for identifying telecommunications services provided by the applicant, it would then be a generic, and consequently descriptive, term for services of that kind. Also it is the recognition by the relevant public of the earlier mark and not that of the mark applied for that has to be taken in account when determining whether there is a likelihood of confusion.

The Court further rejected Skype’s argument that a peaceful coexistence of the marks in question in the United Kingdom reduces the degree of likelihood of confusion. The coexistence of the marks may only be assumed for peer-to-peer communication services and not the remaining goods and services covered by the application of the mark Skype. Coexistence concerning only one isolated and specific service among many other goods and services applied for cannot reduce the likelihood of confusion regarding all the goods and services that are covered by the trade mark application.

As a consequence of this judgement Sky could i.a. prohibit the use of the trademark Skype forcing the company to market its services under a new trade mark. However, Skype-owner Microsoft has already announced that it will appeal the decision to the ECJ.