In the longstanding dispute between SKY and SKYPE, SKY has successfully stopped Skype's community trade mark applications reaching registration. The General Court held that the addition of "PE" on the end of SKY is not sufficient to differentiate SKYPE from SKY.
The dispute began in 2005 when British Sky Broadcasting Group filed a notice of opposition to Skype's application for the word SKYPE and the below figurative mark pleading a likelihood of confusion with its earlier community word mark SKY, filed in 2003 for identical goods and services:
The General Court explained its reasoning for its decision stating that the pronunciation of the vowel 'y' is no shorter in the word 'skype' than it is in the word 'sky'. It added that the word 'sky', part of the basic vocabulary of the English language, remains clearly identifiable in the word 'skype', in spite of the fact that the latter is written as only one word. Further, the element 'sky' in the word 'skype' can perfectly well be identified by the relevant public, even if the remaining element 'pe' has no specific meaning.
In relation to the figurative mark applied for by Skype, the General Court held that, even though the word element 'skype' is surrounded by a jagged border in the shape of a cloud or a bubble, this does not affect the degree of visual, phonetic and conceptual similarity. Visually, the figurative element does no more than highlight the word element and is, therefore, perceived as a border. Phonetically, the figurative element in the shape of a border cannot produce any phonetic impression. Conceptually, the figurative element conveys no concept, except perhaps that of a cloud, which would further increase the likelihood of the element 'sky' being recognised within the word element 'skype', for clouds are to be found 'in the sky' and thus may readily be associated with the word 'sky'.
Skype argued that the 'skype' signs are highly distinctive because they are known by the public. However the General Court held that, even if the term 'skype' had acquired a meaning of its own for identifying the telecommunications services provided by the company Skype, it would be a generic, and consequently descriptive, term for services of that kind.
Lastly, the General Court confirmed that the co-existence of these marks without confusion was not sufficient to show that there was no likelihood of confusion. Unfortunately for Skype, only the co-existence up to the date of its trade mark application (22 months) can be taken into account. At the date of the application, co-existence had only occurred in relation to peer-to-peer communications services and could not, therefore, lessen the likelihood of confusion in respect of the many other goods and services covered by the signs.
Skype may decide to appeal this decision given the value of its brand in the UK. However, in the meantime, brand owners should note that the addition of two letters at the end of a mark may not be sufficient to differentiate two trade marks.
For more information on anything in this article or to find out more about what the Brand Guardianship Team can offer please contact Bill Gornall-King on 0118 952 7112 or email firstname.lastname@example.org.
Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.