Skype Loses General Court Appeal against Opposition to its Trade Mark Applications

In a recent decision between Skype Ultd v OHIM, The General Court of the European Union has held there exists a likelihood of confusion in the figurative, and word, mark for Skype to that of Sky.

Background

In 2004 Skype sought the registration of a Community Trade Mark for the word mark, Skype, in class 38. This was opposed by British Sky Broadcasting plc, now Sky plc on the basis that there was a likelihood of confusion with the earlier mark, Sky, in relation to an identical good.

The Opposition Division in 2010 upheld the opposition with respect to the goods and services in question on the basis that there was indeed a likelihood of confusion. This decision was upheld on appeal to the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) on the basis that the marks covered identical services and there existed an average degree of visual, aural and conceptual similarity between the two marks.

In relation to the figurative mark, Skype made an application to register their logo/figurative mark in June 2005 in relation to classes 9, 38, 42. As with the earlier word mark, this figurative mark was opposed by British Sky Broadcasting plc on the grounds of likelihood of confusion in relation to their early Community mark, Sky, on the basis of identical goods and services.

At first instance in the Opposition Division and later on appeal in the Fourth Board of Appeal, the opposition was upheld on the grounds claimed.

Appeal to the General Court of the European Union

Skype appealed to The General Court of the European Union on the basis that contrary to the findings of the Board of Appeal, the signs are not similar, that the marks have acquired, through extensive use, a secondary meaning for the goods and services and that the marks have coexisted in the same market for a number of years without confusion.

In dealing with the claim that the two signs are not similar, the General Court agreed with the assessment of the Board of Appeal that the term Sky represents three fifths of the opposed mark and that the word can be heard in its entirety when the opposing mark is pronounced. In relation to the figurative mark, the General Court agreed with the Board of Appeal basing its approach on the words, taking the bubble cloud around the word Skype as merely a decorative function. On this basis, and more, the General Court agreed with the assessment that it cannot be ruled out that the relevant public would recognise the term, Sky, in the mark applied for, thereby giving a conceptual link between the opposing marks.

With regard to the matter of confusion and coexistence, the General Court approved the reasoning of the Board of Appeal saying that that the opposing signs are visually, phonetically and conceptually similar. In addition to this, it was held that a peaceful coexistence could not be claimed on the basis that the applicant, Skype, had only been in operation 6 months prior to filing to register the mark. That Sky had not brought proceedings against Skype in that 6 month interim period of trading was not an indication of an implied coexistence between the two parties, nor could it be construed as a belief that no likelihood of confusion existed.

The Cases can be read at the following links: T-423/12, T-138/13 and T-184/13.