Posted by James Worrall, Partner
SKYPE – is it a bubble or a cloud?
The EU General Court has upheld the decision that there is a likelihood of confusion between the word SKYPE, the logo incorporating SKYPE (which the company had sought to register as a Community trade mark) and the existing Community trade mark, SKY.
Sky has claimed for a number of years that the Skype brand is too similar to its brand and creates confusion. When Skype filed a number of trade marks nearly a decade ago, Sky opposed them and the battle has been ongoing ever since.
Judges compared the visual, phonetic and conceptual similarity of the marks and determined that the marks are similar and that “SKY” remains clearly identifiable in “SKYPE” and can be identified by the relevant public even if “PE” has no specific meaning.
Judges further dismissed Skype’s argument that the bubble element gives the mark sufficient distinctiveness from Sky. The Judges considered that the bubble is more akin to a cloud in any event which suggests more similarity to Sky as that is where clouds are to be found.
Skype has indicated that it will appeal the decision to the Court of Justice of the EU. In the meantime SKYPE is left without trade mark protection in the EU and Sky may now bring trade mark infringement proceedings against Skype for infringement of Sky’s trade mark.
Although trade mark litigation is sometimes an essential step which a business has to take, the downsides are that it is often protracted and costly. This case serves to once again highlight the importance of trade mark clearance searches before launching a new business or brand. Seeking the right advice early on reduces the risk of significant damage to your business in the future.
Clearly, the importance of a trade mark clearance search should not be underestimated. These searches will help your business identify if there are similar or identical trade marks already registered which may affect the use or registration of your trade mark.
For advice on this or any other intellectual property matter, please contact James Worrall or other members of our Technology & Media team.
0800 051 8059 Email us