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Third strike, not out for Skype


The latest round of the ongoing dispute between Microsoft – owners of the SKYPE voice-over-internet (VOIP) service – and British Sky Broadcasting, (BSkyB) purveyors of a wide range of broadcast and internet services under the mark SKY – has been decided by the General Court of the European Union in BSkyB’s favour. (Skype Ultd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Sky plc and Sky IP International intervening): T-423/12, T-183/13 and T-184/13.)

The General Court has confirmed that the trade marks SKY and SKYPE are so similar to one another that there exists a likelihood of confusion between the two in the mind of the average customer.

The decision is the latest stage of an opposition started by BSkyB in 2006 when Microsoft’s predecessors applied to register the SKYPE mark for a wider range of products and services than those for which the SKYPE mark is best known. BSkyB opposed registration for all goods and services, including the VOIP service generally associated with the SKYPE name.

This is the third decision in a row asserting that the marks SKY and SKYPE are similar; both the Community Office (OHIM) at first instance and the OHIM Board of Appeal agreed that the marks were confusingly similar.

The Board of Appeal expressly commented that, in assessing likelihood of confusion, only the reputation of the earlier mark (SKY) could be taken into account; the fact that SKYPE might have acquired a reputation of its own was immaterial.

The General Court confirmed this, saying that account cannot be taken of the peaceful coexistence of the marks in issue as a factor which might reduce the likelihood of confusion. The marks SKY and SKYPE coexist in the United Kingdom only in respect of one isolated, highly specific service (namely, peer-to-peer communications services) and this cannot, therefore, lessen the likelihood of confusion in respect of the other goods and services covered by the application. In addition, coexistence has not lasted long enough for it to be assumed that coexistence is based on the absence of any likelihood of confusion in the mind of the relevant public.

Microsoft has indicated that it will appeal, again; and notes that BskyB has not taken any steps to interfere with its use of the mark SKYPE. SKYPE is registered separately at the United Kingdom Intellectual Property Office and, for whatever reason, BSkyB has not to date attacked Microsoft’s rights in the mark in this country. It seems, perhaps, that BSkyB’s concern is to prevent expansion of Microsoft’s use and registration of SKYPE from the United Kingdom into the rest of Europe, rather than putting a stop to use of the SKYPE name altogether.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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