Trademarks: “SKY” and “Skype” confusingly similar

The EGC decided that a likelihood of confusion between the word device/mark “Skype” and the word mark “SKY” exists (Judgment dated 5 May 2015; Case No.: T‑184/13). Background of the Case and Subject Matter On 28 June 2005, Skype Ultd., which now belongs to Microsoft, filed for a Community Trademark (CTM) Application at the Office for Harmonization in the Internal Market (OHIM) for the word/device mark “Skype” (see right below). The CTM Application was published in the Community Trademarks Bulletin No 21/2006 of 22 May 2006. Afterwards, on 21 August 2006, the interveners, British Sky Broadcasting Group plc, now Sky plc, and Sky IP International Ltd, filed a notice of opposition against the trademark applied for. The opposition was based, in particular, on the earlier CTM “SKY”, which was filed on 30 April 2003 and registered on 14 October 2008. On 16 November 2010, the Opposition Division upheld the opposition. On 11 January 2011, the applicant filed a notice of appeal with OHIM against the Opposition Division’s decision. By decision of 30 January 2013, the Fourth Board of Appeal of OHIM (BoA) dismissed the appeal. In particular, it found that the goods and services covered by the trademarks at issue were identical and that there was an average degree of visual, aural and conceptual similarity between the marks at issue. The BoA is of the opinion, that the SKY brand enjoys a high degree of distinctiveness in the United Kingdom and the degree of its distinctiveness is average for the remaining goods and services at issue. Consequently, the BoA found there to be a likelihood of confusion, even taking into account a possible higher degree of attention of the relevant consumer. Moreover, the conditions for establishing a reduction in the likelihood of confusion on account of a peaceful coexistence of the marks on the market were not fulfilled in this case. Decision of the Court The European General Court (EGC) dismissed Skype’s appeal. The EGC is of the opinion that there exists a likelihood of confusion between the word/device mark “Skype” and the word mark “SKY”. Regarding the visual, phonetic and conceptual similarity of the signs at issue, the EGC has confirmed that the pronunciation of the vowel “y” is not shorter in the word “Skype” than it is in the word “Sky”. In addition, the word “Sky” is part of the basic vocabulary of the English language and remains clearly identifiable within the word “Skype”, in spite of the fact that the latter is written as only one word. Finally, 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. Furthermore, the fact that, in the word/device mark applied for, the word element “Skype” is surrounded by the shape of a cloud or a bubble does not affect the average degree of visual, phonetic and conceptual similarity. Visually, the figurative element does only highlight the word element. Phonetically, the figurative element has no meaning. Conceptually, the figurative element conveys no concept, except perhaps that of a cloud, which would further increase the likelihood of the element “Sky” being recognized within the word element “Skype”, for clouds are to be found. The EGC also does not accept the argument that the “Skype” signs are highly distinctive because they are known by the public. Rather, the Court declares 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. In conclusion, the EGC rejected the applicant’s argument based on a supposed peaceful coexistence between the trademarks. The EGC noted, first, that the coexistence of the trademarks at issue in the United Kingdom can concern only peer-to-peer communication services and therefore, cannot lessen the likelihood of confusion in respect of the many other goods and services covered by the signs. In addition, the coexistence has not lasted long enough to give grounds for the assumption that it was based on the absence of any likelihood of confusion in the mind of the relevant public.