In 2004 and 2005, the company Skype registered the word and figurative mark SKYPE at the Office for Harmonization in the Internal Market (OHIM) as a community trademark for goods in the field of the configuration of audio and video devices, telephone and photo services, and IT services in connection with software and setting up or hosting websites.
In 2005 and 2006, the company British Sky Broadcasting Group, now Sky and Sky IP International, filed an opposition against the trademark and argued likelihood of confusion with their community word mark SKY, which had been registered in 2003 for the same goods and services.
Registered Word and Figurative Mark
In its decisions of 2012 and 2013, the OHIM allowed the objection and stated that there was a likelihood of confusion between both opposing trademarks owing to their figurative, phonetic and conceptual medium degree of similarity and that no conditions for determining a reduction of the likelihood were given. Skype then requested a withdrawal of this decision at the General Court of the European Union.
With today’s decision, the court rejected the appeal by Skype and thus confirmed that there is a likelihood of confusion between the word and figurative mark SKYPE and the word mark SKY. With respect to the figurative, phonetic and conceptual similarity of the opposing trademarks, the court stresses that the consonant “y” in the word “skype” is not pronounced shorter than in the word “sky”. Moreover, the word “sky”, which is part of basic English vocabulary, is clearly recognizable in the word “skype” even though it is written in one word. After all, the respective consumer will be able to see the element “sky” in the word “skype” even if the remaining element “pe” does not have a meaning on its own. The fact that the word element “skype” in the registered trademark is encircled by a cloud or speech bubble has no effect on the medium degree of figurative, phonetic or conceptual similarity. From the visual point of view, the figurative element is limited to highlight the word element and is therefore only perceived as a border. From the phonetic point of view, the figurative element in the form of a border is not suited to create an aural impression–this is only reserved for the word element. Conceptually, the figurative element could only suggest being a cloud, which again would be suited to increasing the likelihood of the element “sky” being recognized in the word “skype” as clouds are located in the sky and therefore establish a connection to the word “sky”.
With respect to the argument, the distinctiveness of the trademark “skype” is higher due to its notoriety with the public, the court states that the word “skype” is a common and thus descriptive term for its kind of service, even if it should have an own meaning as the telecommunication service provided by the company Skype.
Finally, the court confirms that it is not possible to take the peaceful coexistence of both trademarks in the UK as a factor suited to reduce the likelihood of confusion, as the conditions for such argumentation are not given. The peaceful coexistence of these trademarks in the UK only affects an isolated and very specific service (point-to-point communication services), and is therefore not suited to reduce the likelihood of confusion for all the claimed goods and services. Moreover, this coexistence has not been in existence long enough, so that it could be assumed that it was based on the lack in likelihood of confusion recognized by the respective consumers.
Media and Information
General Court of the European Union
Press Release No. 50/15
Luxemburg, Mai 5, 2015
Rulings on the legal cases: T-423/12, T-183/13 and T-184/13 Skype Ultd/HABM