The Court of Justice of the European Communities has dealt a crushing blow to Skype Ultd in its application to register SKYPE as a trade mark.
In 2004, an application for a Community Trade Mark for SKYPE was filed with the Office for Harmonisation in the Internal Market (“OHIM”), seeking protection in Class 38 for “providing Voice Over Internet Protocol (“VOIP”) peer-to-peer communications, electronic transmission of data and documents over computer terminals and instant messaging services, providing high speed access to area networks and a global computer information network”.
British Sky Broadcasting Group Plc – now Sky Plc – filed a Notice of Opposition based on their earlier Community word Mark SKY, also in Class 38, principally for telecommunication services. The opposition was based on a likelihood of confusion between the two marks.
Sky’s opposition was upheld, but Skype filed an appeal with OHIM in 2010. The OHIM Board of Appeal dismissed that appeal in 2013, finding that there was a likelihood of confusion, even taking into account a possible higher degree of attention of the relevant consumer.
A further appeal ensued, this time to the CJEC, in which Judgment was handed down earlier this month. The CJEC said that “it could not be assumed that the average consumer of VOIP peer-to-peer communication services is, as a matter of principle, more circumspect and better informed than the average consumer of television services”. The SKY mark had an enhanced distinctiveness in the United Kingdom and its recognition by the public had not been overstated.
Skype tried to argue that SKYPE had acquired a secondary meaning as the term “skype” had actually acquired a meaning of its own for identifying the services covered by the mark. This was met by the ruling that, if that were the case, then “skype” would be a generic term and therefore descriptive, which is not permitted under the trade mark registration legislation.
The CJEC approved the assessment of the Board of Appeal that the marks are visually, phonetically and conceptually similar, dismissing the action and ordering Skype Ultd to bear its own costs and to pay those of OHIM and Sky. Skype’s brand protection cannot now be effected by way of a trade mark.
For guidance on trade mark registration and how best to protect your intellectual property against unfair competition and passing off, contact Tony Catterall, Head of the Intellectual Property Team at Taylors, on 01254 297900 or via email at firstname.lastname@example.org.
Taylors is the only North West based firm to have been appointed as a legal affiliate to the National organisation Anti Copying In Design (“ACID”).