The Skype's the limit: Sky ousts rival brand

The Court of Justice of the European Union gave judgment today in Cases T-423/12, T-183/13 and T-184/13 Skype Ultd v OHIM. These decisions, which were not yet available online when this Kat last clicked their links but which soon should be, have been handily summarised by a Curia media release which reads like this:

The General Court confirms that there exists a likelihood of confusion
between the figurative and word sign SKYPE and the word mark SKY

In 2004 and 2005 Skype applied to the Office for Harmonisation in the Internal Market ....  (OHIM) for registration of the figurative and word signs SKYPE as a Community trade mark for audiovisual goods, telephony and photography goods and computer services relating to software or to the creation or hosting of websites [note: this is a very much wider category of goods and services than those for which Skype is generally known].

In 2005 and 2006, British Sky Broadcasting Group, now Sky plc and Sky IP International, filed a notice of opposition, pleading the likelihood of confusion with its earlier Community word mark SKY, filed in 2003 for identical goods and services.

Figurative/word sign applied for

/ SKYPE 

Word mark relied on in support of opposition

SKY

By decisions of 2012 and 2013, OHIM upheld the opposition, considering, in essence, that there existed a likelihood of confusion of the signs at issue on account, in particular, of their average degree of visual, phonetic and conceptual similarity and that the conditions for establishing a reduction of that likelihood had not been satisfied. Skype seeks annulment of those decisions before the General Court.

By today’s judgments, the Court has dismissed Skype’s actions and by so doing confirmed that there exists a likelihood of confusion between the figurative and word sign SKYPE and the word mark SKY.

As regards the visual, phonetic and conceptual similarity of the signs at issue, the Court has confirmed that the pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’. In addition, the word ‘sky’, part of the basic vocabulary of the English language, remains clearly identifiable in the word ‘skype’, in spite of the fact that the latter is written as only one word. Last, 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 [Hmm. It never occurred to this blogger that the "sky" element of "Skype" was anything to to with the word sky, any more than it might occur to him that the "dog" element of the word "dogma" was anything to do with dogs].

Moreover, the fact that, in the figurative sign applied for, the word element ‘skype’ is surrounded by a jagged border in 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 no more than highlight the word element and is, therefore, perceived as a mere border. Phonetically, the figurative element in the shape of a border cannot produce any phonetic impression, this latter remaining determined solely by the word element. Conceptually, the figurative element conveys no concept, except perhaps that of a cloud, which would further increase the likelihood of the element ‘sky’ being recognised within the word element ‘skype’, for clouds are to be found ‘in the sky’ and thus may readily be associated with the word ‘sky’.

So far as concerns the argument that the ‘skype’ signs are highly distinctive because they are known by the public, 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 [this is a bit of a surprise, but maybe the full text of the judgment will make things clearer. If Skype is a generic term for services of that kind, much the same can be said about any trade mark for a service which is the only one of its kind ...].

Lastly, the Court confirms that account cannot be taken of the peaceful coexistence of the signs at issue as a factor that could reduce the likelihood of confusion, the conditions in that connection not being satisfied. The peaceful coexistence of those signs in the United Kingdom concerns only one isolated, highly specific service (namely, peer-to-peer communications services) and cannot, therefore, lessen the likelihood of confusion in respect of the many other goods and services covered by the signs. In addition, that 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.

Nearly two years ago Sky drove Microsoft's SkyDrive away [see earlier Katpost here].and forced it to rebrand as OneDrive.  Now Skype looks as though it has fallen too -- but this Kat cannot imagine that there not be a further appeal, to the Court of Justice of the European Union itself, if only on the basis that the Skype brand is now ubiquitous and must be of huge value.