The General Court of the Court of Justice of the European Union yesterday handed down rulings in a number of joined cases involving the trade mark SKYPE.
In 2004 and 2005, Skype applied to the Community Trade Marks Office for registration of the figurative and word signs SKYPE in relation to audio-visual goods, telephony and photography goods and computer services relating to software or to the creation or hosting of websites. The applications were opposed by British Sky Broadcasting Group on the basis of its earlier registration for the word SKY which covered identical goods and services.
The Office issued opposition decisions in 2012 and 2013 upholding the oppositions and stating that there existed a likelihood of confusion between the signs on account of their average degree of visual, phonetic and conceptual similarity. Skype appealed to the General Court seeking annulment of the decisions of the Office.
The General Court has now dismissed the appeals. The court has confirmed that the signs are visually, phonetically and conceptually similar. Further, the visual elements of the figurative mark reinforce the conceptual similarity between the marks as clouds are found in the sky. The court also dismissed Skype’s argument that the marks had peacefully co-existed in the United Kingdom.
Skype had also argued that its name was highly distinctive because it’s known by the public. However, this argument was dismissed by the court which declared 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 remarkable statement by the court that could have far reaching effects for any trade mark in relation to goods or services that are one of a kind.
So what now for Skype and its owner Microsoft? In the short term, it seems inevitable that they will seek leave to appeal the decision to the Court of Justice of the European Union, if only to buy more time. The Skype brand is of huge value to Microsoft, having been acquired for a reported US$ 8.5 billion in 2011 and then replacing the Windows instant messaging service in 2013.
The proceedings relate to the registration of the SKYPE trade marks and not their use so we will not see a re-brand in the near future. Whilst the test for infringement is similar to that addressed by the court in these cases, proceedings have not yet been commenced against Skype so the factual considerations, particularly the co-existing use, would be different in any further action to try to prevent the use of the name SKYPE.