Sky Wins Battle of the Communication Brands
A judgment that generated a lot of column inches but had little practical effect was decided recently by the General Court of the European Union, when Skype (Skype Ultd) was denied the ability to register its name as a trade mark on the ground of its similarity to 'Sky'. The Sky plc group had opposed the registration, claiming that there could be confusion between the two brands due to the similarity of 'Skype' to the already existing 'Sky' brand – which was considered to possess a high degree of distinctiveness, especially in the UK market.
It was of significance that the Court was of the opinion that the services provided by the two businesses are similar.
The Court considered that 'the global assessment of the likelihood of confusion, in terms of the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components'.
The Court found that the two marks have a 'medium degree of phonetic, visual and conceptual similarity'. This, together with 'the high degree of distinctiveness of the earlier mark [Sky] at least in respect of some of the relevant goods and services covered by it', served to confirm the existence of a likelihood of confusion for the relevant public in the UK.
The reason why the practical effect of the Court's decision is limited is that it did not order Skype to cease using its name in European markets.
Skype clearly considers that the inability to register the name is an undesirable outcome as it has already announced that it is likely to appeal the decision.
The case does illustrate the importance of making sure that a trade mark registration is likely to be granted in any market in which a trading name is likely to be used before settling on it.