EU Court: Skype is too similar to Sky in trademark dispute

[Syt]

http://www.bbc.com/news/technology-32593735

Court says Skype's name is too similar to Sky's

Video chat software Skype's name is so similar to the broadcaster Sky's that the public is likely to be confused between the two, an EU court has ruled.

The judgement prevents Microsoft from registering a trademark for Skype's name and bubble-design logo.

The US company intends to appeal against the decision.

Judges at the General Court of the European Union said: "Conceptually, the figurative element conveys no concept, except perhaps that of a cloud."

"[That] 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'."

Microsoft had brought the case to challenge an earlier ruling by the European Union's Office for Harmonisation of Internal Markets, which, following a 2005 complaint by the broadcaster, also said Skype branding was too similar to Sky's to be granted an EU-wide trademark.

This is not the first legal clash between the two companies.

In 2014, Microsoft changed the name of its cloud storage service from SkyDrive to OneDrive after the High Court in London ruled Sky's trademark had been infringed.

However, a spokeswoman for Microsoft said it was not now facing the prospect of another imminent rebrand.

"The case was not a legal challenge to Skype's use of the mark, it was only against the registration," she told BBC News.

"We're confident that no confusion exists between these brands and services and will appeal. This decision does not require us to alter product names in any way."

Microsoft believes it still had the means to prevent anyone else from trying to call their product Skype.

Smartpen battle

In theory, Sky could now try to pursue Microsoft for a licensing fee even if it did not want to block the use of Skype's name outright.

However, the firm did not directly address this point in a statement released following the ruling.

"Sky notes today's decision from the General Court of the European Union," it said.

"This relates to a long-running dispute with Skype over the extension of its trademark applications to cover a broad range of goods and services that overlap with Sky's own trademark registrations - including, but not limited to, TV related products and services.

"Our intention has been to protect the Sky brand with our research showing that similarities in name and logo have the potential to confuse customers."

I'm not sure I agree with the ruling. In these cases my personal yard stick is, "Is there a chance to confuse the two or think they're part of the same group?" Both Sky and Skype are well known brands, and I doubt anyone thinks that one is connected to the other or that there's competition between the two.

For comparison, see the case of "Focus" in Germany. The news magazine Focus sued Ford when they wanted to introduce their model of the same name, but the courts ruled that the two products were sufficiently dissimilar that there's no risk of the customer being confused or misled. Or think of Bounty which is a paper towel and a chocolate bar.

A counter example would be Budweiser which was an EU beer before Anheuser Busch tried to bring its American Bud over, and this could obviously cause issues if there's two competing same-name brands in the same market segment.

Back to Sky: in Germany there's a supermarket chain of that name, but chances are they registered their brand before the broadcaster (current Sky was previously Premiere in Germany).

[Syt]

Yeah, totally the same.

[celedhring]

Microsoft are being denied trademark protection, not being forced to change the logo. It's not the same issue and the threshold afaik is lower. At the end of the day they can keep using and marketing it.

[Syt]

Though Sky could now push for them to either abandon the brand or (probably more lucrative) charge a licensing fee.

[celedhring]

Since Microsoft would refuse, that would lead to another case where the burden of proof would be higher. If I recall correctly from my IP law classes, Sky would need to prove that Microsoft is purposely leeching off their customers and marketing, which I find doubtful.

The only thing that happened here is that Microsoft wanted a trademark to protect its brand, and has been denied it because there's a similar one already granted. The only thing is that this leaves Microsoft defenceless against people ripping off the Skype brand.

[Syt]

Still doesn't sound like a desirable outcome in this case. It's hard for me not to see this as a case of the EU protecting their own against evöl amerikkkan corporations at the (possible) expense of the consumer.

[celedhring]

Still doesn't sound like a desirable outcome in this case. It's hard for me not to see this as a case of the EU protecting their own against evöl amerikkkan corporations at the (possible) expense of the consumer.

I don't know, Sky is controlled by 20th Century Fox, an American corporation. I think you're reading too much into this.

[Syt]

Maybe.

[The Larch]

Still doesn't sound like a desirable outcome in this case. It's hard for me not to see this as a case of the EU protecting their own against evöl amerikkkan corporations at the (possible) expense of the consumer.

I don't know, Sky is controlled by 20th Century Fox, an American corporation. I think you're reading too much into this.

And Skype, even if owned by Microsoft, was developed by Estonians, Swedes and Danes and is still mostly developed in Estonia.

[Tamas]

Still doesn't sound like a desirable outcome in this case. It's hard for me not to see this as a case of the EU protecting their own against evöl amerikkkan corporations at the (possible) expense of the consumer.

I don't know, Sky is controlled by 20th Century Fox, an American corporation. I think you're reading too much into this.

And Skype, even if owned by Microsoft, was developed by Estonians, Swedes and Danes and is still mostly developed in Estonia.

There are only two possible logical explanations:
-the judge and/or the applicable law is absolutely moronic
-a law nominally meant to control the power of the big corporations is used as a tool in the games/battles of big corporations, as usual

[Admiral Yi]

Ruling sounds retarded to me.

[Grey Fox]

It's a sensible decision, not every brand is needed or deserve to have trademark protection.

This only comes a surprise because the US Court pretty rubber stamp any & all applications.

[Tamas]

It's a sensible decision, not every brand is needed or deserve to have trademark protection.

This only comes a surprise because the US Court pretty rubber stamp any & all applications.

Skype, dude. We are talking about Skype.

[Grey Fox]

It's a sensible decision, not every brand is needed or deserve to have trademark protection.

This only comes a surprise because the US Court pretty rubber stamp any & all applications.

Skype, dude. We are talking about Skype.

Yes? Trade & Patent courts give protection way too easily to internet/software based brands.

[LaCroix]

there's only one skype, and it's not likely to be repeated except for intentional copies. name's too distorted unless EU trademark laws are extremely particular over this issue