The EU General Court has upheld a decision to refuse the registration of Skype’s word and logo Community Trade Marks.
The registrations were refused on the basis that there is a likelihood of confusion with Sky’s earlier word mark. The Sky mark was registered in 2003, whereas the Skype marks were filed in 2004 and 2005. The marks were applied for in respect of identical classes of goods and services.
Skype argued that the marks were not similar and that its marks had acquired a secondary meaning through extensive use (the term “to skype” has been used as a verb to make video calls), which it argued could counteract any similarity with the Sky mark. Further Skype argued that the marks have co-existed in the market for ten years without confusion.
However, the EU General Court took consumer research into account, finding that there were “visual, phonetic and conceptual” similarities between the marks. The court said that any confusion must be judged having regard to the level of recognition of the Sky mark, rather than the later Skype mark applications. Finally, the peaceful co-existence was deemed to be irrelevant, on the basis that confusion must be judged at the date of filing of the Skype marks.
While the decision does not prevent the continued use of the Skype brand name, it does prevent registration of those trade marks with OHIM (the Community trade marks office). Microsoft (which owns Skype) has indicated its intention to appeal the decision.
Contributed by Brian McElligott.
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