The Skype trademark cannot be registered in the EU due to a likelihood of confusion with the SKY trademark

By three decisions of 5 May 2015 in cases T-423/12, T-183/13 and T-184/13, the General Court of the European Union (“GC”), stated that there exists a likelihood of confusion between the figurative and word trademarks SKYPE and the prior word trademark SKY, which prevents the registration of the SKYPE sign as a Community trademark.

Here’s the background to the dispute. In 2004 and 2005, Skype Ultd applied to the Office for Harmonization in the Internal Market (“OHIM”) for the registration of its word and figurative trademarks. The registrations were sought for classes 9, 38 and 42 of the Nice Classification, i.e. essentially for audiovisual goods, peer-to-peer VOIP communications, computer services and software development. The broadcasting group Sky opposed such applications based on its earlier Community word trademark, which was filed on 30 April 2003 designating in particular the services in classes 9, 38, 41 and 42. The OHIM Opposition Division upheld the oppositions thus rejecting Skype’s applications, and the Board of Appeal in turn dismissed the appeal brought by Skype against the Opposition Division’s decisions. Skype then sought annulment of those decisions before the GC.

In the proceedings at issue, Skype essentially claimed that the OHIM’s decisions to refuse its applications for registration infringed Article 8(1)(b) of Regulation No. 207/2009, according to which “Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected (…)”.

In support of its plea, Skype claimed:

• that the signs at issue are not similar;

• that the trademarks applied for have acquired, through extensive use, a secondary meaning for the goods and services at issue, serving to counteract any similarity between the signs;

• that the trademarks at issue have been coexisting on the market without confusion for many years.

In its decision, the GC dismissed Skype’s claims based on the following reasons.

As regards the similarity between the two trademarks, the GC shared the view of the OHIM Board of Appeal, which had found that:

• “with regard to the visual comparison, the relevant public would notice the three letters ‘sky’ common to the two marks, as they are located in the beginning of the sign. Accordingly, there is a medium degree of visual similarity”; this also applies to the Skype figurative trademark, as “the figurative element merely highlights the word element, specifically on account of the fact that it appears as a border that closely traces the contours of the word ‘skype’, without adding any other identifiable shape”;

• “on the phonetic level… the two signs are pronounced in one syllable (‘skaip’ and ‘skai’) and the beginning of the marks therefore coincide, the only difference being in the final ‘p’ of the mark applied for. There is a medium degree of phonetic similarity”;

• “on the conceptual level, the English word ‘sky’ means ‘the region of the atmosphere and outer space seen from the earth’. Although the term ‘skype’ has no meaning in English, the possibility remains that the relevant public will recognise within it the word ‘sky’, which corresponds to the beginning of the mark applied for. Therefore, there is a medium degree of conceptual similarity”.

The GC then essentially considered irrelevant whether the Skype trademarks had acquired distinctiveness through use (so-called “secondary meaning”), stating that “it is the recognition by the relevant public of the earlier mark and not that of the mark applied for that must be taken into account when determining whether there is a likelihood of confusion between the two marks”. And the GC found that the Sky trademark enjoyed such recognition and distinctive character.

Finally, the GC endorsed the OHIM Board of Appeal’s assessment that the conditions for taking into account the coexistence of the trademarks on the market, as a factor that may reduce the likelihood of confusion, had not been fulfilled. The GC in fact noted first that “the coexistence of the marks at issue can concern only peer-to-peer communication services and not the other services covered by the mark applied for”, which “cannot diminish the likelihood of confusion for the entirety of those services”. In addition, at the date of filing of the Skype trademarks, the applicant’s peer-to-peer communication service had existed for few months. Even accepting the applicant’s claim that that service immediately saw great success following its launch, such period of coexistence, “concerning an activity that was not part of the interveners’ ‘core business’, was manifestly insufficient for assuming that the coexistence was based on the absence of a likelihood of confusion in the mind of the relevant public”.

In conclusion, the GC approved the assessment of the OHIM Board of Appeal and dismissed the actions, ordering Skype to bear the costs incurred by the OHIM and Sky.