On 05/05/2015, Skype received for the second time a negative answer regarding its application for European trademark registration.
The motive for this decision is the opposition of the telecommunication giant Sky, owned by Rupert Murdoch.
The dispute is pending for several years since 2004 when the rising digital communication platform owned by Microsoft makes a request for registration of Community trademark, which should cover the familiar inscription Skype and the blue cloud around it. Once obtained, the European trademark gives protection to the brand on the territory of all Member States. Furthermore, the protection expands automatically in every future new EU member state.
However, an opposition against this application is made by the broadcasting company Sky, which has registered its European CTM a year earlier. In its opposition in the Office for Harmonization in the Internal Market (OHIM) Sky argues the risk of confusion because of the vision and pronunciation proximity of the marks. OHIM accepts the opposition and rejects the Skype’s application for registration, highlighting the risk of misleading of the consumers because of the too similar names and logo. Thus, the priority was given to the logo, which had been registered first.
“Battle of titans”
After the OHIM’s refusal, Skype initiates a civil litigation in the General Court (GC). However, for Skype’s disappointment, the court in Luxembourg confirms the OHIM’s decision, concluding that the Skype’s trademark is "visually, phonetically and conceptually similar" to the British television company’s one. Moreover, even if there is a difference in the pronunciation of the vowel "y" in the words, the mere fact that Sky is part of the word Skype is sufficient to create confusion between the brands.
Skype has one more possibility now, which is an appeal to the European Court within two months, but the appeal can be based only on a point of law.
"The pronunciation of the vowel ‘y' is no shorter in the word ‘skype' than it is in the word ‘sky'," the court added.
There are no comments at the moment.