Why the Sky is the limit for Skype

Sky has successfully opposed Skype's trade mark application for word and device Community trade marks for SKYPE. Skype sought the registrations for audiovisual goods, telephony and photography goods and computer services relating to software or to the creation or hosting of websites. Sky relied on its earlier word mark for SKY, filed for identical goods and services, before the General Court of the European Union.

The General Court found that there existed a likelihood of confusion between the earlier mark SKY and the requested mark SKYPE. In doing so, it made some rather surprising observations:

1. In assessing the visual, phonetic and conceptual similarity of the two signs, the court emphasised that the word 'sky' remains clearly identifiable in the word 'skype'. However, a shorter word (which may well be a trade mark) is often identifiable within a longer word; this is normally only relevant for the global assessment where there is also a higher degree of conceptual similarity between the two.
2. The court acknowledged that the term 'skype' has no inherent meaning. However, it went on to hold that even if the term had acquired a meaning of its own for identifying the telecommunications services provided by Skype, such meaning would render the term generic, and consequently a descriptive term for these services. There is no indication in the court's judgment regarding whether any evidence was brought before the Court to support this rather startling conclusion.

This litigation follows Microsoft and Sky's 2013 trade mark battle in the High Court. Sky was also successful in that claim, which resulted in Microsoft rebranding its cloud storage service from "SkyDrive" to "OneDrive".

It seems unlikely that this decision will force such a change, unless Sky issues infringement proceedings against Microsoft. First, trade mark registries in many Community countries have granted national marks for SKYPE, including the UK, Ireland, Spain, and Germany. In addition, Microsoft only started its rebrand of Lync as Skype for Business in mid-April.