Battle of the skies - Sky VS Skype ruling

03 August 2015

The long-running dispute initiated by Rupert Murdoch’s Sky UK against Microsoft’s SKYPE for the use of “SKY” in its mark has come to a head in the EU.

In May, the EU’s General Court handed down judgments confirming earlier rulings that Microsoft’s SKYPE brand cannot be registered as an EU-wide trade mark because UK consumers are likely to confuse it with the well-known SKY television and telecommunications brand.

Outside observers may be bemused by this finding, as consumers of the companies’ products and services have long been used to distinguishing between them without confusion. However, these cases were not about use of SKYPE in the marketplace, but about registering the brand as a trade mark. The Court’s role was therefore not to compare Skype’s business with that of Sky, but to compare the products and services in Skype’s trade mark application with those for which the earlier SKY trade mark is registered. As these products and services are identical, the Court had to assume that both brands might be used in exactly the same market sector, and this ultimately dictated its finding that there was a theoretical risk of public confusion.

While the judgments stand in the way of Microsoft’s current attempts to obtain EU-wide registered trade marks for the SKYPE word and logo, they do not affect the company’s ongoing ability to use the brand and, on 15 July, Microsoft lodged a final appeal against the decisions, up to the Court of Justice (the EU’s highest court). The result of that appeal will determine once and for all whether Microsoft’s current applications to register the brand across the EU will succeed.

Links to the full judgments are here:

http://www.bailii.org/eu/cases/EUECJ/2015/T18313.html  

http://www.bailii.org/eu/cases/EUECJ/2015/T18413.html

http://www.bailii.org/eu/cases/EUECJ/2015/T42312.html

Michael Conway

Michael Conway

Associate Partner

Our Expert
Michael Conway
Michael Conway
Location: Bristol (UK)

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