The blue sky of Skype seems to be overcast by a few clouds! Skype filed the semi-figurative and word community trademarks of Skype in classes 9 and 42. The company British Sky Broadcasting Group filed a notice of opposition to that registration by claiming a likelihood of confusion with its earlier community trademark SKY for similar goods and services.
Semi-figurative mark and word mark requested:
Earlier trademark cited: SKY
The Community Trademark Office (OHIM) agreed to the opposition and Skype appealed to the General Court of the European Union (EGC). But the EGC confirmed the risk of confusion between the trademarks.
The EGC considers that there exists an undeniable visual, phonetic and conceptual similarity between the trademarks. The first syllable “Sky” is the dominant part of the word phonetically and visually and it is similar to the earlier trademark SKY. Conceptually, “Skype” reminds of “Sky” and hence the sky. Furthermore, the cloud drawn around the word reinforces the intellectual similarity since the cloud reminds of the sky.
However, Skype raised a good point derived from the highly distinctive characteristic of the trademark because of its reputation. It is true that the Court of Justice of the European Union (CJEU) has repeatedly deemed that the distinctive characteristic of a trademark can result from its reputation. Hence, for example, in a ruling of 11 November 1997, the CJEU considered in a case, Sabel, that “the earlier trademark had a particular distinctive characteristic, either intrinsically, or because of the reputation it has before the public”. And yet, the EGC decided that the risk of confusion is not discarded because of the reputation of the trademark on the grounds that “assuming that the term “skype” would indeed acquire its independent meaning to identify the services designated by the trademark applied, it would then be a generic term and, consequently, detailed, for these kinds of services”. Admittedly, “skype” is sometimes used as a verb to indicate a mode of audio-visual communication. Hence, many of us have heard “We shall skype tomorrow”. Skype appears to be a victim of its own success. However, shouldn’t we demonstrate its use for any kind of audio-visual communication and not just those through “skype” to consider this term as generic?
Finally, Skype raised the peaceful coexistence of these designations in the United Kingdom as its last argument. But the EGC considered that this coexistence did not last long enough to show the absence of any risk of confusion between the trademarks.
This ruling seems harsh towards Skype, which made numerous investments for its trademark to become renowned and is ultimately unable to safeguard the outcome of its labours. The future shall tell us whether Skype shall choose to appeal against the ruling before the CJEU and what would be its stance on the matter.