The EU’s General Court has once again shed light on which factors must be taken into consideration to establish whether two trademarks could cause confusion.

If such confusion exists, it would not be possible for both marks to be registered as Community trademarks.

The facts of this case were briefly as follows. In 2004 and 2005, Skype applied to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for the registration of the figurative and word signs Skype as a Community trade mark for audiovisual goods, telephony and photography goods and computer services relating to software or to the creation or hosting of websites.

Sky plc and Sky IP International filed a notice of opposition, pleading the likelihood of confusion with its own registered Community word mark Sky, filed in 2003 for identical goods and services. OHIM upheld the opposition, concluding that there existed a likelihood of confusion between the two signs because of their degree of visual, phonetic and conceptual similarity. Skype sought annulment of the OHIM’s decision before the EU’s General Court.

The General Court confirmed that there existed a likelihood of confusion between the figurative and word sign Skype and the word mark Sky.

Skype alleged in its defence that the skype signs are highly distinctive

It noted that the pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’. Furthermore, the Court observed that the word ‘sky’, part of the basic vocabulary of the English language, remains clearly identifiable in the word ‘skype’, in spite of the fact that the latter is written as only one word. The element ‘sky’ in the word ‘skype’ can perfectly well be identified by the relevant public, even if the remaining element ‘pe’ has no specific meaning, the Court affirmed.

The Court disregarded the fact that in the figurative mark, ‘skype’ was surrounded by a jagged border in the shape of a cloud or a bubble. It concluded that this feature did not affect the visual, phonetic and conceptual similarity and was perceived as a mere border which could not produce any phonetic impression.

The Court also observed that the figurative element conveys no concept, except perhaps that of a cloud, which would further increase the likelihood of the element ‘sky’ being recognised within the word element ‘skype’, since clouds are to be found ‘in the sky’. Thus the figurative mark ‘skype’ may readily be associated with the word ‘sky’.

Skype alleged in its defence that the skype signs are highly distinctive because they are known to the public. However, the Court discarded this defence, declaring that even if the term ‘skype’ acquired a meaning of its own for identifying the telecommunications services provided by the company Skype, it would be a generic and descriptive term for services of that kind.

The Court also noted that the peaceful coexistence of the two signs in the UK – that could reduce the likelihood of confusion – relates only to one isolated, highly specific service, namely peer-to-peer communications services.

Such co-existence cannot, therefore, mitigate the likelihood of confusion in respect of the other goods and services covered by the signs.

Furthermore, the Court concluded that coexistence had not lasted long enough to assume the absence of any confusion in the mind of the public.

The importance of registering a trademark either with the national trademark office or with the European or international office is certainly acknowledged by many companies and traders.

It is such registration which grants full protection to the sign or mark being used by a company to distinguish its goods or services from those of another.

Nonetheless, as this judgment shows, registration is not always a piece of cake and the utmost care will be taken by the respective national, European or international authorities to safeguard the rights of those proprietors who enjoy prior rights due to an earlier registration of their mark.

mariosa@vellacardona.com

Mariosa Vella Cardona is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property law.