Choosing the right trademark for your brand is not as simple as picking a name that you believe no one else is using. The criteria for you to own trademark rights is that your mark not only be unique but also not confusingly similar to another’s mark. The wording used here is “similar” and not “identical” and that is where most trademark owners lose their trademark rights. This means that if the name you choose to represent your brand is so similar to another’s trademark that it would be likely to confuse the general public, then you may not have the right to that trademark.
Microsoft “Skype” is in exactly such trouble. BBC on the 5th of May has reported that the general court of the European Union has ruled that the name “Skype” is so similar to British broadcaster “Sky” that the public would be likely to confuse the two. Whether or not the general public is in fact going to confuse “Skype” with “Sky” is not the issue. The court feels that there is the “likelihood” of it and hence ruled in favor of “Sky”.
The Court further rejected the Bubble logo that is associated with “Skype” on the grounds that it resembled clouds and thereby a further association with “Sky”. The Court stated, “Conceptually, the figurative element conveys no concept, except perhaps that of a cloud…[That] would further increase the likelihood of the element ‘Sky’ being recognized within the word element ‘Skype’, for clouds are to be found ‘in the sky’ and thus may readily be associated with the word ‘sky’.”
Sky has made an official statement “Our intention has been to protect the Sky brand with our research showing that similarities in name and logo have the potential to confuse customers.”
In 2014, Microsoft faced a similar battle with Sky which resulted in them having to change their trademark for their cloud storage service from Skydrive to Onedrive. The company will appeal the Skype decision but remains to be seen if they will be forced to rebrand this trademark as well for the EU and retain it elsewhere. However, a spokesperson from Microsoft informed BBC that “The case was not a legal challenge to Skype’s use of the mark, it was only against the registration”… And that they are “confident that no confusion exists between these brands and services and will appeal” and that “this decision does not require us to alter product names in any way.”
That being said, the verdict of the EU court opens up the possibility of Sky permitting Microsoft to continue to use the trademark under a license. But, Microsoft is only likely to make that decision after the appeal process is completed.
Author Lynn Bout Lazaro is an IP counsel