The SKYpe’s the limit

A long-running battle between Rupert Murdoch’s BSkyB and internet telecommunications company Skype was revealed earlier this month after Skype filed documents for an initial public offering (IPO).  The IPO statement revealed that Skype has defended numerous BSkyB legal challenges over the use of the word ‘Sky’ in its brand name and logo in various jurisdictions since 2005.

The competing trade marks are here:

The lengthy risks section in Skype’s IPO statement reveals the company has successfully defended BSkyB’s trade mark oppositions in Switzerland and Turkey, as well as to date receiving a positive decision in Brazil.  However, in July this year BSkyB was successful in a first instance decision from the European Union trademark registry (OHIM).  Skype, which has 560 million registered users worldwide (to put that into perspective, it’s about 60 million more users than Facebook), intends to appeal the decision.

The key question to be considered here is whether the trade marks ‘Sky’ and ‘Skype’ are deceptively similar.  Both companies operate in the field of telephony.  BSkyB claims to have conducted consumer research that it says shows public confusion between the two brands which it submitted in its recent OHIM case.   

The Name Inspector, a company name analyst blog, told paidContent:UK, “On the Skype forum, an employee reveals that the name was derived from the expression ‘sky peer-to-peer'” .  But, even though the word ‘sky’ was deliberately used in the company’s name, this does not automatically spell bad news for Skype.  In the Swiss Federal Administrative Court decision (reversing the first instance decision of the Swiss IPO which cancelled Skype’s marks), the Court held that ‘Sky’ had a distinct meaning, but that this meaning was lost in ‘Skype’ which was not commonly understood as “sky peer-to-peer”, but rather as a unique word without any clear meaning.  As far as Swiss courts are concerned, this was sufficient to bar any risk of confusion despite the similarities between the look and sound of the respective trade marks.

We’ll keep our eyes on the Skypes… whoops, we mean skies… for any developments.

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