When applying for a trademark in Europe, the applicable term is the litmus test for the likelihood of a successful grant of right in the trademark. Trademark rights can be secured throughout the European Union by way of an application to the OHIM (office of harmonization of internal market). The OHIM processes the application, giving a three month window for the earlier proprietors or third parties having interest in the trademark to object to the registration of the mark on justified grounds. This is referred to as ‘relative grounds of refusal’ under Article 8(1) of the CTMR.
Time is of essence for proprietor of the earlier mark to exercise his right to protect and preserve its existence by way of opposition against new applications for registrations identical or similar to the owner’s mark with respect to identical or similar goods and services.
In the present case (T-183/13), the applied SKYPE trademark designating the classes (9, 38, and 42) was opposed by British SKY Broadcasting Plc (now Sky International) of the mark, SKY, on the basis of earlier registration and on the ground of likelihood of confusion between the marks in respect of identical goods and services at community level mentioned under Article 8(1)(b) of Community Trademark Regulation.
In the decision dated 5th May, 2015, the General Court of the European Union concluded, upon examining the opposition by British SKY Broadcasting Group Plc (now SKY International) against Skype Ultd, that there is an existence of likelihood of confusion between the prior registered mark, “SKY” and the applied mark, “SKYPE” preventing the registration of the sign, SKYPE, in the European community.
Skype Ultd appealed that the sign at issue was dissimilar, the acquired distinctiveness through prolonged use created a common knowledge of the difference in marks contributing to offset any similarity between the marks thereby excluding any possibility of confusion amongst general public.
The case highlights the fact that the eventual fate of the trademark rests on the applied degree of caution when selecting the term for the trademark in application. On a scale of likelihood of acceptance of the mark at the Intellectual Property office, a generic mark has least while an arbitrary/fanciful mark has the strongest possibility.
The General Court affirmed the decision of the OHIM Board of Appeal finding lack of significant differences between the dominant and distinctive component of the marks through its strict adherence to the global appreciation test in assessment of the likelihood of confusion between the two marks. The consistent method compares the marks on three levels: aural, visual and conceptual from the perception of the average consumer.
The General Court rejected the appeal based on the following comparisons:
- Medium degree of visual similarity: The court stated that,”even though the word element of the mark applied for is written as one word, the relevant public would notice the three letters ‘sky’ common to the two marks, as they are located in the beginning of that word element.”
- The figurative element of the word mark (bubbles bordering the word) was decided to be a mere decorative function, highlighting the contours of the word without adding any significant attribute to the word failing to capture the attention of the average consumer to a particular logo assignable to the word element.
- Medium degree of phonetic similarity as both the terms when pronounced came as one syllable(‘skaip’ and ‘skai’) leading the beginning to be coincided , the only difference being the final letter ‘p’ of the applied mark.
- Medium degree of conceptual similarity between he applied mark and sky. Sky in the English language implies, ‘the region of the atmosphere and outer space seen from the earth’ while skype, although a coined word, would be construed amongst general public ‘as originating from the word, sky’. Adding that, “conceptually, the figurative element conveys no concept, except that of a cloud.’(That) would further increase the likelihood of the element “Sky” being recognised within the world element “Skype”, for clouds are to be found in the sky and thus may readily be associated with the word sky.”
Touching upon the figurative element further, the General court addressed on the issue of coinciding terms of the mark. According to the Guidelines for examination by OHIM on Community Trademarks,” An additional element suffices the non-identical nature of the marks; it is immaterial whether the added element is a word, a figurative device or a combination of the two. Consequently, two word marks will not be considered identical if one is contained within the other but is accompanied by further characters”. With that in consideration, ideally, the sole fact that Sky is included in the term Skype would not have made the latter identical or confusing with the former mark on addition of further elements or figures.
However, the General Court disregarded the distinguishing feature of the bubbles or cloud formed by bordering of the contours of the word mark by stating that such addition is less likely to influence the overall impression created by the mark. The evidence presented to highlight the significant differences between the sign and trademark to prove they do not go unnoticed by an average consumer were found insufficient.
The claim of acquired distinctiveness in the relevant market forwarded by Skype was disregarded by the General Court stating that, the acquired distinctiveness should be measured in respect of the public’s acknowledgment of the earlier mark (SKY) and not the applied mark (SKYPE).
Whilst the case assures the strict adherence to the global appreciation test in assessment of likelihood of confusion, it still leaves us wanting for a review and detailed analysis of the ‘average consumer or relevant public’ and the inclusion of the acquired distinctiveness of the applicant’s mark as well. With respect to the settled definition of relevant public, it is reasonably well informed and reasonably observant and circumspect (Lloyd Schuhfabrik Meyer ). By way of construction, relevant public in the European Union, is tech-savvy public engaged and adept in the VOIP and text services, capable of differentiating between SKY and SKYPE when viewing in entirety therefore could be a point to be deliberated upon in the court.
Further, the court added, even if consideration was paid to the acquired distinctiveness of Skype, on the fact that public identifies it with telecommunication services, it would be descriptive, thus not registrable. The judgment on this point leaves us pondering on the definition of descriptiveness. While term, “skype” is adjudged to be descriptive and thus non-registrable, it is noteworthy that the stated term is not synonymous to video calling in general or interchangeable for the term “video calling” but is synonymous with video calling in respect of a particular software, particular to a service provided by Skype, same as “FaceTime” is suggestive of video calling but in respect of particular software, the particular service it provides. Thus, at best leaving an understanding of the term, “SKYPE” as a suggestive mark. Deliberating on the same, the definition of average consumer.
In the case, Apple Computer, Inc. v OHIM, the relevant public has been previously held by Court of First Instance to encompass , “users likely to use both the goods and services covered by the earlier mark and the product covered by the mark applied for which were found to be identical or similar.” The definition points us to a consumer who is aware and adept in technology and leaving rare possibility in the current technology savvy generation to use FaceTime, hangout, sky and skype interchangeably.
Several glaring differences come to fore when one recalls Skype, the distinctive and dominant colour scheme of the applied sign, the additional figurative element leaving an impression on the average consumer who uses or used skype contributing significantly to the distinctiveness of the sign. The trademark SKY might have acquired distinctiveness but not in respect to the added figurative element or the caller tune of SKYPE or the common language amongst the general public which refers video calling as skyping and not skying.
It still misses on what seems to be most apparent to general perception which in the court of law must be captured and represented through detailed analysis.
Having stated that, the reality is that the judgment is a cautionary tale emphasizing a stronger degree of contemplation to meticulously assess the degree of distinctiveness of the term before making an application for registration of mark to prevent disappointment of rejection or revocation of application in the future.
The silver lining in the cloud now rests either in a co-existence agreement of Skype Limited with SKY International or an appeal to the European Court of Justice but solely on the points of law.