A recent General Court of the EU decision in the Sky v. Skype body of cases that has spanned the last decade, will not be the final straw for Microsoft. According to the BBC Microsoft who owns Skype, after acquiring it in 2013, has announced its intention to appeal the decision. This may be seen as a bold and sensible move since Microsoft is in the process of expanding the brand to replace their Lync product.
What this decision means
This decision prevents Skype from registering for trademark protection, it does not prevent Microsoft from using the Skype brand. Some pundits have suggested that Microsoft may pay a fee to licence the name. At this time, Microsoft has not confirmed that they will be pursuing this route.
It is important to note that this limitation on registration has a jurisdictional limitation. Both companies, which operate globally, will only be bound by court decisions in the European Union. For example, this means that Microsoft’s registration of Skype in the United States will continue to protect them from trademark infringement there.
The Court issued a press release stating that its reasoning for not permitting the registration is that there is a likelihood of confusion between the figurative word and sign for Skype and the word mark for Sky.
This is not the first match-up between Sky and Microsoft. In early 2014, Microsoft was forced to rebrand following the decision that their SkyDrive cloud storage product created a likelihood of confusion with Sky’s mark. The SkyDrive was later renamed OneDrive in order to comply. In its decision, the Court reasoned that the identical portion of the marks coupled with the allusion to the sky and air transmission and similar nature of the products offered made it likely that consumers would be confused.
As Sky is a litigious company, and they have gone to great lengths to protect their brand, there are numerous case examples of where they have either filed a complaint or+ alleged infringement of their trademark. One such examples is of the Livescribe dispute that was filed in 2012. In order to avoid litigation, Livescribe, maker of the Sky Wifi pen, opted to rebrand in the UK.