A cloudy decision

When comparing two marks for the purpose of determining the existence of a likelihood of confusion, phonetic and visual criteria as well as the semantic content of the signs are decisive. In this regard, the figurative component of a word/figurative mark may lead to the verbal component being understood in a confusing manner and therefore the likelihood of confusion with an earlier word or figurative mark must be assumed.

The well-known company Skype registered in 2004 the word/figurative mark shown below for various goods in the fields of audio, video and telecommunications as well as various IT services in connection with software and the Internet with the EUIPO. Against this, the company Sky, despite the coexistence of both marks in the field of peer-to-peer telephony, filed an opposition based on the earlier word mark "SKY" and justified this with an existing likelihood of confusion. The Office found the phonetic, figurative and conceptual likelihood of confusion to be established, upheld the opposition and rejected the application for the word/figurative mark SKYPE. Against this decision, Skype brought an action before the General Court.

The court's decision

The General Court (EuG) confirmed the decision of the EUIPO by judgment of 05.05.2015 (Az. T-423/12). In the court's view, the component "SKY" in the word/figurative mark "SKYPE" is fully contained, clearly recognisable and would also be perceived in isolation by the relevant public. Although the remaining component "PE" has no independent meaning, which would argue against a separate perception of the word component "SKY", on the other hand the figurative component suggests a cloud, which in turn promotes associations with the sky, i.e. "SKY". The earlier mark "SKY" is therefore recognisable in the later mark "SKYPE", which in the court's view is sufficient to establish the phonetic, figurative and conceptual similarity of the word/figurative mark and thus the likelihood of confusion.

Conclusion

To provide background, it should be noted that SKY is not only very well known in its home country of the United Kingdom, but is also very broadly established. Unlike in Germany, the company provides far more than just pay-TV services; it is also active in the internet and telephone business. What is interesting about the decision is that the court bases the isolated perception of the component "SKY" alongside the arbitrary component "PE" on the figurative component, which seems far-fetched. Given the fame of SKYPE and the corresponding figurative mark in the telecommunications field, one could equally well argue with speech bubbles and thus reject an isolated perception of the term "SKY".