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Sky vs Skype

Trade mark problems – Sky vs Skype

September 8, 2010

Sky has apparently been battling against Skype for the past 5 years over the ‘Sky’ part of their name. Sky claims that its rights in the ‘Sky’ name are infringed by Skype, and that people are confused into believing them to be part of the same company.  So far Skype has managed to fight off these challenges in Switzerland, Turkey and Brazil, although the European Union’s OHIM has upheld Sky’s opposition, which Skype intends to appeal. The opposition was upheld on the basis that Skype’s bubble logo is similar enough to the Sky trademark registration to be confused.

BSkyB told the Guardian that, “The key contention in the dispute is that the brands SKY and SKYPE will be considered confusingly similar by members of the public. This was supported by consumer research conducted by Sky, and which was taken into account by the relevant authorities when they recently found in Sky’s favour.  At this stage Sky has not brought any proceedings for trademark infringement against Skype.”

 Sky also said it had previously taken legal action against a string of companies trying to use the “Sky’ brand name to piggyback off its brand. Skype has made no comment but noted in a recent initial offering document that if it could not register its trademark, it “may have a material adverse effect on our business. Moreover, a successful opposition to our application in one or more countries might encourage BSkyB or other third parties to make additional oppositions or commence trademark infringement proceedings.

If Skype loses the case it could be banned from trading under the name SKYPE. Both Sky and Skype share a similar area of work – namely, providing telephone contracts. This could mean that the two companies could be viewed as providing competing services, leading to confusion between the brands.  One idea mooted in the Guardian article, for Skype to avoid trade mark infringement proceedings, is it sought to resolve the problem by entering into a licensing agreement with BSkyB which would allow them to use the Sky element of the Skype name.

Skype is a well-known brand name, and a company, which has had 560 million registered users. Losing its rights to trade under this name could have a significant impact on the business for the worse.  We recently wrote about the added difficulties a business faces the later it is found out that it lacks the necessary rights to its name.

Although Sky has so far not pursued Skype for trademark infringement, if BSkyB successfully manages to do so, then Skype will, in all likelihood have to re-brand.