Under Community trade mark law, when OHIM assesses the likelihood of confusion between two marks, it considers the issue as at the date of filing of a Community trade mark application, rather than at the date of the final hearing of the case (which could be years later).
Skype fell foul if this in Skype Ultd v OHIM (2015) Case T-183/13. Sky Plc (formerly BSskyB) opposed Skype's application to register the word "SKYPE" as a Community trade mark. OHIM (and, on appeal, the EU General Court) considered the likelihood of confusion between the mark "SKYPE" and Sky's earlier registered Community trade mark for the word "SKY" as at 6 February 2004 (6 months after Skype had started trading).
Skype's application covered "providing voice over the Internet protocol (VOIP) peer-to-peer communications, electronic transmission of data and documents over computer terminals and instant messaging services; providing a high speed access to areas networks and a global computer information network".
Sky's registration for its "SKY" mark covered "telecommunications, including video conferencing services and sharing of files, images, music, video, photos, drawings, audio-visual, text, documents and data, but excluding telegraph communications services."
Sky argued that there was a likelihood of confusion on the part of the public, due to the identity/similarity between its SKY mark and the SKYPE mark and the identity/similarity between the services for which its mark was registered and the services covered by Skype's application.
The Court ruled that the services covered by both marks were identical.
The Court also ruled that the marks were visually, phonetically and conceptually similar. Visually, an average consumer would notice the three letters "sky" in both marks, as they are located at the beginning of both marks. Phonetically, both marks are pronounced in one syllable and the beginning of each mark is identical, the only difference being the final ''p'' of "SKYPE". Conceptually, the word "SKY" was taken to mean the region of the atmosphere and outer space seen from earth, and, although "SKYPE" has no meaning, there was a possibility that the public would recognise the word ''sky'' within the mark.
The Court dismissed Skype's arguments that the pronunciation of the ''y'' vowel in its mark is shorter than it is in the "SKY" mark and that the average consumer would not recognise the ''sky'' element of the "SKYPE" mark, as the remaining ''pe'' element does not have its own meaning.
The Court found that the "SKY" mark had an enhanced distinctive character for certain goods/services in the United Kingdom, as a result of the public's recognition of the mark.
Skype attempted to argue that its mark had acquired a secondary meaning, as a result of extensive use (e.g. members of the public using the phrase "Skype me" and the like) and therefore this secondary meaning counteracted any similarity between the "SKYPE" and "SKY" marks. On the basis that Skype had only been trading for six months when it filed its application, this argument was rejected.
As a result of the identity of the services, the visual, phonetic and conceptual similarity between the marks and the high degree of distinctiveness of the "SKY" mark, the Court found that a likelihood of confusion arose and the Court refused to register the word "SKYPE" as a Community trade mark.
Time will tell whether Sky will issue registered trade mark infringement proceedings against Skype, in light of this decision (although the test for infringement is slightly different).