Sky v Skype – protecting your intellectual property
A company’s intellectual property is a valuable asset; its name and branding tell customers who the company is and allow them to recognise the products and services which they provide. It can be an extremely valuable asset to any company, both to distinguish them from competitors and as a mark of quality and reliability.
We often assist businesses whose failure to protect those assets by early registration has lead to complicated disputes, the cost of which may have been avoided. The recently decided dispute between Microsoft and Sky is an excellent example of the importance of early trademark registration.
In 2004 Microsoft applied for the registration of the figurative and word sign SKYPE as a trademark in various registration classes relating to software or to the creation of hosting of websites. The application was opposed by Sky on the basis that there was a likelihood of confusion between the trademark applied for and its already registered trade mark SKY, which was registered in the same registration classes the previous year and the opposition was successful.
After a number of appeals to the decision, the EU Court of Justice has ruled in favour of Sky to prevent Microsoft from registering Skype’s name and ancillary bubble-design logo as trademarks on the basis that there exists a likelihood of confusion between the existing trade marks and the trade marks they applied for.
Sky has not yet challenged Microsoft’s ongoing use of the Skype mark, merely objecting to its registration at this stage; however, thanks to the early registration of its trademark, Sky has a number of ways to protect its intellectual property, which could include pursuing Microsoft for a licensing fee for the use of the mark.
The case is a reminder to companies to take early steps to protect their intellectual property, an often forgotten and valuable asset.