In three judgments issued on 5 May 2015, the General Court of the European Union ("General Court") denied the registration of "SKYPE" as a Community trade mark ("CTM"). The General Court thereby upheld the opposition brought by Sky plc (formerly British Sky Broadcasting Group plc) and Sky IP International Ltd (jointly referred to as "Sky").

In 2004 and 2005, Skype had applied to register the word sign and the figurative sign "Skype" as a CTM with the Office for the Harmonisation in the Internal Market (Trade Marks and Designs) ("OHIM"). The registration was sought for classes 9, 38 and 42 of the Nice classification system which comprises, inter alia, audiovisual goods, telephony and photography goods and computer services relating to software or the creation or hosting of websites.

Sky opposed the registration of the trade marks, claiming a likelihood of confusion with its earlier CTM for the word mark "SKY". The OHIM upheld the opposition and Skype appealed to the General Court.

The General Court held that both signs were visually and phonetically similar. In terms of conceptual similarity, the General Court maintained that this was a factual exercise and that the possibility cannot be ruled out that "the relevant public will recognise the term 'sky' in the mark applied for, thus giving rise to a medium conceptual similarity between the two signs". The General Court also considered that with the figurative sign, the contours of the sign could be regarded by the relevant public as representing a cloud (and "clouds are found 'in the sky'") and that this could increase the level of conceptual similarity.

For its part, Skype claimed that any likelihood of confusion was ruled out because its sign had acquired a meaning of its own for identifying the telecommunications services provided by the company. The General Court rejected this argument stating that the meaning that had been obtained could at most be regarded as descriptive of the services. Moreover, the General Court held that the likelihood of confusion is not determined by the acquired distinctiveness of the applicant, but the assessment only takes into account the level of distinctiveness of the earlier registered trade mark.

Finally, the General Court refuted the alleged coexistence between the marks stating that it only related to one specific service and could not lessen the likelihood of confusion in respect of the many other goods and services covered by the signs. The General Court also considered that the coexistence had not lasted long enough (22 months at best) to give grounds for the assumption that it was based on the absence of any likelihood of confusion in the mind of the relevant public. Accordingly, the opposition was upheld and Skype's trade mark refused.

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