PLEASE NOTE: Information in this article is correct at the time of publication, please contact DFA Law for current advice on older articles.
The economic value of a well-known brand having a registered trade mark is illustrated by two recent court cases involving British Sky Broadcasting (BSkyB), US IT giant Microsoft and free Internet phone service Skype.
Microsoft launched a cloud-based data storage product called ‘SkyDrive’ and BSkyB claimed that it infringed its ‘Sky’ trading name. In evidence, BSkyB referred to at least 17 calls it had received to its helpline concerning SkyDrive by people who thought that SkyDrive was a BSkyB product.
Microsoft claimed that there was no infringement, the term ‘sky’ merely alluding to a service based on ‘cloud’ storage.
The High Court rejected Microsoft’s argument.
BSkyB has also been successful in the European court in opposing the trade mark of ‘Skype’ on the basis of possible confusion, even though BSkyB has accepted advertising from Skype.
The ruling noted that Skype’s argument in support of its claim that ‘the marks have co-existed without confusion, namely that it advertised its services on the opponents’ television channels during the period of one month in 2010, that it sponsored traffic news bulletins on SKY NEWS for an unspecified period in 2009 and that, nevertheless, to its knowledge there has not been a single enquiry expressing confusion received by the parties, fails. The fact that the applicant advertised its products on the opponents’ channels cannot prove that the public does not confuse the signs. In any case, likelihood of confusion is a legal concept […] Contrary to the applicant’s opinion, the occurrence of actual confusion need not be established.’
Before you start to use any trading name, it is well worth doing thorough research to make sure a legal challenge will not be the result.