British Sky Broadcasting Group Plc & Others v Microsoft& Another 2013
The case involved a dispute between Sky Broadcasting Group’s (SKY’s) registered Trade mark SKY, and Microsoft’s SkyDrive service, it centred upon two Community Trade marks (CTM’S), two UK Trade marks and an allegation of Passing off. One of the CTM’s was a word mark that simply comprised of the word ‘SKY’.
As most UK residents are probably aware or even own a Sky set-top box, SKY’s services have been in existence since around 2001 and include:
- Broadband and internet related services.
- Television and communication related services.
Skys’s Trade marks are registered in relation a wide variety of services including the above, the registrations also cover the online storage and the sharing of files. Sky began to broadcast content on the internet in 2005 and in 2006 became an Internet Service Provider (ISP).
Microsoft’s SkyDrive product came in to existence in 2007, it services include:
- Online storage for a variety of files that may be accessed from anywhere, and shared. (Providing you have access to the internet).
For those of you that purchased a PC or laptop in 2012 (with the Microsoft Windows 8 operating system) you will have noticed the SKYDrive tile included in the start up screen, the SkyDrive tile also features as an App for:
- The Xbox games console.
- iphones and ipads.
- Windows and android phones.
Sky accused Microsoft of Passing off and Trade mark infringement, an allegation that Microsoft denied, Microsoft then counterclaimed for partial invalidity of Sky’s registered Trade marks. Sky’s claim was based on section 10 (2) of the Trade Marks Act 1994, (the fact that there were similar marks on identical or similar services and that there existed a likelihood of confusion, including a likelihood of association). Based upon a global assessment it was likely that there existed a likelihood of confusion in relation to the average consumer, in particular that it was likely that a consumer may be led to believe that the services bearing the word SKY, originated from the same or linked undertakings.
Confusion was considered to be likely as the term ‘Drive’ was viewed as a descriptive element of the SkyDrive sign, therefore average consumers would view the term ‘Sky’ alone as fulfilling the trade mark function, as opposed to being a composite part of the ‘SKYDrive’ mark as a whole. Actual evidence of confusion was also submitted, in particular calls being made to the SKY helpline from Microsoft customers in relation to the SkyDrive service and finally and obviously because the goods and services of both parties were very closely connected.
Sky’s Trade mark infringement claim was successful and Microsoft’s claim for invalidity failed. SKY also succeeded in an action for passing off as the three elements, (Goodwill, Misrepresentation and Damage) were established. It has been reported that Microsoft intend to appeal this decision. An update to the matter shall follow in due course.
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