Trade Marks Act 1994 Confusion = Refusal?

An application for Trade Mark registration may be refused, if there is the possibility that the proposed mark may cause confusion amongst consumers with a mark that has already been registered.

Such a scenario took place in Skype v British Sky Broadcasting Group PLC, the facts are as follow

Skype attempted to register the word mark of Skype as a CTM (community trade mark) for handheld digital devices and telecommunication services, the word mark of SKY was already registered for identical services.

The registration failed as the OHIM board of appeal ruled there was alikelihood of confusion amongst consumers’. Section 5 of the TMA 1994 details the ‘relative grounds’ for refusing an application.

‘Relative grounds for refusal’ means a mark will be refused registration if there is a conflict with an existing registered trade mark (as above), some of the common reasons for refusal under the relative grounds are:

  • A mark is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
  • A mark is identical with an earlier mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected.
  • A mark is similar to an earlier trade mark and is to be registered for goods or services  identical with or similar to those for which the earlier trade mark is protected and there exists a likelihood of confusion on the part of the  public, which includes the likelihood of association with the earlier trade mark.

In the above case, it was held that there existed a likelihood of confusion between the marks because both marks consisted of a single syllable and they both incorporated the word ‘sky’ at the start, that led to visual and aural similarity. It was further held that the public would recognise the word Skype as having the same conceptual meaning as Sky.



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