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 a ‘likelihood of confusion amongst consumers’. Section 5 of the TMA 1994 details the Ârelative groundsÂ for refusing an application.
ÂRelative 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 tradeÂ mark is applied for are identical with the goods or services for which theÂ earlier trade mark is protected.
- A mark is identicalÂ with an earlier mark and is to be registered for goods or services similarÂ to those for which the earlier trade mark is protected.
- A mark is similar toÂ an earlier trade mark and is to be registered for goods or servicesÂ Â identical with or similar to those for which the earlier trade mark isÂ protected and there exists a likelihood of confusion on the part of theÂ Â 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 ÂskyÂ 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.