BskyB successfully opposes registration of 'sky' logo mark

In Walsh v British Sky Broadcasting Group PLC (BSkyB), the controller of patents, designs and trademarks has upheld an opposition against the registration of the figurative trademark SKY BUSINESS CENTRES.

Pat Walsh applied to register a logo which included the words 'Sky Business Centres' in respect of services in Classes 35, 36 and 43 of the Nice Classification:

On advertisement the application was opposed by British Sky Broadcasting Group PLC (BSkyB). At the hearing, the controller upheld the opposition for the following reasons:

• The opponent argued that it is a well-known provider of satellite television programming and related goods and services and that it has an established reputation and goodwill in Ireland for the term 'sky'. The opponent relied on a number of prior trademarks including SKY BUSINESS.
• It was held that there is visual, aural and conceptual similarity between the applicant’s mark and the opponent’s marks. The controller was of the view that the word 'sky' was the dominant element of the applicant’s mark. The controller stated that the word 'sky' is centrally placed, considerably larger than and positioned atop of the other word elements. The controller held there is a low to minimum level of visual similarity between the applicant’s mark and the opponent’s SKY marks, but visual similarity rises when compared with the opponent’s SKY BUSINESS marks.
• The controller held that there is a real likelihood that a business that has used the opponent’s services under its SKY BUSINESS marks, in particular, would, when encountering the applicant’s mark, be liable to be confused or led to believe that the applicant’s mark is associated with those of the opponent. The controller stated that confusion can be direct or indirect in cases where the applicant’s product is associated in the mind of the consumer with that of the opponent. The controller made reference to the fact that the more distinctive the mark the greater the likelihood of confusion and found the opponent’s mark to have a medium level of inherent distinctiveness.
• The controller held that the opponent’s SKY marks had reached a level of recognition that amounted to a reputation in the state. The evidence supplied by the opponent showed that the opponent’s SKY marks had reached a high level of recognition, enjoyed extensive market share and had extensive geographical penetration. The brand had penetrated the consciousness of the wider public and a substantial number of people would recognise the mark even if they never used the opponent’s goods/services. The controller also held that the registration of the applicant’s trademark was without due cause and that the use of the applicant’s mark would take unfair detrimental advantage of the distinctive character and reputation of the opponent’s marks.
• The controller held that the applicant was not seeking to pass off his services as those of the opponent and found that the applicant was merely rebranding and that there was no evidence to support the fact that the rebranding was an attempt to misrepresent or attempt to pass off his services as those of the opponent.

Claire O’Sullivan, DFMG Solicitors, Dublin