Sky successfully prevents registration of SKYSOFT

Sky, the telecommunications service provider, has defeated an attempt by Skysoft Computersysteme GmbH, an IT service provider, to register SKYSOFT as a Community trademark (CTM). This comes on foot of decisions by both the Opposition Division and the Fourth Board of Appeal of OHIM to reject the application on relative grounds. The decision in the case, Skysoft Computersysteme GMBH v Office for Harmonisation in the Internal Market (Case T-262/13) was given on October 15 2014.

Back in 2005, Skysoft applied for registration of the word mark SKYSOFT as a CTM for, among other things, “maintenance and repair of data processing equipment and computer installations (including equipment for access to networks and computer databases)” in Class 37 of the Nice Classification. On August 13 2008 British Sky Broadcasting Group plc and Sky IP International Ltd filed a notice of opposition on the basis of the earlier CTM SKY, registered in particular for “data processing equipment and computers” in Class 9. The applicant, not discouraged by rejections by both arms of OHIM, appealed the decision of the Appeal Board to the General Court.

Much of the decision dealt with an analysis of the similarity of the goods and services and the similarity of the signs without breaking major ground in those areas. On the similarity of the goods and services front, one clarification of note was that the General Court found that the Board of Appeal was correct in finding similarity between “maintenance and repair of equipment and equipment for access to networks and computer databases in equipment and computers” and “data processing equipment in computers”, and that it had correctly considered them as being complementary.

With regard to the visual similarity of the signs, the General Court held that more importance should be attached to the first part of the word on the basis that 'soft' was descriptive of software (and therefore less relevant), and that the relevant public might regard SKYSOFT as being derived from SKY. The applicant had asserted that the general approach to consider the first element of a mark as more important should not be regarded as absolute and had to be considered in the context of each individual case. The General Court effectively followed this approach in reaching its decision and, in doing so, dismissed the applicant’s argument that the conceptual dissimilarities were “obvious”.

The General Court also took the time to dismantle a number of miscellaneous arguments advanced by the applicant. Firstly, it rejected the applicant’s overambitious argument that the SKY mark was descriptive of telecommunications services. Secondly, it held that the Board of Appeal was entitled to take into account a previous UK decision in finding that the earlier CTM had a reputation. It held that, while the CTM regime is autonomous and the legality of Board of Appeal decisions is assessed solely on the basis of the Community Trademark Regulation (207/2009), this only means that OHIM is not bound to come to the same conclusions arrived at by national authorities, and not that it cannot refer to them. Lastly, the General Court described as “vague and ineffective” the applicant's argument that the 600 entries in the UK Intellectual Property Office register containing the word 'sky' would have the effect of “diluting” the distinctiveness of the earlier mark.

Although not ground-breaking, the General Court’s reasoning concerning the extent of similarity in the particular circumstances of this case is instructive. The decision also sounds a useful warning bell for would-be parties who make vague or ineffective (or some would say spurious) arguments: do so at your own peril.

Alistair Payne and Cormac Stewart, Matheson, Dublin