by Andy Harris
The sky isn’t always the limit when it comes to choosing a name for your products or services. Particularly when ‘sky’ is a key part of the name you choose. Microsoft found this out last month when it lost a trade mark infringement case brought against it by Sky (British Sky Broadcasting Group) in relation to its SkyDrive service.
(B)reach for the Sky…
Sky argued that Microsoft’s use of SkyDrive infringed various ‘Sky’ registered trade marks. These trade marks were registered for various goods and services, including computer software and online storage . Microsoft’s SkyDrive product, launched in 2007 provided online storage facilities.
To succeed with the trade mark infringement claim Sky had to persuade the court on three key issues: (i) that the marks (names) were similar; (ii) that the goods and services were similar or identical; and (iii) that use of the SkyDrive name by Microsoft would cause confusion regarding the origin of the goods.
The court accepted that the marks were similar. ‘Sky’ was clearly the dominant part of the name SkyDrive and ‘Drive’ would be seen as more descriptive. The services were closely connected in the court’s view so the goods and services involved were clearly similar. In terms of the likelihood of confusion, Sky were able to lead evidence of actual confusion, and the court also felt it important that the SkyDrive word was often used in isolation from any Microsoft reference (e.g. as a pre-loaded tile on a lap top). It was therefore quite possible that a person would not realise this was a Microsoft product and instead assume it was associated with Sky.
The court therefore agreed with Sky that trade mark infringement had occurred. It also accepted Sky’s secondary argument that there was trade mark infringement under a different section of the legislation which protects ‘famous’ trade marks even if the infringement takes place in relation to different goods and services.
Clear sky ahead?
Some dark clouds may still be on the horizon for Sky as Mircosoft are appealing the decision. We will look out for this in future blogs. However in the meantime this serves as another reminder of the importance of carefully considering product and company names so as to avoid unwanted trade mark claims. If you are in any doubt over the use of particular name then you should take legal advice before you proceed. If there is a problem with the name it will be much harder to fix once you have started to use it. As the old adage goes, you want a fence at the top of the cliff not an ambulance at the bottom…