Court says Skype's name is too similar to Sky's | Hacker News Reader

Court says Skype's name is too similar to Sky's

bbc.co.uk

65 pointstpatke62 comments

There are 82 English dictionary words that contain the word "Sky." 63 of those words start with the word "Sky." Therefore by logical extension of this ruling, they have at minimum given Sky free trademarks on 82 additional words. That doesn't even include made up words like "Skype."

These types of decisions are going to massively limit the number of trademarkable words available for businesses to register in general. It wasn't even like Sky and Skype are directly competing with one another (VoIP/Chat/Video over Ip Vs. Satellite TV). Or that Skype was trying to feed off of Sky's reputation or brand.

This ruling is simply terrible. It is terrible within itself and sets an even worse precedent. The EU needs to pass additional laws clarifying this so that courts cannot reach these kind of conclusions.

Your understanding of trademark law is not correct. The crucial question is whether consumers will be confused by two different entities using the same or a similar trademark.

One of the first things you learn about trademarks is that two companies can have the same trademark if they are in different industries and the consumer is unlikely to confuse the two companies. For example, there is both an airline and a faucet manufacturer called "Delta". There is both an electronics company and an agricultural seed company called "Pioneer". However, Lindows had to change their name to Linspire because it was clearly in the same industry as Microsoft and the consumer could easily confuse it with the trademarked Windows software. Similarly, the social networking site Teachbook eventually relented after being sued by Facebook and changed their name to TeachQuest.

It definitely is not the case that this ruling grants the company Sky free trademarks on every word in the dictionary that contains those three letters.

For Example:

Apple Computers - Apple Records (Beatles)

Macintosh Computers - Macintosh Stereo Equipment (Stereo Equipment is much more expensive than the technology company)

Actually, Apple/Apple is a really good example because Apple Records sued Apple Computers when the latter got into music.

Apple Computers had an agreement with Apple Records that it would not go into the Music Business and Apple Computers broke their promise and did not try to find a solution that would work for both parties.

Kind of like hoe there already was a Motorola iPhone in 2005 and iPhone was debut on 2007.

Therefore by logical extension of this ruling, they have at minimum given Sky free trademarks on 82 additional words.

Well, not quite. From the article:

"The case was not a legal challenge to Skype's use of the mark, it was only against the registration," [a Microsoft spokeswoman] told BBC News. "We're confident that no confusion exists between these brands and services and will appeal. This decision does not require us to alter product names in any way."

The court hasn't said that Sky owns the Skype trademark -- only that Microsoft cannot have the additional benefits provided by registration (which AFAIK are primarily a presumption of validity and larger damages if infringed).

That said, I'm inclined to agree with you that "Sky" and "Skype" are clearly different words, despite one being a prefix of the other.

> It wasn't even like Sky and Skype are directly competing with one another

Not yet, but as the article says, Skype were seeking to register their name as a trademark in a number of fields where Sky DO operate - e.g. Products, services, TV.

It wasn't even like Sky and Skype are directly competing with one another (VoIP/Chat/Video over Ip Vs. Satellite TV).

That's what I thought, too, until a co-worker corrected me. Sky does have phone service, though[1].

1. http://www.sky.com/products/broadband-talk/talk/features/

Which came first though? Skype was on of the first VoIP providers out there, if Sky moved into Skype's market after-the-fact, aren't they the ones violating Skype's trademark

The article doesn't really say why the decision came down the way it did. Without knowing the details I agree that it seems strange, as a TV channel and a phone platform don't seem easily confusable, however look at it this way:

Sky is a broadcaster for transmitting video and audio to many people. Skype is a communication platform for transmitting video and audio between groups of people.

With that description I can now see why Sky won the trademark case. I still don't agree with the decision, but at least now it doesn't seem so crazy.

I'm still befuddled that you can trademark a name like Sky or Apple. I'm more befuddled that the EU courts would block registration of a trademark that is already widely known as a brand name and that the plaintiff in this case isn't even challenging as an infringement on their trademark.

It's because trademark is considerably more limited that most people believe.

You trademark is limited to specific markets you operate in, both type of market and geographic markets.

Apple Computers is okay because apple isn't descriptive about computer. You couldn't trademark apple in regards to the fruit.

Typically, there can be a Sky TV station and a Sky car rental. However, sometimes a company can become so popular that reusing their name will actually confuse customers, and it is no longer allowed.

For example, you would probably have a hard time using Apple now, even in an unrelated field.

1224 Live hits for the exact word "Apple" at http://tmsearch.uspto.gov/

That sort of actual confusion analysis in the US is done at the court level. Just because you can get it past USPTO doesn't mean Apple won't be able to get you to stop.

Trademark is supposed to be as limited as you say, but if that were actually the case then Sky and Skype wouldn't be colliding.

Skype was trying to register the trademark Skype® in: Communication, Mobile, TV (emphasis mine). Of course that will collide.

Why not trademark Apple? To me "Apple" is different from "apple" and very different from "The Apple Pie Guys" or even "Apple Manufacturing". What I'd like to see is the clarification that trademarking a word like "Apple" should mean exact spelling. In this manner someone should be able to trademark "Apples" as a separate concept. The need for this was highlighted in the Elder Scrolls vs Mojang debacle. "Scrolls" and "Elder Scrolls" are different things and nobody calls the latter just Scrolls.

Or Apple Records: http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer

People forget that Jobs and Woz started a company in an already-vibrant economy, and there was another powerful "Apple" out there already.

It gets even worse if you look at colour trademarking. eg Cadbury "own" the colour purple when it comes to chocolate. Orange also have a trademark on using the colour orange when operating a mobile phone business and had a spat with Easy about it http://news.bbc.co.uk/1/hi/magazine/3555398.stm

But, your example is the entire point about trademarks. It provides protection, from copycats or generic rip offs, this is a good thing.

For example, lovers of Cadbury chocolate know that any purple wrapped chocolate will be Cadbury. They can quickly spot their chocolate in the store and don't need to worry about ever buying a cheap imitation chocolate purple candy bar from CadMury. This is good for both consumers and businesses*

This works because there is nothing that intrinsically links purple to chocolate. Cadbury created that association, they invested in it, and through trademark's they are protected from knock offs confusing their brand.

*Though I don't understand why many businesses then destroy their own brand by including sub-brands of lower quality. E.g. A purple cadbury chocolate bar that is sugar free--I'm sure we've all unknowingly bought the wrong sub-brand like this at some point in time.

Well let's say you want to create berry and fruit flavored chocolate. You make an orange chocalate wrapped in orange, a mint chocolate wrapped in green, a lemon chocolate wrapped in yellow and a blueberry chocolate in bluish purple.

These are fairly common color/taste pairings used across products and product categories.

Cadburys tried to trademark the specific colour Pantone 2865c for bars of milk chocolate. They still lost.

Until you see Milka chocolate (older than Cadbury’s): http://www.germanfoods.us/milka-chocolate/images/milka-100/m...

Owens Corning has a trademark on the color pink for insulation.

That's satire, right? Right? ❝the likelihood of the element 'Sky' being recognised within the word element 'Skype', for clouds are to be found 'in the sky' and thus may readily be associated with the word 'sky'.❞

Not really related, but it reminds me of another funny occurrence concerning trademarks: O2 (the phone company) sued Weinmann GmbH (a medical device company). Weinmann used the string O2 in a product that delivers oxygen to patients... (http://sci.tech-archive.net/Archive/sci.physics/2005-03/8371...)

Sometimes I question inhofar "common sense" prevails in these trademark-ruling courts.

Reminds me of this back in the 2003 where Microsoft went after a high school kid for having the domain mikerowesoft.com (his name being Mike Rowe):

https://en.wikipedia.org/wiki/Microsoft_vs._MikeRoweSoft

It ended alright for Mike Rowe in the end, but Microsoft only offered $10 originally and accused him of cybersquatting which was false. It was only after a bunch of press that he got some decent return.

Skype was released in 2003 and personally I don't associate it with "sky". If Skype can't be trademark, then the trademark law is broken.

For context - Sky was founded in 1991 but then named Premiere and only rebranded to Sky in 2009.

Not sure where you're getting that from. BSkyB (British Sky Broadcasting) was formed in 1991 as part of a merger involving a pre existing Sky Television, and BSkyB and its successor Sky plc has used Sky (as a standalone word) in the name and logo of most of its TV channels (Sky Sports, Sky Movies, Sky News etc.) and other service offerings (Sky Talk, Sky Broadband, Sky Bet) continuously since then.

Maybe I should not just have skimmed the article. The rest was same logo, same company and limited knowledge of the history.

Err, no it wasn't? BSkyB has been around since 1990 and has been colloquially known as Sky since then.

That would be Sky Deutschland: https://en.wikipedia.org/wiki/Sky_Deutschland

Seems like Sky has a thing for Microsoft - first they were forced to rename SkyDrive to OneDrive and now this.

Or does Microsoft have a thing for Sky? I don't see in this case how their could be any confusion considering how long Skype has been around and how well known it is but in the SkyDrive case I can see how that makes sense considering Sky is an ISP and it is possible they could have a product named SkyDrive.

Or neither, since the initial challenge of Skype occurred before Microsoft even bought the company.

Sky just seems to love challenging everything similar.

Sky has been around even longer (since 1990) and they offer telephone services also [1].

(I still don't buy that there's a risk of confusion.)

[1] http://www.sky.com/products/broadband-talk/talk/features/

They have a thing for anything that starts with Sky. Some years ago they forced one of the biggest french blogging platform to rename from Skyblog to Skyrock (Skyrock is the name of the radio station that was providing the service).

It seems more that EU courts have a thing for successful US technology companies.

Skype was successful way before being an American company.

That was a pretty short period of time. It was released in 2003, and acquired by eBay in 2005.

Classic case of US interests having a thing for successful European technology companies.

Where is the Late Peter Cook when you need him

https://www.youtube.com/watch?v=Kyos-M48B8U

For background there was a court case back in the 70's (the leader of a political party was accused of arranging a contract killing on his gay lover) a high profile court case with an outrageously biased judge.

This is what happens when you name your company something like "Sky" or "Paper"

Apparently you win. It's the later derivatives that lose.

Wow, they literally "own the sky".

Not literally; otherwise, they could charge you to breathe in the EU. They own the trademark and its association with the sky.

Ok,ok but "own the term sky" doesn't sound as nice.

Rather, Rupert Murdoch "owns the uk."

Since Skype is by far the more popular (and important) service, I suppose "Sky" should change their name ;-)

http://www.skymedia.co.uk/Audience-Insight/dashboard.aspx

Depends how you define important; Sky's $18bn market cap is testament to their customers spending an awful lot more money on satellite television and telephone landlines than on VOIP calls.

Neither party will change their name in the near future, and the lawyers from both companies that have made a lot of money fighting each other will be equally keen to make more money stomping on anyone with the temerity to start an EU-based VOIP service with a name like SkyPeer or SkyBe

First SkyDrive, now Skype? What is this company's deal with attacking Microsoft and others over a very very generic word?

For what it's worth, Sky is only 60% of Skype, and Skype has 2 more letters.

Also MS "Metro" UI nowadays named "Modern UI": http://en.wikipedia.org/wiki/Modern_UI#Name_change

Metro Group, Germany's largest retailer, had something against it (http://en.wikipedia.org/wiki/Metro_AG). Yet, it's an abbreviation of "metropolitan" and is used for many other things: http://en.wikipedia.org/wiki/Metro

Microsoft should have never backed down on this one.

Metro AG owns Media Markt and Saturn[1], both sell electronics, including computers. Judging by their stores, most of these computers are PCs (although they do sell Apple computers as well).

Media Markt, is Europe's largest retailer of consumer electronics[2].

Saturn is one of the big retailers of consumer electronics in Germany, and have stores in some other European countries[3].

So perhaps Microsoft could have won that one, but at what cost? Pissing off one of their biggest retailers? I don't know for sure, but it seems very likely that Microsoft wouldn't want to do that and made the decision to back off instead.

[1] http://en.wikipedia.org/wiki/Metro_AG

[2] http://en.wikipedia.org/wiki/Media_Markt

[3] http://en.wikipedia.org/wiki/Saturn_(store)

The thing is Microsoft's Metro isn't even a product, it's just a name for a technology. Why should this company even care. The whole is ridiculous and that's why Microsoft should not have backed down on it.

Are they also going to go after the two dozen or so airlines that have 'Sky' in their name...?

skype well known world wide. sky known only in UK. I am from europe, and only remember sky exist when MS decide change skydrive to onedrive, or when skype not allowed get trademark.

It is like saying "Hat" is too similar to "Hate".

TIL in Europe you are literally not allowed to pe under the sky.

More nonsense protectionism from EU power brokers.

Not EU, but UK protectionism, they do a lot different than guys on the mainland. Skype was created in EU (ok almost, created in Estonia few months before it joined EU).

Not EU, but UK protectionism

From TFA: "General Court of the European Union", and got there because the ruling was the same at the European Union's Office for Harmonisation of Internal Markets.

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