In 2004 and 2005 Skype applied to the Office for Harmonisation in the Internal Market (OHIM) for registration of the figurative and word signs SKYPE as a Community trade mark for audiovisual goods, telephony and photography goods and computer services relating to software or to the creation or hosting of websites.
In 2005 and 2006, British Sky Broadcasting Group, now Sky Plc and Sky IP International, filed a notice of opposition, pleading the likelihood of confusion with its earlier Community word mark SKY, filed in 2003 for identical goods and services.
By decisions of 2012 and 2013, OHIM upheld the opposition, considering, in essence, that there existed a likelihood of confusion of the signs at issue on account, in particular, of their average degree of visual, phonetic and conceptual similarity and that the conditions for establishing a reduction of that likelihood had not been satisfied. Skype seeks annulment of those decisions before the General Court.
In its Judgment in Cases T-423/12, T-183/13 and T-184/13, the Court has dismissed Skype’s actions and by so doing confirmed that there exists a likelihood of confusion between the figurative and word sign SKYPE and the word mark SKY.
As regards the visual, phonetic and conceptual similarity of the signs at issue, the Court has confirmed that the pronunciation of the vowel “y” is no shorter in the word “skype” than it is in the word “sky”. In addition, the word “sky”, part of the basic vocabulary of the English language, remains clearly identifiable in the word “skype”, in spite of the fact that the latter is written as only one word. Last, the element “sky” in the word “skype” can perfectly well be identified by the relevant public, even if the remaining element “pe” has no specific meaning.
Moreover, the fact that, in the figurative sign applied for, the word element “skype” is surrounded by a jagged border in the shape of a cloud or a bubble does not affect the average degree of visual, phonetic and conceptual similarity. Visually, the figurative element does no more than highlight the word element and is, therefore, perceived as a mere border. Phonetically, the figurative element in the shape of a border cannot produce any phonetic impression, this latter remaining determined solely by the word element. Conceptually, the figurative element conveys no concept, except perhaps that of a cloud, which would further increase 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”.
So far as concerns the argument that the “skype” signs are highly distinctive because they are known by the public, the Court declares that, even if the term “skype” had acquired a meaning of its own for identifying the telecommunications services provided by the company Skype, it would be a generic, and consequently descriptive, term for services of that kind.
Lastly, the Court confirms that account cannot be taken of the peaceful coexistence of the signs at issue as a factor that could reduce the likelihood of confusion, the conditions in that connection not being satisfied. The peaceful coexistence of those signs in the United Kingdom concerns only one isolated, highly specific service (namely, peer-to-peer communications services) and cannot, therefore, lessen the likelihood of confusion in respect of the many other goods and services covered by the signs. In addition, that coexistence has not lasted long enough to give grounds for the assumption that it was based on the absence of any likelihood of confusion in the mind of the relevant public.
The word “monaco” designates the origin or geographical destination of the goods and services concerned and is devoid of distinctive character.
In 2010, the government of the Principality of Monaco was granted, by the World Intellectual Property Organisation (WIPO), an international registration covering the territory of the EU. That registration, which was based on the word mark “monaco”, was transferred to the Office for Harmonisation in the Internal Market (OHIM) to be processed.
In 2013, OHIM refused protection of the trade mark in the EU in respect of some of the goods and services applied for (i.e.: magnetic data carriers, paper and cardboard goods not included in other classes, printed matter, photographs, transport, travel arrangement, entertainment, sporting activities and temporary accommodation).
OHIM based its refusal on the descriptive character of the mark, in so far as the word ‘monaco’ designates the territory of the same name and could, therefore, be understood in any of the EU’s official languages as designating the origin or geographical destination of the goods and services concerned. OHIM further considered that the mark at issue was clearly devoid of distinctive character. Les Marques de l’État de Monaco (MEM), a Monegasque public-limited company which succeeded the government of the Principality of Monaco as the proprietor of the trade mark, contests OHIM’s decision before the General Court and seeks the annulment of that decision.
In its Judgment in Case T-197/13, Monaco v OHIM, the General Court (Eight Chamber) dismisses the application and upholds OHIM’s decision.
The General Court points out, first of all, that under EU law any legal entity, including a public law entity, may apply to benefit from the protection of the Community trade mark. This is, of course, true for companies based in the territory of a State which is not a member of the EU, but also for the non-member States themselves, since those States are, within the meaning of EU law, public law entities. As a result, when the Principality of Monaco formulated its request to have the EU designated for the international registration of the trade mark at issue, it placed itself within the scope of application of EU law and, therefore, one of the absolute grounds for refusal could be relied upon against it. In other words, the Principality of Monaco sought to benefit from the application of EU law and, therefore, became subject to its rules, without being able to rely on its entitlement in principle to be the proprietor of the trade mark “monaco”.
Moreover, the General Court observes that the word “monaco” corresponds to the name of a globally-known principality, not least due to the renown of its royal family, its organisation of a Formula 1 Grand Prix and its organisation of a circus festival. Knowledge of the Principality of Monaco is even more established amongst EU citizens, notably on account of its borders with a Member State (France), its proximity to another Member State (Italy) and its use of the same currency as 19 of the 28 Member States, the Euro. There is therefore no doubt that the word “monaco” will evoke, regardless of the linguistic background of the relevant public, the geographic territory of the same name. In addition, the General Court notes that OHIM correctly defined the relevant public (namely citizens of the EU) and correctly attributed to that public, in respect of the goods and services concerned, either an average or high degree of attentiveness.
According to the General Court rulings, OHIM was also correct to find that the word “monaco” could be used, in trade, to designate origin, geographical destination or the place of supply of services, so that the trade mark has, in respect of the goods and services concerned, a descriptive character. Furthermore, as a descriptive mark is necessarily devoid of distinctive character, the General Court holds that the trade mark “monaco” is devoid of distinctive character.
The graphic representation of that cube does not involve a technical solution which would prevent it from being protected as a mark.
At the request of Seven Towns Ltd, a UK company which manages inter alia intellectual property rights relating to the ‘Rubik’s Cube’, the EU’s Trademark Office (OHIM) registered, in 1999, the shape of that cube in respect of “three-dimensional puzzles” as a three-dimensional Community trade mark.
In 2006, Simba Toys GmbH & Co. KG, a German toy manufacturer, applied to OHIM to have the three-dimensional mark cancelled on the ground inter alia that it involves a technical solution consisting of its rotating capability, since such a solution may be protected only by patent and not as a mark. OHIM dismissed its application and Simba Toys therefore brought an action before the General Court for annulment of OHIM’s decision.
In its Judgment in Case T-450/09, Simba Toys GmbH & Co. KG v OHIM, the General Court (Sixth Chamber) dismisses the action brought by Simba Toys.
In the first place, the Court finds that the essential characteristics of the contested mark are, first, the cube per se and, second, the grid structure which appears on each of its surfaces. According to the Court, the bold black lines which form part of that structure and which appear on the three representations of the cube by criss-crossing the inside of those representations are not suggestive of any rotating capability of the individual elements of the cube and therefore do not fulfil any technical function.
The rotating capability of the vertical and horizontal lattices of the Rubik’s Cube does not result either from the black lines or the grid structure, but from an internal mechanism of the cube which is invisible on its graphic representations. Consequently, the registration of the shape of the Rubik’s cube as a Community trade mark cannot be refused on the ground that that shape incorporates a technical function.
In the second place, the Court finds that the mark in question does not allow its proprietor to prohibit third parties from marketing all types of three-dimensional puzzles that have a rotating capability. The Court states that the proprietor’s marketing monopoly is limited to three- dimensional puzzles that have the shape of a cube the surfaces of which bear a grid structure.
In the third place, the Court finds that the cubic grid structure of the mark in question differs considerably from the representations of other three-dimensional puzzles available on the market. That structure therefore has distinctive character which enables consumers to identify the producer of the goods in respect of which the mark is registered.