The European Court of Justice, by the judgments nn. T-423/12, T-183/13 and T-184/13 of May 5th, has finally put an end to the age-old question of the brands Sky and Skype.

This issue goes back to 2004 when Skype requested the registration of the trade mark in EU for products and services ranked in classes 9, 38 and 42. Between 2005 and 2006 the Swiss company Sky IP International LTD (formerly Sky Broadcasting Group), has opposed to the registration considering that a likelihood of confusion between its own brand (Sky) - recorded in 2003 for identical goods and services - and Skype could have emerged.

The said opposition has been fully accepted by the Office for Harmonization in the Internal Market (OHIM) who first detected a similarity between the two trade marks from a phonetic, visual and conceptual point of view. This decision, as evident, was not completely appreciated by the Dutch company (Skype), as long as the latter promptly appealed it to the European Court of Justice in September 2012.

After almost three years the EU Courts, founding a violation of Article 8, paragraph 1, letter b) of the Council Regulation n. 207/2009 (“Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:  (...) b) if because of its identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark”), confirmed the decision of OHIM and then rejected the registration of the word and figurative mark "Skype".

The reasons for this rejection are quite similar to the first decision of OHIM: in particular, as regards the phonetic, the EU Courts have occurred to the similarity of pronunciation of the word “Skype” with that of the word “Sky” as the pronunciation of the last vowel (y), particularly totalizing in both cases, is not the shortest in the first of the two terms with respect to the other. The Court stated that the two brands were likely to be confused also visually because all three letters of the mark previously registered (Sky) are present in the brand ”Skype” and the suffix “pe" at the end means nothing. Finally a resemblance to the conceptual level was also detected: the “cloud” in which is contained the word “Skype”, in fact, refers unequivocally to heaven and therefore the English word “sky”.

Despite these pronunciations are a second rejection to the registration request, an end to the this issue can not yet be said: the Dutch company, in fact, has the opportunity to appeal, within a period of two months from the notification of the judgements, to the Court of Justice, albeit for reasons of law. At this point we just have to look forward to the decisions of the giant Microsoft which, as noted, awaiting the above mentioned proceeding, more specifically in May 2011, acquired the Dutch company for 8.5 billion Euro.