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The Sky's the limit – the benefits of registering trade marks early

A company's trading names, brand names and logos (and in some cases, the shape of the product itself) can all be protected as registered trade marks (subject to certain registrability rules).  

September 2013

Registration of a trade mark is not compulsory but it does give the rights holder a statutory monopoly for the use of that trade mark in relation to the goods or services for which it is registered. Marks can be registered for individual countries and/or it is possible to obtain a Community trade mark (CTM) for the whole of the European Union.

Prior to launch

rocket launchBefore launching a new branded product or service, a trader should carry out trade mark searches of the relevant registers in the territories in which it wants to use the trade mark. It is also advisable to conduct internet searches in order to spot (as far as possible) unregistered use of the proposed mark. Otherwise, there is a risk that the mark under consideration may infringe somebody else's trade mark rights.

The monopoly

Assuming the path is clear to registration, the proprietor is entitled to prevent unauthorised third parties from using:

  • an identical mark on identical goods or services to those registered;
  • an identical mark on similar goods or services where there is a likelihood that the public will be confused;
  • a similar mark on identical or similar goods and services to those registered where there must be a likelihood that the public will be confused;
  • in respect of a UK trade mark that has a reputation in the UK or in respect of a CTM that has a reputation in the EU, an identical or similar mark on similar or dissimilar goods or services infringes if the mark is used without due cause and takes advantage of, or is detrimental to, the character or repute of the registered trade mark.

The importance of registering first

trade markRecently, British Sky Broadcasting Group Plc (BSkyB) has illustrated the importance of registering marks early, to ensure an effective monopoly for the word mark SKY. Through doing so, it has been able to prevent others from using the term SKY as part of their branding and has stopped another company from registering a trade mark which includes the letters S-K-Y.

In June, the High Court ruled that Sky's UK marks and CTMs were infringed by Microsoft's use of the mark "SkyDrive" for an online storage facility for document files, photos and the like1. Mrs Justice Asplin found that there was a risk that the public might believe that the services came from BSkyB or an undertaking which was economically linked. There was evidence some consumers had already been confused. The judge found that "Sky" was the dominant element of the sign SkyDrive, with "drive" likely to be perceived as a descriptive.

As well as demonstrating that customers would be confused by Microsoft's use of SkyDrive, BskyB also persuaded the court that Microsoft's use took unfair advantage of, and was detrimental to the repute of the SKY marks.  There was a serious risk of loss of distinctiveness in the sense of "dilution, whittling away or blurring" of the SKY marks in the minds of consumers.

Before a trade mark can be registered, it must satisfy certain criteria. In particular, it must be capable of distinguishing the applicant's goods or services from the goods or services of other businesses. It cannot be descriptive of the goods and services for which it is registered.

Microsoft counterclaimed that the mark SKY was descriptive of the goods for which it was registered and ought to be invalidated. In particular, it argued that SKY was an allusion to cloud computing and "allusive of or a metaphor for the internet". Asplin J rejected this counterclaim, taking into account the evidence of 132 providers of online storage facilities, identified between 2005 and 2013, none of whom use "Sky" to denote the internet.

The consequence of all of this is that Microsoft can no longer continue to use the SkyDrive mark and must rebrand, successfully appeal the decision or take a licence from BSkyB, if BSkyB is willing to grant one.

first to registerThe benefits of being the first to register also came home to roost for BSkyB in a recent OHIM Board of Appeal decision (OHIM is the registry for CTMs). The Board of Appeal2 ruled that there was a likelihood of confusion between a figurative mark containing the word "Skype" sought for registration and the word CTM SKY registered in relation to identical goods.

In coming to this decision, the Board noted that the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character3 . In this case, the earlier mark, SKY, enjoys a high degree of distinctiveness in the UK at least.

Any reputation of the mark "Skype" resulting from significant use and its rise to fame in the last few years was irrelevant. Only the reputation of the earlier mark (SKY) could be taken into account for the purposes of assessing whether the later mark could be registered.

Genuine use

While a mark should be applied for at the earliest opportunity, once registered, a mark must be used by the proprietor (or his licensee), and must not be left unused for a continuous period of five years, otherwise it risks being revoked for non-use. There needs to be some genuine use of the mark. There is no quantitative threshold. However, we know from European case law that something more than token use is necessary. Use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way.4

This requirement for genuine use caught Apple Inc. out in a recent UK case.5 Wapple.net Limited applied for various marks, including the word WAPPLE. Apple was partially successful in challenging the applications but failed to establish genuine use of APPLE in the UK or the EU in respect of mobile phones by the relevant date (prior to November 2007).

commentMuch of Apple's evidence post-dated the relevant period and related to circumstances/events taking place in the USA (irrelevant for UK purposes). The most compelling piece of evidence was a press release from September 2007 by O2 that it would be the exclusive carrier for the IPHONE device in the UK. However, the press release spoke of the IPHONE and Apple Inc but not APPLE the trade mark in relation to mobile phone devices.

If you have any questions on this article please contact us.

1British Sky Broadcasting Group plc and others v Microsoft Corporation and another [2013] EWHC 1826 (Ch),
  (28 June 2013)

2Skype v British Sky Broadcasting Group plc, Case R 2524/2010-4 (22 May 2013)

3Canon C-39/97

4Ansul BV v Ajax Brandbeveligung BV, Case C-40/01

5WAPPLE O/277/13 – decision of UKIPO Appointed Person, Ruth Annand

alarm click - register trade marks early
Lorna Caddy

Lorna Caddy

Lorna Caddy looks at the importance of registering early but making genuine use of the registered trade marks.

"While a mark should be applied for at the earliest opportunity, once registered, a mark must be used by the proprietor (or his licensee), and must not be left unused for a continuous period of five years, otherwise it risks being revoked for non-use."