You’d think Skype was fairly distinguishable from Sky one’s video chat software, the other a broadcaster. But unfortunately, judges at the General Court of the European Union disagreed. In a recent ruling, the EU Court said that the names were so similar the public is likely to be confused between the two.
The Microsoft-owned company can’t register a trademark for Skype’s name and bubble-design logo, as the decision currently stands.
Conceptually, the figurative element conveys no concept, except perhaps that of a cloud,” the judges explained. They added that this 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’.
The two companies also butted heads back in 2014 over the naming of Microsoft’s cloud storage service, which had been SkyDrive. The High Court in London agreed that Sky’s trademark had been infringed, and the product was renamed OneDrive.
Big-name companies often wage trademark battles, with varying degrees of success. We’ve gathered some of the weirdest (and most optimistic) claims out there.
(1) Yes to Dr No
Despite opposition from the American owners of the rights to the James Bond films, the European Court of First Instance in Luxembourg ruled that the phrase “Dr No” wasn’t a protected trademark, back in 2009. Although the 1962 film starring Sean Connery is one of the most well-known of the 007 titles, the court’s verdict meant German media group Mission Productions was permitted to register the name across the EU.
Danjaq, the US company which manages the intellectual property rights to the Bond series of films, had claimed there was a risk of confusion because of the association with Dr No in the film along with promotional material. The judges said the essential function of a trade mark was commercial recognition, and those used by Danjaq were artistic rather than commercial signs.
(2) The ultimate face-off
Facebook managed to trademark the word Face back in 2010. This may initially seem a bit over the top, but the US Patent and Trademark Office granted the request with a Notice of Allowance enforcing certain conditions. The trademark covered the use of Face in telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages according to the judgement.
The social media site does tend to keep an eye out for companies using “Face” or “Book” in names though. Itpreviously sued Teachbook, stating that book was a term closely associated with Facebook, and the name pilfers a distinctive part of the Facebook .
(3) Stay away from selfies
Image:?Shutterstock
Chinese smartphone manufacturer Huawei was possibly pushing colloquial lingo a step too far last year when it filed an application for the word groufie as a trademark. While selfie has permeated popular culture, it might take a while for groufie a panoramic self-portrait to catch on. Huawei sought to get ahead of the game though, and wanted to coin the term across China, France, Germany, Russia and the US.
The company first used the word in public at an event last year, where its Ascend P7 smartphone was launched. It’s yet to be announced whether Huawei was successful, and jury’s still out on whether groufie will catch on at all anyway.
Read more on trademarks:
- How to copyright a logo UK
- EU Court decides on Rubik’s cube trademark fate
- David vs Goliath: How small companies can protect trademarks
- Everything you need to know about trademarking
Read on to discover what trademark attempts Harley Davidson, Lacoste and someone attempting to piggyback the British Royal family’s prestige made.
(4) Hard of hearing
Motorcycle brand Harley Davidson is well-known worldwide, and bike fanatics would say there’s something very particular about its distinctive V-twin engine sound. Unfortunately for them, and the company itself, the US Patent and Trademark Office didn’t have such appreciation for the nuances in engine sounds concluding that there was nothing unique about it when the company sought to trademark the engine sound in 1994. The battle waged on until 2000, when Harley Davidson finally admitted defeat.
(5) Royal seal of approval (or not)
Author Aby King secured a book deal for “The Adventures of Lupo the Royal Dog: The Secret of Windsor Castle” featuring none other than the Duke and Duchess of Cambridge’s dog, Lupo. When she sought to cash in further on the cocker spaniel however, she ran into a bit more difficulty. King attempted to trademark Lupo the Royal Dog but failed as the pet was a possession of the Duke and Duchess of Cambridge, so it fell under their ownership.
She said at the time: The odd thing is that there didn’t seem to be anything in the law specifying animals in the Royal family before. Do royal dogs now have royal patronage Her revised application to trademark the words The Adventures of a Royal Dog was allowed.
(6) Not so snappy
Image: Shutterstock
A Gloucestershire dental practice avoided being bitten by fashion giant Lacoste after using a crocodile trademark in 2008. The French clothing chain challenged the dentists over its use of a grinning reptile as the practice’s logo saying it was too similar to its globally recognised logo, which could cause confusion among shoppers, and result in damage to their business.
The risk of a lost shopper stumbling into the dentist, only to be disappointed that it’s not stocking Lacoste polo shirts may seem a bit farfetched, and The UK Intellectual Property Office seemed to agree. The claims arguing that the emblems were too similar were dismissed.
Image: Shutterstock
