A long five year legal battle became public this week when Skype filed its initial public offering (IPO) documents. Skype is a software application that allows users to make voice calls over the Internet. Calls to other Skype users are free. BSkyB has been trying to prevent Skype from using their name or logo alleging consumers will confuse it with Sky.
A spokesman with Sky said: “Sky is involved in a long – running dispute with Skype in relation to several trademark applications filed by Skype, including , but not limited to, television – related goods and services.
“The key contention in the dispute is that the brands “Sky” and “Skype” will be considered confusingly similar by members of the public.” Sky said that Skype is not the first company it has taken legal action against to prevent them from benefiting and piggybacking on the “Sky” brand.
Sky also reported that their concerns were backed by consumer research. Their main objective is to prevent Skype from any trademark use in relation to the sale of TV or internet service. They want to prohibit Skype’s use of their name and trademark in the European Union, India, Norway and Brazil.
The European Union’s Office for Harmonisation of Internal Markets (OHIM) upheld Sky’s case for “trademark infringement” in a hearing in July. It ruled that Skype’s name as well as its’ blue bubble logo were too similar to the Sky name and trademark. Skype plans to appeal.
In Skype’s IPO filing with the US Securities and Exchange Commission (SEC) they stated the “oppositions are based on BSkyB’s claimed rights to the mark ‘Sky’.” Skype plans to raise 64 million pounds ($100m) through its IPO. The SEC filing said the shares will be available on Nasdaq later this year.
Skype released the information about the legal battle with Sky because of the risk to potential investors. Should BSkyB be successful, Skype would have a difficult time defending its own trademark.