A judge has ruled that a Microsoft trademark infringes British Sky Broadcasting’s (BSkyB) in the UK and Europe, a move which could force the computer company to rebrand.
Following an eight day trial, High Court judge Mrs Justice Asplin has decided that Microsoft's use of the name SkyDrive infringed BSkyB's Community and UK trademarks, and also amounts to passing off.
Launched in 2007, SkyDrive is a cloud storage system which allows users to upload and synchronise files and access them from any web browser.
However, it was found that the inclusion of the word 'Sky' was likely to confuse customers, and the court wrote on June 28 that evidence suggested there had already been some confusion.
Making her judgement, Mrs Justice Asplin wrote: “In my judgment there has been a misrepresentation whether intentional or not.”
Kirsten Gilbert, partner at Marks & Clerk Solicitors LLP, said the confusion from customers warranted the court’s judgment.
“It appears that there were instances where people had actually been confused,” she said.
“In trademark cases evidence of instances of actual confusion can be very helpful in persuading the court that there is a likelihood of confusion. Such instances can be difficult to uncover but in this case it seems there were cases of unprovoked instances which indicated to the court that there had been confusion – such as ringing up the wrong help desk.”
BSkyB, partly owned by Rupert Murdoch’s News Corp, told WIPR it was pleased with the judgement.
“We regard any unauthorised use of the Sky name as a clear infringement of our well-established Sky brand. We remain vigilant in protecting the Sky brand and will continue to take appropriate action against those companies that seek to use our trademarks without consent."
Microsoft is set to appeal against the decision on the grounds that the name was a description of its cloud services.
A spokesman said: “This case is only about the SkyDrive name and has nothing to do with service availability or future innovation. The decision is one step in the legal process and Microsoft intends to appeal.”
But Gilbert added: “They are obviously entitled to appeal but it is difficult at this stage to try to predict on what basis they would appeal as nothing seems to be manifestly wrong with the judgment.
“If there is an appeal Microsoft may decide to continue using the name until the appeal concludes, but if BSkyB wins the appeal I would assume they will want Microsoft to re-brand as they are very protective of their brand.”
Another hearing will be held where Microsoft will be able appeal.
This article was first published on 01 July 2013 in World IP Review
BSkyB, Microsoft, trademark, SkyDrive, News Corp
