Defending a relocation application – what to consider?
In the recent case of (1) British Sky Broadcasting Group PLC (2) Sky IP International Ltd (3) British Sky Broadcasting Ltd (4) Sky International AG v (1) Microsoft Corporation (2) Microsoft Luxembourg SARL  EWHC 1826 (Ch) the High Court ruled in favour of Sky in its IP claim against Microsoft regarding the latter’s online storage facility product “SkyDrive”.
Sky trade marks are registered for a range of goods and services, including computer software, online storage and file sharing facilities. In 2007, Microsoft launched a product named “SkyDrive”, which offered consumers online storage and file sharing services that could be accessed from anywhere via the internet.
Sky objected to Microsoft’s choice of name from the day that it was unveiled. In 2012, Microsoft started using the programme as one of the main start-up tiles on Microsoft’s “Windows 8” operating system.
Sky issued proceedings against Microsoft alleging trade mark infringement and passing off.
The High Court found in favour of Sky.
In reaching his decision, Asplin J considered that, if one undertook a global assessment, there was every reason to conclude that there was a likelihood of confusion in the average consumer. This was in the sense that there was a risk that the public might believe that the services (SkyDrive) originated from Sky, or otherwise was economically linked to Sky. Asplin J felt that the average customer would see “Sky” as fulfilling a trade mark function, as opposed to a composite part of the “SkyDrive” name as a whole.
Another major factor in reaching this decision was the fact that there was evidence of actual confusion, in the form of consumer calls to the Sky helpline in relation to the SkyDrive product. It was also significant that the product appeared as a pre-loaded title on Microsoft platforms, such as laptops and mobile phones, in circumstances in which it was difficult to distinguish any connection to Microsoft as opposed to Sky.
Sky was able to establish that there was a serious risk to their reputation through loss of distinctiveness in the sense of “dilution, whittling away or blurring” in the minds of average and reasonably informed consumers. Sky was also able to successfully make out its claim for passing off by establishing goodwill, misrepresentation and damage.
Microsoft’s counterclaims on the grounds of partial invalidity and impermissible amendment were rejected.
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