Microsoft Loses Trademark Fight Over “Skydrive”

Microsoft has lost its battle over the name “Skydrive” to British Sky Broadcasting Group plc (Sky) and will have to change the name of its cloud storage service according to the V3 service from British publisher Incisive Media.

In a decision made by the High Court at the end of June, Sky succeeded in its claim that Microsoft's use of SkyDrive in relation to cloud storage services and software infringed Sky's registered trademarks.

In the court action, Microsoft had relied on UK and European Community Trade Mark (CTM) registrations for the word "Sky". It was registered for a range of goods and services including "computer software", "transmission of text, messages, sound and/or pictures", "telecommunications" and "electronic data storage services for personal use".

But Sky was able to establish that – as a result of similarity between the marks SkyDrive and Sky, and between the goods and services SkyDrive offered and those for which Sky was registered – there was a risk that the average consumer, when confronted with Microsoft's goods and services, might believe they were from a source connected with Sky.

In a strongly worded decision, the judge held that there was every reason to conclude that there is a likelihood of confusion for the average consumer. She said the average consumer would see SkyDrive as two words, taking into account that "Drive" could be a descriptive term and that "Sky" must be seen as the dominant element of the name.

The judge did not accept that "sky" is allusive of the internet or cloud storage. It's probable that Microsoft underestimated the risk of a dispute developing because they believed Sky was in practice operating in a different field. When SkyDrive was adopted in 2007, at least some of Microsoft's marketing team had no knowledge of Sky other than as a broadcaster. In fact, Sky had also been an internet service provider since 2006, and by 2010 its broadband service was being used by over three million households.

Source:  Incisive Media at http://www.v3.co.uk/v3-uk/opinion/2291352/sky-legal-victory-over-microsoft-on-skydrive-brand-a-warning-on-perils-of-tech-trademarks