When the Sky falls in: Sky strengthens its grip on Sky in Ireland

Pat Walsh v British Sky Broadcasting Group (here) is a fascinating trade mark opposition decision of Dermot Doyle, acting for the Controller of the Irish Patents Office, which goes back to 31 January.

The British Sky Broadcasting Group (BSkyB) opposed Walsh's application to register the word and logo mark SKY BUSINESS CENTRES (right) for services in Classes 35, 36 and 43 on the grounds that

• there was a likelihood of confusion with the earlier SKY BUSINESS and SKY Irish and Community registered trade marks (s.10(2)(b) of the Irish Trade Marks Act 1996); 
• the mark took unfair advantage or was detrimental to the distinctive character or reputation of the earlier marks (s.10(3)); and, that
• use of the mark would amount to passing off (s.10(4)(a)). 

Walsh submitted that the opposition be held in abeyance until the determination of opposition and cancellation proceedings concerning Community trade mark applications and registrations relied on by BSkyB. In the absence of a stay, it was claimed that the mark was not similar, did not cover the same services and was therefore capable of distinguishing the services from other undertakings negating any likelihood of confusion. There had been a long period of honest and concurrent use (s.12): it had acquired a substantial reputation in Ireland since 2003 and had not been shown to cause or be likely to cause confusion to the extent of changing the economic behaviour of the average consumer of the goods or services for which the earlier marks were registered. Further, a number of Community trade mark applications and registrations relied on by BSkyB could not be considered on the ground that they were not the registered proprietors.

The Controller, having considered this formidable array of submissions and defences, swept them aside, upheld the opposition and refused registration of Walsh's mark.

* First, there was no way that the opposition could be held in abeyance. The legal status of the marks relied on in support of an opposition was determined by the date when the opposed application was filed -- a date when all those marks were ‘live’. At the date of the hearing, none had been cancelled, invalidated, refused or removed from their respective registers.

* The fact that BSkyB was not recorded as being the proprietor of some of the marks relied on was not fatal, it being sufficiently relevant to the proceedings that the marks were owned by companies within and under the direct control of the BSkyB Group [this is welcome news for opponents whose paperwork might be in a tangle following in incomplete corporate reorganisation or the acquisition of a third party portfolio.  Are all jurisdictions so tolerant, wonders Merpel ...].

Cat in the Sky (Catmoji)

* There was plenty of good news for Walsh. Looking next at the parties' respective marks, it was plain that they were not identical; nor did Walsh's mark deceive the public.  Nor was its use prohibited by domestic or Community law.  Further, there was no evidence to support the contention that it had been made in bad faith since Walsh could not be shown to have behaved dishonestly or in a manner which fell short of the acceptable commercial standards of reasonable and experienced traders in the particular field of business.

* There was also some news that was bad for Walsh and fatal for his application: on the facts there was a real likelihood that, if Walsh were to trade under the applied-for mark, consumers were liable to be confused between Walsh's and BSkyB's businesses, or  that consumers would be likely to believe that Walsh's business was associated with those earlier marks. Why? Because they were sufficiently similar, and their respective services were either similar or identical.  Apart from visual and aural similarities, conceptually they even shared the same message that they related to services emanated from an entity trading as SKY. Though BSkyB's marks started out with a medium degree of inherent distinctiveness, they had acquired substantial additional distinctiveness through use and promotion.

* The use of Walsh's mark would also take unfair advantage of or inflict detriment to the earlier marks. Here the earlier SKY marks had reached the required level of recognition to qualify for such protection, and Walsh had no due cause to lean on BSkyB's reputation since he had no prior association with the word SKY other than choosing SKY as the brand, the other word elements being added simply to designate the nature of the business. There was a possibility that this use would insidiously erode the reputation of BSkyB's mark over time and that Walsh was unfairly coat-tailing.

* Would Walsh's use of his mark have constituted passing off On balance, while there was an attempt to take unfair advantage, this did not extend to an attempt by Walsh to pass his off services off as being those of BSkyB. Indeed, Walsh didn't even know that BSkyB traded in the same services as those applied for and there was no evidence that the rebranding of his established business was an attempt to misrepresent or cause damage. The fact that he actually took the trouble to apply to register his mark, thereby bringing the mark into the public domain and opening it up to challenge, also spoke in his favour.

* Finally, there was no provision in the Trade Marks Act 1996 under which an application could be refused at the Controller's discretion [Then why was this ground of opposition raised?].

Says the IPKat, it's difficult to imagine how any other result could have been arrived at -- and, if Walsh had emerged successful, it is inconceivable that BSkyB would not have appealed to instance after instance until they either won or made things as difficult for Walsh as possible before they didn't.  Nor was there realistically much hope that the parties would be able to reach a coexistence agreement. Can any rational commercial basis be found, in the real world in which we live, for the inevitable opposition to be contested?

Merpel adds: we're talking about a trade mark application that was made in June 2007, opposed in March 2008 and on which the opposition was upheld in June 2012 -- the grounds for this decision being delivered some six months later.  There may well be some jolly good reasons why the whole episode took so long, but to the outsider everything seems, well, a little slow.

The Sky's the Limit here
Reach for the Sky here
Sky Masterson here

This post was prepared with the valuable assistance of recent guest Kat Kate Manning. Thanks, Kate!