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Ruling the Sky(s)

British Sky Broadcasting Group plc and others v Microsoft Corporation and another [2013] EWHC 1826 (Ch), 28 June 2013The long anticipated English High Court decision in the 'SkyDrive' trade mark case British Sky Broadcasting Group plc and others v Microsoft Corporation and another [2013] EWHC 1826 (Ch), 28 June 2013

The long anticipated English High Court decision in the 'SkyDrive' trade mark case between British Sky Broadcasting Group plc ("Sky") and Microsoft Corporation ("Microsoft") was recently handed down.

Sky issued proceedings in June 2011 alleging trade mark infringement and passing off against Microsoft for its use of SKYDRIVE for cloud based digital storage services. Sky has multiple trade mark registrations for SKY individually and also with a descriptive word tagged onto it, offering, amongst others, internet and broadband services. Microsoft offers cloud based digital storage under the SKYDRIVE mark, initially using WINDOWS LIVE SKYDRIVE, subsequently changing it to MICROSOFT SKYDRIVE and most recently simply adopting SKYDRIVE. Sky characterised Microsoft's use of SKYDRIVE as a major standalone brand, having 92 million users worldwide at the commencement of proceedings.

Taking into account all the evidence and arguments presented, Asplin J held that there had been both trade mark infringement and passing off.

By way of evidence, Sky presented 17 recorded instances of people contacting the Sky helpline for issues with SkyDrive, having assumed it was a service offered by Sky. Asplin J considered these to be spontaneous, real life examples of confusion, which she conceded were rare in the authorities. Sky also relied upon independent market research by way of a survey conducted in 2010 on behalf of Sky, on approximately 500 members of the general public. The survey revealed that 100 people mentioned Sky in their answers when presented with a card with 'SkyDrive' written on it and asked what it made them think of. Although the Judge placed little evidential value upon the survey, her conclusion was still borne out by the responses to it.

In reaching her conclusion Asplin J considered that DRIVE was a descriptive term and therefore SKY was the dominant element of Microsoft's mark. Further, she argued that key to her decision was the fact that the platforms where Microsoft was offering SKYDRIVE, being preloaded on a mobile phone, downloadable as an app or present as a tile on the Windows 8 OS, meant that it was difficult for consumers to make the connection between it and Microsoft, bringing into question the ability of SKYDRIVE to act as an indication of origin - an essential function of a trade mark.

With regards to the claim for passing off, Asplin J found the existence of Sky's goodwill not to be in dispute, that there was misrepresentation, whether intentional or not, made out by the evidence presented and that damage was inherently likely where customers of a business wrongly connect it with another. On that basis, the claim for passing off succeeded.

Microsoft did make a counter claim for invalidity, stating that the registration of SKY was descriptive in relation to cloud computing, although this was rejected.

Unless Microsoft successfully appeal the decision, this judgment goes some way to ensuring that Sky does indeed 'rule the SKY', or at least the trade mark registrations for it.

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