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Sky v Microsoft trademark case should serve as warning
Television company Sky has succeeded in forcing software giant Microsoft to drop its SkyDrive name for cloud digital storage services. The case highlights the need for businesses to be cautious when it comes to new brand or service names, warns Geoffrey Sturgess, IP and commercial contracts solicitor at Hampshire-based law firm Warner Goodman Commercial.
Microsoft is being forced to change the name of its SkyDrive online storage after Sky issued proceedings alleging trademark infringement, arguing that the use of the name SkyDrive infringed its Sky trademarks.
Sky also successfully argued that there was a serious risk to its
reputation and that Microsoft’s use of SkyDrive would dilute the value of its brand; and that Microsoft’s actions amounted to passing off – that is confusing the public into thinking that the Skydrive service was provided by Sky. Sky’s claim – backed up with evidence of calls to its helpline from customers who had assumed it was one of their services – was successful in the English High Court and will have effect across Europe.
An attempt by Microsoft to counter-claim invalidity of Sky’s trademark registrations on the basis that ’sky’ was simply descriptive of cloud computing was unsuccessful. Largely because they had registered the marks before the concept of cloud computing had entered the minds of the public.
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The case has highlighted the need for companies, large and small, to undertake clearance searches to check there is no conflict between their proposed mark or name with an existing registered mark or even an unregistered trading or product name of another business.
’No one wants to invest in marketing their new name or product only to be forced to change it’
Sturgess, who is based at Warner Goodman Commercial’s Southampton office, explained: “It turns out that Microsoft had done its research back in 2007 but perhaps underestimated the importance of the Sky brand, believing that the company was solely concerned with broadcasting. Unfortunately for them Sky had started to supply Internet services in 2006 and by 2010 had three million household customers for those services. It raised an objection to Microsoft’s
SkyDrive trademark application at the outset, which Microsoft decided to contest.
“These two companies could afford a big court case. SMEs generally can’t. If one of the big boys objects to an SMEs name or brand there is not much the SME can do except fold. Global brands are particularly zealous about protecting their name and image and it would be quite wrong for a small company to imagine that it is too small to be noticed by a major international company or that such a company would not bother pursuing it. They do, all the time. Occasionally the little guy wins, but rarely.“
Sturgess added: “It’s a complex and thus very expensive area for court cases. The clear message to any business looking to develop a new brand for a product or service is to make a realistic assessment of existing brands, both those that are registered and those that are just used. Making application for or registering a trademark which is the same as or similar to an unregistered mark used by a competitor does not guarantee that the mark can’t be attacked by that competitor. No one wants to invest in marketing their new name or product only to be forced to change it.“
Eighteen renewable projects funded by £300m IPO
Southampton-based law firm Bond Dickinson has advised long- standing client Renewable Energy Systems (RES) and InfraRed Capital Partners (InfraRed) on the sale of a portfolio of 14 operational onshore wind farms and four solar PV parks in the UK, Republic of Ireland and France to The Renewables Infrastructure Group (TRIG), a new investment company. The sale was funded by the £300-million initial public offering (IPO) raised by TRIG on the London Stock Exchange, the largest-ever flotation of a dedicated UK-based renewable energy fund.
TRIG will be managed on a day-to-day basis by InfraRed as discretionary investment manager. RES has been appointed as operations manager.
The transaction includes a right of first offer for TRIG to acquire future
projects developed by RES, as well as other agreements relating to the management and operation of the assets.
The Bond Dickinson team was led by corporate partner Sebastian Briggs, who commented: “The appetite of infrastructure funds for renewables assets has been increasing in recent years. The fact that TRIG successfully raised its maximum fundraising target and the IPO was oversubscribed reinforces the fact that quality assets can attract funding. We are delighted to have been able to work with RES and InfraRed on such a significant transaction.“
The Bond Dickinson team included partner Charles Robson and senior associates Joe Lewis, Stephen Ryde-Weller, Ed Rimmell, Ronan Lowney and Carol Tricks.
THE BUSINESS MAGAZINE – SOLENT & SOUTH CENTRAL – NOVEMBER 2013
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