News - BSkyB wins legal case over Microsoft use of 'SkyDrive' name

[HEXUS]

A British court made the ruling which will apply in the whole of Europe.

Read more.

[TheAnimus]

Given that MS have been using the term for 6 years, and it took 4 years for BSkyB to complain, they might be in trouble. If Sky had been writing nasty letters, then they will have a good case, if not, I don't see how they can claim to own the term. In 2007 Sky didn't offer any kind of online services that would be in the same space.

[raven1001]

When did sky own the rights to the word sky?

[Blademrk]

Next, the court case against the game Skyrim and the film Skyfall...

[botak131]

Damn it apple stop teaching other companies to be like you!

[shaithis]

Utterly retarded.
SkyDrive is a very descriptive name for the service......Sky tv, not so.....plus the products don't step on eac other's toes and the word sky is in the dictionary....

Seems our courts might be as bad as the us

[cameronlite]

Utterly retarded.
SkyDrive is a very descriptive name for the service......Sky tv, not so.....plus the products don't step on eac other's toes and the word sky is in the dictionary....

Seems our courts might be as bad as the us

Well, Sky TV is traditionally delivered via Satellite, so it kind of makes sense.

I wasn't even aware Sky had an online storage service. How can you get confused over something in which nobody knows exists?

On top of that, who actually hears the word "sky" and goes - oh BSkyB must own that?

[Saracen]

Given that MS have been using the term for 6 years, and it took 4 years for BSkyB to complain, they might be in trouble. If Sky had been writing nasty letters, then they will have a good case, if not, I don't see how they can claim to own the term. In 2007 Sky didn't offer any kind of online services that would be in the same space.

As a matter of fact, it didn't take Sky 4 years to complain.

MS filed for use of "SKYDRIVE" on 20 November 2007, and that application was published ion the relevant trademark journal on 13 May 2008.

Sky opposed it on 13 August 2008, (i.e. within 3 months) and the decision upholding that was given on 30 September 2010. That is to say, it took over 2 YEARS for the decision, and MS promptly appealed.

Without going into detail on the (very long and extremely tedious) legal logic, this is basically a trademark dispute, and Sky registered the original trademarks in 2002, and followed up with several more in 2006, before MS got in on the name.

There are then a whole series of legal issues, not least, what a average but reasonably informed consumer would make of it, and whether they'd be confused.

MS's original use of "SkyDrive", as far as I can tell, was limited to a "Store and Serve" service that you got as part of having opened an MS account. This is one of the legal issues. Are consumers going to be confused as to who is providing the service? If you have to open an MS account and then get SkyDrive as part of it, you probably won't be confused about who is providing it. But when you get SkyDrive (with the MS stuff before it, as was previously the case), consumers in territories where Sky is prevalent might well be confused about who provides it. This is supported, among other things, by the number of complaints and queries received by Sky (TV people)'s call centres when SkyDrive (from MS) had some real problems. Those consumers thought it was a Sky (TV people) product.

Frankly, for quite a while, as someone that doesn't use the service, but had seen it advertised, so did I. And I just went and asked the wife, who isn't a computery person (but knows what the Cloud is) "if there's a "Cloud" service called SkyDrive, who provides it?" and without hesitation she said "Sky I presume".

So, .....

- it's a trademark dispute
- Sky had trademarks registered, starting in 2002, and more in 2006,
- those trademarks DID cover the relevant classes of goods and services
- MS applied for a trademark in 2008, and Sky opposed it then.
- MS appealed, and Sky won, decision in 2010
- it's been going through the courts ever since.

There have been several legal issues, covering whether trademarks were relevant (Sky won), whether MS's use was "passing off" (and, basically, the result was whether intentionally or not, MS were doing so), would those average consumers be confused (the evidence that they were was accepted as convincing), and so on.

MS opposed on various arguments, for instance, that the "Sky" in SkyDrive was "allusive of the internet". The judge dismissed that. He also pointed out that the "Sky" bit was the priority and the "Drive" bit more descriptive. And so on.

Who knows where it'll go from here. Maybe MS will appeal it. It wouldn't surprise me. But the whole legal logic, step by step, is available in the judgement (and it's on Bailii for anyone interested in reading it), and it makes pretty convincing reading to be honest.

Oh, and

In 2007 Sky didn't offer any kind of online services that would be in the same space. ....

Well, the judge deals with that, too. The point of a trademark is that it covers services in the class for which you have the trademark, whether you're currently offering the services or not. That was another issue MS lost on, as to exactly what services were in what class.

This does NOT mean you can register, say "Earth" and control anything done using that word, but it does mean that if you register "Earth" for classes 6, 38 and 41, you're covered for anything in classes 6, 38 and 41, even if you aren't currently offering a specific service. It's about building brands, and brand identity, and whether someone else can market a product taking advantage of that brand, just because you haven't yet launched a specific type of service within that class.

It's certainly not about first come, first served, which is more or less the basic position with, for instance, copyright. If I create an original work, then (in most jurisdictions, and with the statutory exemptions) the act of creation of that original work creates the copyright. i.e., first-come, first-"served." Trademarks work on a very different basis.

[Saracen]

Utterly retarded.
SkyDrive is a very descriptive name for the service......Sky tv, not so.....plus the products don't step on eac other's toes and the word sky is in the dictionary....

Seems our courts might be as bad as the us

Well, part of MS's logic is that "Sky" alludes to the internet? Huhn? The judge isn't buy it either, and it certainly doesn't trump pre-existing trademarks.

If I were to launch "Microsoft Teddy Bears", I wonder is MS would object, and provide me with as legal snottygram from their lawyers?

The fact that "Sky" is in the dictionary isn't material. The fact that Sky had it registered as a trademark for specific classes of goods and service, is.

[miniyazz]

Well, part of MS's logic is that "Sky" alludes to the internet? Huhn? The judge isn't buy it either, and it certainly doesn't trump pre-existing trademarks.

If I were to launch "Microsoft Teddy Bears", I wonder is MS would object, and provide me with as legal snottygram from their lawyers?

The fact that "Sky" is in the dictionary isn't material. The fact that Sky had it registered as a trademark for specific classes of goods and service, is.

TBH it's more akin to launching Windows Teddy Bears where the bears play with windows all the time.. in that Microsoft is not a generic word, whereas sky/windows are. That being said, I'm not disputing that in this instance Sky may be in the right.

[Saracen]

TBH it's more akin to launching Windows Teddy Bears where the bears play with windows all the time.. in that Microsoft is not a generic word, whereas sky/windows are. That being said, I'm not disputing that in this instance Sky may be in the right.

Yeah, the analogy might not be great, but the point was that MS are pretty good, and pretty swift, at defending their own IP rights, but seem to have no problem trampling on others'.

[zarnywoop]

they just need to call it Microsoft CloudDrive or something. I don't and never have had Sky, so I would never associate it for being BSkyB's product, especially since I access it via Microsoft products, but then I'm not Joe Numpty that doesn't understand these Interweb tubes.

[Percy1983]

I have never thought it was anything to do with sky, if I thought it was I wouldn't go near it.

Next sky box made by apple?

[badass]

Yeah, the analogy might not be great, but the point was that MS are pretty good, and pretty swift, at defending their own IP rights, but seem to have no problem trampling on others'.

Find me a multinational that doesn't

[TheAnimus]

It's certainly not about first come, first served, which is more or less the basic position with, for instance, copyright. If I create an original work, then (in most jurisdictions, and with the statutory exemptions) the act of creation of that original work creates the copyright. i.e., first-come, first-"served." Trademarks work on a very different basis.

Ah, I was under the impression (the article didn't mention the back story) that this was the first part of the opposition.

I also (mistakenly!) thought that you had to actually have a consumer presence with your TM to keep it, how else can one prevent squatting?

In that case I guess it will be a branding thing with monies paid to make amends. However, I can't help but fail to hide my glee at Murdochs empire crumbling a little bit. LoveFilm/Netflix are killing it, and MS are going very aggressively into the space that is your sky boxes.

[shaithis]

Yeah, you're right because the SkyDrive service is commonly delivered through a dish and satellite combination and Sky TV no no such association.

Hold on...

Drive in the Sky (Cloud)...which ties in with their "Azure" cloud platform.

SkyTV does not have to be delivered via satellite (which are in space, not the sky).

Perhaps the names only make sense to the tech savvy?