Sky Pushed to its Limits with Microsoft’s Cloudy Branding Stunt

Nov. 6, 2013 - PRLog -- A court battle between software giant Microsoft and leading broadcaster Sky has delivered a sharp lesson in the need to check out trade marks before launching a new product, which Miller Hendry’s expert in intellectual property say is just as relevant to small local businesses.

Microsoft are being forced to change the name of their SkyDrive online storage after Sky issued proceedings alleging trade mark infringement and passing off, arguing that the average consumer would make a link to the Sky brand.  Sky’s claim, backed up with evidence of calls to their helpline from customers who had assumed it was one of their services, was successfully upheld in the High Court.

Sky also successfully argued that there was a serious risk to their reputation and that Microsoft’s use of SkyDrive would dilute the brand; and that Microsoft’s actions amounted to passing off by showing goodwill that was generated across Sky’s broadband business and digital content storage which Microsoft could draw upon.

An attempt by Microsoft to counter-claim invalidity of Sky’s trade mark registrations on the basis that ‘sky’ was simply descriptive of cloud computing was unsuccessful.

The case has highlighted the need for companies to undertake clearance searches to check there is no conflict with an existing registered mark and also to minimise the risk of encroaching on the goodwill and reputation of another company which could give rise to a claim of ‘passing off’ such as this.

Alan Matthew, intellectual property expert Miller Hendry Solicitors and Estate Agents explained:

“It turns out that Microsoft had done their research back in 2007 but perhaps underestimated the importance of the Sky brand, believing that the company was solely concerned with broadcasting.  But Sky had started to supply internet services in 2006 and by 2010 was in use in 3 million households. They raised an objection to the SkyDrive name at the outset, which Microsoft decided to contest.

“But this branding lesson is not just for big business.  Global brands are particularly zealous about protecting their name and image and it would be quite wrong for a small company to imagine that they are too small to be noticed by a major international company or that such a company would not bother pursuing a little business.”

He added:

“It’s a complex area, but the message to any company looking to develop a new brand for a product or service is to make sure a realistic assessment has been made against current brands, including the potential for any future developments by any similarly named competitor, particularly in fast moving technology markets such as this. It’s so easy to check trademark databases and, at the very least conduct a rudimentary internet search. If in doubt, seek expert legal advice.”

British Sky Broadcasting Group Plc, Sky IP International Limited, British Sky Broadcasting Limited, Sky International Ag v Microsoft Corporation, Microsoft Luxembourg Sarl