Toyota’s flying car mark blocked by Sky
Toyota has been blocked from registering its flying car brand as an EU trademark by UK telecommunications provider Sky, which said it could be mistaken as being the company behind the products.
The Japanese automaker has invested in SkyDrive, a start-up that is reportedly at the testing stage for a prototype of the world’s first flying car.
Toyota is now also looking to secure trademark rights for the ‘SkyDrive’ brand. The EU ‘SkyDrive’ mark was based on an international trademark registration owned by Toyota, and also claims priority from a Benelux trademark registration active in Belgium, the Netherlands, and Luxembourg.
While all of these are EU member states, the European Union Intellectual Property Office (EUIPO) has blocked the mark from registration in the rest of the EU territory, after a complaint from the British telecoms brand.
The EUIPO recognised that there was little similarity in the goods covered by the ‘SkyDrive’ automobile trademark, and a UK mark for Sky’s logo which covers mostly digital media, as well as some online retail services related to cars and bikes.
Despite that low similarity, the EUIPO said it was possible that consumers could think ‘SkyDrive’ was a new product line from the British telecoms company, because the “addition of sub-brands attached to the main/house-brand is a common market practice”.
“In other words, consumers may confuse the commercial origins of the goods and services at issue, assuming that they come from the same undertaking or from economically linked undertakings,” the decision said.
Toyota was ordered to pay costs, although it may still appeal the decision to a higher EUIPO board.
It’s not the first time a company looking to use ‘SkyDrive’ has ran into opposition from the UK telecoms company.
In 2013, Microsoft rebranded the cloud storage service that is now called OneDrive, after the English High Court ruled in favour of Sky in a trademark dispute between the two companies over the original ‘SkyDrive’ name.
Skykick ruling
Sky recently suffered a surprising defeat at the English High Court, which found that some of its trademarks covering “computer software” were registered in bad faith.
The decision in Sky v SkyKick stemmed from a controversy over whether Sky’s broad trademarks for a wide range of ‘computer software’-related goods and services amounted to an unfair monopoly.
That had been the opinion of an EU advocate general, who advised the EU’s top court to rule that these marks were contrary to public policy.
The Court of Justice of the European Union (CJEU) did not go that far, and in January issued a more conservative ruling that was hailed as a “ big win” for brand owners like Sky, who adopt the common strategy of filing broad trademarks covering lots of goods and services.
But the English court’s subsequent ruling last month found that Sky’s trademarks were in bad faith insofar as the company had no intention of using the mark for all these goods and services.
The judgment is likely to lead to a shake-up in UK trademark filing strategy, with potentially similar ramifications in the EU as well.
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