Action brought on 27 September 2012 - Skype v OHIM - British Sky Broadcasting and Sky IP International (skype)

(Case T-423/12)

Language in which the application was lodged: English

Parties

Applicant: Skype (Dublin, Ireland) (represented by: I. Fowler, Solicitor, J. Schmitt, lawyer, and J. Mellor, QC)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other parties to the proceedings before the Board of Appeal: British Sky Broadcasting Group plc (Isleworth, United Kingdom); and Sky IP International Ltd (Isleworth)

Form of order sought

Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 26 July 2012 in case R 1561/2010-4; and

Order that the costs of the proceedings be borne by the defendant.

Pleas in law and main arguments

Applicant for a Community trade mark: The applicant

Community trade mark concerned: The figurative mark "skype", for goods and services in classes 9, 38 and 42 - Community trade mark application No 4546248

Proprietor of the mark or sign cited in the opposition proceedings: The other parties to the proceedings before the Board of Appeal

Mark or sign cited in opposition: Community trade mark registration No 3203411 for the word mark "SKY", for inter alia goods and services in classes 9, 38, 41 and 42; United Kingdom trade mark registration No 2302176 E for the word mark "SKY", for inter alia goods and services in classes 16, 35 and 38; United Kingdom trade mark registration No 2302176 B for the word mark "SKY", for inter alia goods and services in classes 9, 41 and 42; Community trade mark registration No 1178409 of the figurative mark "sky", for inter alia goods and services in classes 9, 38 and 42; Community trade mark registration No 1178540 of the figurative mark "sky", for inter alia goods and services in classes 9, 38 and 42; Community trade mark registration No 3166337 of the figurative mark "sky", for inter alia goods and services in classes 9, 38 and 42; Community trade mark registration No 3203619 of the figurative mark "sky", for inter alia goods and services in classes 9, 38 and 42; United Kingdom trade mark "SKY", for goods and services in classes 9, 16, 38, 41 and 42; Earlier non-registered trade mark, trade name and company name "SKY" used in the course of trade in the United Kingdom, for goods and services in classes 9, 16, 38, 41 and 42

Decision of the Opposition Division: Upheld the opposition for all the contested goods and services

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation No 207/2009.

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