BSkyB opposed Skype's registration attempt, arguing that the name 'Skype' was too similar to one of its trade marked trading names, Sky.
In July of this year the Office of Harmonisation of the Internal Market (OHIM) ruled in favour of BSkyB's opposition claims, according to documents published by Skype.
The Voice over Internet Protocol (VoIP) phone company will float on the stock markets in an initial public offering (IPO). It has published the documents all IPO hopefuls are required to publish, outlining the current status of the business and any risks to it.
"We have registered and are in the process of applying to register the 'Skype' name and other related marks as trademarks and service marks in various jurisdictions," the filings said. "In the European Union and several other countries, some of our applications have received objections from the applicable trademark agency or have been opposed by third parties."
"On July 6, 2010, we received a negative first instance decision from the European Union trademark registry (OHIM) on BSkyB’s opposition proceeding against the Skype bubble logo trademark application," it said. "We intend to appeal this decision by submitting a notice of appeal to the OHIM Board of Appeal, and if necessary to the General Court at the Court of Justice of the European Community."
Skype said that its trade mark applications were also being opposed by BSkyB in India, Norway and Brazil. It said it had already won its case in Switzerland and Turkey and had one decision in its favour in Brazil.
Skype said that if it lost the current case it would be less well able to protect its brand.
"If these oppositions to our application for trademark registration are ultimately successful, it will be more difficult for us to prevent third parties from using the Skype brand without our permission, which may have a material adverse effect on our business," it said.
A loss could also embolden rivals and result in lawsuits with a direct cost, it said.
"A successful opposition to our application in one or more countries might encourage BSkyB or other third parties to make additional oppositions or commence trademark infringement proceedings," it said.
"If BSkyB or other third parties were to pursue litigation to prevent our use of the Skype name or logo, defending against that litigation could be costly and time consuming even if we were ultimately to prevail," said the Skype filing. "If we were not ultimately to prevail in any such litigation to prevent our use of the Skype name or logo, we could be precluded from using the Skype name or logo in one or more jurisdictions without obtaining a license from BSkyB or such other third parties, which license may not be available on commercially reasonable terms or at all, which could have a material adverse effect on our business."
Skype also said that it was pursuing action in China, Russia, Brazil and Indonesia against companies unrelated to it which have applied for or even been granted trade marks in its name and logo.
"In certain instances, like in China, our trademark applications have faced preliminary refusals because there has been a third-party trademark application submitted prior to our application," it said. "In most cases, we are requesting a review of these preliminary refusals and are opposing and pursuing cancellation actions against those third-party trademarks and trademark applications."
