Trademark - Who owns the Sky?

     Trademark owners need to be vigilant about protecting their marks.  However, owners should be careful not to be vilified as a trademark bully.

     Over the weekend, there was a story about how British Sky Broadcasting Group plc objected to the game developer Hello Games using the word "Sky" in their forthcoming video game "No Man's Sky".  See Digital Trends.  As always the devil is in the details.

     Hello Games had filed an EU trademark application for "NO MAN'S SKY" for broadly claimed goods and services within Classes 9, 14, 16, 18, 21, 25, 28, 35, 38, 41, 42 and 45.  See EUIPO link (opposition records also can be found here).  On May 14, 2014, Sky plc filed a notice of opposition asserting a likelihood of confusion, senior user rights, and unfair competition based on its registered marks and non-registered marks.  See Observations (hosted on Mega.nz).  Over the course of the next two years, the parties negotiated a settlement wherein the developer dropped some classes of goods and services (letter to OHIM, hosted on Mega.nz) and narrowed other classes of goods and services by adding a science fiction limitiation.  Letter to OHIM (hosted on Mega.nz).

     While the grounds of Sky plc's decision to file a notice of opposition may be debatable (i.e., is there really a likelihood of confusion between SKY or SKY TEAM and NO MAN'S SKY?), the notice did achieve positive results for Sky plc.  It reinforced Sky plc's no nonsense reputation around protecting its trademarks, and it forced the game developer to limit its claimed goods and services.


- Henry Park