OPPOSITION No B 2 758 533

Sky plc, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent), represented by CMS Cameron McKenna Nabarro Olswang, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Lauri Patricia Van Houten, Via Mentegazzi 34, 13900 Biella, Italy (applicant), represented by Giambrocono & C. S.P.A., Via Zambianchi, 3, 24121 Bergamo, Italy (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 758 533 is upheld for all the contested services, namely:

Class 41: Organisation of sporting events, in particular trail running and skyrunning.

Class 42: Scientific services for research in the medical and sporting fields; design and development of computer hardware and software.

2.        European Union trade mark application No 15 362 114 is rejected for all the contested services. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 362 114, namely against all the services in Classes 41 and 42. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604. In relation to this earlier right, the opponent invoked Article 8(1)(b) and 8(5) EUTMR. In addition, in relation to other earlier rights, the opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 2 500 604.

1. The services

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The services on which the opposition is based are, inter alia, the following:

Class 41: Education and entertainment services; organising of sporting activities and competitions; organisation of entertainment; organising and conducting educational courses; arranging and conducting of seminars and workshops (training); consultancy, information and advisory services relating to all the aforesaid services; advising or providing information in relation to the foregoing; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

Class 42: Design and development of computer hardware and software; design, drawing and commissioned writing all for the compilation of web pages on the Internet; hosting websites; creating and maintaining websites; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; weather forecasting; maintenance and repair of interactive video game devices comprised of computer software and accessories, namely software for operating game controllers; home computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services; computer services, namely the organisation of an infrastructure to enable television subscribers to access internet services via the television; advice relating to the development of computer systems; advisory services relating to computer based information systems; advisory services relating to computer hardware or software; design, installation, maintenance or updating of computer software; design of computer hardware; design services; designing electrical or electronic systems; design services for artwork for animated films; monitoring and analysis of call information; computer programming services; internet walled garden services; operation of search engines; rental or leasing of computer hardware or software; testing, research, assessing, consultancy, advising or providing information in relation to the foregoing; computer services for on-line shopping; computer services relating to the processing of orders and payments; weather forecasting; providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, ecology and animal welfare as well as conducting research and drawing up expert reports in the aforementioned fields; research and development of durable use of nature and the environment; technical and legal assistance concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare and effecting such projects; development and testing for renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, and components therefor; effecting research projects concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare; consultancy, information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

The contested services are the following:

Class 41: Organisation of sporting events, in particular trail running and skyrunning.

Class 42: Scientific services for research in the medical and sporting fields; design and development of computer hardware and software.

An interpretation of the wording of the lists of services is required to determine the scope of protection of these services.

The terms ‘in particular’ and ‘including’, used in the opponent’s and in the applicant’s lists of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

On the other hand, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

Contested services in Class 41

The contested organisation of sporting events, in particular trail running and skyrunning are included in the broad category of the opponent’s organising of sporting activities and competitions. Therefore, they are considered identical.

Contested services in Class 42

The contested design and development of computer hardware and software are identically covered by the opponent’s earlier mark in Class 42.

The contested scientific services for research in the medical and sporting fields consist of services which promote the research and development of technologies and resources in the medical and sporting fields. These activities are aimed at the acquisition of new knowledge with the objective of using it for developing new products, processes or services or for bringing about a significant improvement in existing products, processes or services. Therefore, they have relevant links with the opponent’s design services; design and development of computer hardware and software; research, testing, consultancy, advising or providing information in relation to the foregoing in Class 42.

These services partly coincide in their technological and scientific nature since, for instance, the opponent’s design services or design and development of computer hardware and software, as well as the research and testing related thereto, may be specifically applied to numerous fields of application and market sectors (such as the ones in which the contested services are rendered). Therefore, these services may be offered by the same companies and together as part of a broader service ordered by the same customer. The same service provider may conduct scientific analysis and research and, based on this, the provider may design and develop computer software to meet the customers’ needs. Furthermore, the same provider may conduct research and testing into software or design services specifically intended to introduce an improvement in the medical and/or sporting fields. It follows that these services may, therefore, be provided to the same final customers. Consequently, they are considered similar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, the specialised nature and/or the terms and conditions of the purchased services.

3. The signs

SKY
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a word mark, consisting of the verbal element ‘SKY’.

The contested sign is a figurative mark portrayed in shades of grey and in black; it contains the verbal elements ‘SKY RUNNER WORLD SERIES’, written in rather standard upper case letters, over four lines, at the centre of the sign. A figure of a runner is portrayed to the left of the verbal elements. The sign also displays some essentially decorative features: an elliptical background containing several intersecting lines and a black arrow; at the bottom left corner of the sign, in rather small letters, there is the mention of a website: ‘www.skyrunning.com’.

The word ‘SKY’, which forms the earlier mark and the first word of the contested sign, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (Collins English Dictionary). This word is neither descriptive nor lacking distinctiveness for any of the relevant services in Classes 41 and 42, as it does not describe or allude to any of their essential characteristics. Therefore, it is normally distinctive.

The word ‘RUNNER’ of the contested sign will be perceived as, inter alia, ‘a person who runs, especially for sport or pleasure’ (Collins English Dictionary). The figure of the runner will convey and reinforce the same concept. The words ‘WORLD SERIES’ will be perceived as, inter alia, ‘a sequence of games, races, or matches, the results of which determine an overall winner or champion, which is disputed on a global scale’ (Oxford English Dictionary).

Therefore, the relevant English-speaking public will most likely interpret the verbal elements of the contested sign as ‘a global sequence of running races/competitions named SKY’. It follows that, in relation to the relevant services in Class 41, the expression ‘RUNNER WORLD SERIES’ is non-distinctive, as it directly indicates their kind and purpose. Furthermore, the same expression is weak in relation to the services in Class 42, because it alludes to their purpose and specific field of applicability.

The figurative element of the runner in the contested sign is also weak in relation to all the relevant services, as it merely reinforces the aforementioned descriptive and allusive connotations contained in the sign.

The remaining figurative elements in the contested sign (the elliptical background and the black arrow) will only have a minimal impact on the public’s attention, as their role in the sign is clearly ornamental and, therefore, the public will not perceive them as an indicator of trade origin.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Finally, the website mentioned in the bottom part of the contested sign is, due to its small size and position, a negligible element in the mark. It will not be pronounced and will most likely go unnoticed by the public, as consumers, when perceiving a complex mark with numerous verbal and figurative elements, will tend to focus their attention only on the visually dominant elements. In the present case, the remaining elements of the contested sign are dominant, as they visually overshadow the referred website depicted at the bottom of the mark.

Therefore, for all the aforementioned reasons and considering the normal inherent distinctiveness of the word ‘SKY’ of the contested sign, the public will attribute more trade mark significance to this verbal element, as it will perceive it as the main indicator of commercial origin of the relevant services; therefore, the element ‘SKY’ is the most distinctive element of the contested sign.

Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced and plays an independent and distinctive role at the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader.

The signs differ essentially in the overall stylisation and figurative elements of the contested sign and in the additional words ‘RUNNER WORLD SERIES’ contained therein. However, for the aforementioned reasons, the public will attribute more trade mark significance to the verbal element ‘SKY’ of the mark, than to any of its additional figurative or verbal components, which are weak or even non-distinctive.

Therefore, considering that the initial, independent and fully distinctive element of the contested sign, ‘SKY’, reproduces the earlier mark, the signs are considered visually similar to an average degree.

Aurally, the first element of the contested sign, ‘SKY’, which performs an independent distinctive role therein, and the earlier mark as a whole, are pronounced identically. The pronunciation differs in the sound of the words ‘RUNNER WORLD SERIES’ of the contested sign, which has no counterpart in the earlier mark.

Overall, considering that the aurally most conspicuous part of the contested sign – its beginning ‘SKY’ – reproduces identically the earlier mark, as well as the reduced impact of the remaining elements of the contested sign (which are non-distinctive or weak in relation to the relevant services), the marks are aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the word ‘SKY’, contained in both signs, and the remaining verbal and figurative elements of the contested sign, in accordance with the meanings referred to above. Therefore, the contested sign as a whole will most likely be perceived as referring to ‘a global sequence of running races/competitions named SKY’. It follows that the coincidence in the initial and inherently distinctive (in relation to the services at issue) word ‘SKY’ generates an average degree of conceptual similarity between the marks.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested services are identical or similar to the services covered by earlier United Kingdom trade mark No 2 500 604.

The signs under comparison are visually, aurally and conceptually similar to an average degree on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included in the beginning of the contested sign. The signs differ in the additional terms, ‘RUNNER WORLD SERIES’, and in the stylisation and figurative components in the contested sign.

As mentioned above, where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. In addition, the slight stylisation of the verbal elements of the contested sign and the ornamental devices present in the sign (background, arrow, intersecting lines) will be perceived as ordinary graphic means of bringing the verbal elements in question to the attention of the public. Therefore, the relevant public will pay little attention to the figurative features of the contested sign.

As regards the main figurative element of the contested sign (a figure of a runner), although it cannot be denied that it is noticeable and somewhat stylised, this does not invalidate the aforementioned principle: consumers will attribute more trade mark significance to the verbal elements, as they will perceive them as the main indicator of commercial origin of the relevant services and will use them in order to refer to these services. In addition, it must be noted that the stylisation and overall graphic arrangement of this figurative element is not such as to obscure the verbal elements of the sign or otherwise detract the public’s attention from them.

Furthermore, this device serves to reinforce a meaning which, as previously explained, is non-distinctive in relation to the services in Class 41 and weak in relation to the services in Class 42, whereas the coinciding meaningful element ‘SKY’ is considered distinctive to an average degree in relation to all the relevant services.

Therefore, given the reproduction of the element ‘SKY’ in the contested sign, it is likely that even the part of the relevant public displaying a high level of attention will at least associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, in the present case, consumers may believe that the contested figurative sign, ‘SKY RUNNER WORLD SERIES’, is a new extension or a new brand line of services, provided under the opponent’s ‘SKY’ mark, considering that the sign will be applied to identical and similar services (e.g., ‘SKY’ services related to a world series of running competitions).

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element, ‘SKY’, and that, for identical and similar services, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier United Kingdom trade mark registration No 2 500 604 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Monika CISZEWSKA	Gueorgui IVANOV	Boyana NAYDENOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.