OPPOSITION No B 2 377 573
Sky plc, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent), represented by Olswang LLP, 90 High Holborn, London WC1V 6XX, United Kingdom (professional representative)
a g a i n s t
ITT Aerospace Controls LLC, 1133 Westchester Avenue, White Plains 10604, United States of America (applicant), represented by Dreiss Patentanwälte Partg MBB, Friedrichstraße 6, 70174 Stuttgart, Germany (professional representative).
On 23/03/2017, the Opposition Division takes the following
1. Opposition No B 2 377 573 is upheld for all the contested goods.
2. European Union trade mark application No 12 537 338 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 12 537 338. 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.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 9: Computer apparatus for controlling operation of machines; system controlling software; electronic control apparatus.
The contested goods are the following:
Class 9: Aircraft passenger seat positioning and control systems, in particular comprised of a master electrical control unit with integral firmware and software, a power supply, mechanical actuators, optional massaging lumbar support units, wire harnesses, wiring, electrical connectors, and remote controls.
An interpretation of the wording of the applicant’s list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Contested goods in Class 9
The contested aircraft passenger seat positioning and control systems, in particular comprised of a master electrical control unit with integral firmware and software, a power supply, mechanical actuators, optional massaging lumbar support units, wire harnesses, wiring, electrical connectors, and remote controls consist of seat positioning and control systems used in aircrafts.
These control systems constitute complex units which incorporate both hardware and software. Therefore, they cannot be clearly separated from the broad categories of the opponent’s computer apparatus for controlling operation of machines; system controlling software and electronic control apparatus, as the latter include computer apparatus and software systems for the control of operations of machines which may be specifically adapted for use in the aviation sector. Consequently, these categories of goods overlap to a considerable extent and are, therefore, considered identical.
In relation to the applicant’s arguments about the actual use in the market of the trade marks in conflict for different goods and services, it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58). Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered that are relevant.
- 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 goods found to be identical are directed essentially at business customers with specific professional knowledge or expertise. Considering their nature and technical characteristics, the relevant public’s level of attention when purchasing those goods will tend to be higher than average or even high.
- The signs
Earlier trade mark
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 which contains the verbal elements ‘Sky Motion’, written in slightly stylised title case black letters, over two lines. A figurative element, consisting of several short lines and black dots, is represented immediately after the final letter ‘n’ of the word ‘Motion’.
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 online, at http://www.collinsdictionary.com/dictionary/english/sky). This word is neither descriptive nor lacking distinctiveness for any of the relevant goods in Class 9, as it does not describe or allude to any of their essential characteristics.
The word ‘Motion’ of the contested sign will be perceived as, inter alia, ‘the activity or process of continually changing position or moving from one place to another; an action or movement’ (Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/motion). Considering that the relevant goods are aircraft passenger seat positioning and control systems, this term’s inherent distinctiveness is lower than average, as it may be understood as an allusion to the characteristics of the goods (e.g., systems that allow the passenger to adjust/move the position of the seat in an aircraft).
Considering the contested sign as a whole, the expression ‘Sky Motion’ has no univocal meaning for the relevant public and is not used in common parlance. It may refer to, inter alia, a ‘motion in the sky’; however, it may also be perceived as an expression with no clear meaning as a whole. In any case, it is clear that the relevant English-speaking consumers will instantly recognise and perceive the words ‘Sky’ and ‘Motion’ of the contested sign according to their aforementioned meanings, because they are both words known to them.
The figurative element of the contested sign, portrayed following the final letter ‘n’, conveys no clear concept and is likely to be perceived as an element which performs an essentially ornamental role within the sign, thus bringing the verbal elements of the mark to the attention of the public.
Therefore, for the aforementioned reasons, the public will attribute more trade mark significance to the initial word ‘Sky’ and this is the most distinctive element of the contested sign.
The marks under comparison have no elements which could be considered more dominant (visually eye-catching) than other elements.
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 in the overall stylisation and figurative component of the contested sign and in the additional word ‘Motion’ contained therein. However, as explained above, the element ‘Motion’ is weaker than average, whereas the figurative component of the sign will not be paid significant attention by the public.
Indeed, 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).
Therefore, considering that the most 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 is also the most distinctive element of the mark, and the earlier mark as a whole, are pronounced identically. The pronunciation differs in the sound of the element ‘Motion’ of the contested sign, which has no counterpart in the earlier mark.
Overall, considering the weaker than average distinctiveness of the differing component ‘Motion’ and the fact that the aurally most conspicuous part of the contested sign – its beginning ‘Sky’ – reproduces identically the earlier mark, the marks are aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive the words ‘Sky’, contained in both signs, and ‘Motion’ of the contested sign, in accordance with the meanings referred to above. The figurative element of the contested sign conveys no meaning. As regards the contested sign as a whole, as explained above, it has no clear univocal meaning either. However, independently of the way in which the expression ‘Sky Motion’ is perceived and interpreted, the public will be aware of the semantic content of the word ‘Sky’ at the beginning of the contested sign. This word is inherently distinctive in relation to the goods at issue and, therefore, this coincidence 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.
- 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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The contested goods are identical to the goods 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 term, ‘Motion’, and in the stylisation and figurative component 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 device which follows the final letter of the sign will be perceived as ordinary graphic means of bringing the elements in question, ‘Sky Motion’, to the attention of the public. Therefore, the relevant public will pay little attention to the figurative features of the contested sign.
It should also be noted that the coinciding meaningful element ‘SKY’ is considered distinctive to an average degree in relation to all the relevant goods, whereas the differing element ‘Motion’ is of weaker than average distinctiveness.
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 sign, ‘Sky Motion’, is a new extension or a new brand line of goods, provided under the opponent’s ‘SKY’ mark, considering that the sign will be applied to identical goods.
Account must also be taken of the principle that a likelihood of confusion implies some interdependence among the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, the contested goods are all identical to the goods covered by the earlier mark.
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 goods, 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 goods.
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 goods 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.
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
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.