THE BOARDS OF APPEAL
DECISION of the Second Board of Appeal of 6 June 2017
In Case R 2024/2016-2
Friedrich Lütze GmbH Bruckwiesenstr. 17-19 71384 Weinstadt-Großheppach Germany IR Holder / Appellant represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph- Str. 284, 79098 Freiburg i. Br., Germany
v
Sky plc Grant Way Isleworth, Middlesex TW7 5QD United Kingdom Opponent / Respondent represented by CMS Cameron McKenna Nabarro Olswang LLP, Cannon Place 78 Cannon St., London EC4N 6AF, United Kingdom
APPEAL relating to Opposition Proceedings No B 2 256 017 (International Registration No 1 141 417 designating the European Union)
THE SECOND BOARD OF APPEAL
composed of T. de las Heras (Chairperson), C. Govers (Rapporteur) and H. Salmi (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
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Decision
Summary of the facts
1 By an application filed on 27 December 2012, with an accepted priority date of 12 January 2012 and designating the European Union with effect from 12 July 2012, Friedrich Lütze GmbH (‘the IR holder’) sought to register its international registration of the word mark
SkyBLUE
for the following list of goods and services as amended:
Class 9 – Scientific, nautical, surveying, weighing, measuring signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; connections for electric lines; sheaths for electric cables; wire connectors (electricity); identification sheaths for electric wires; identification threads for electric wires; electricity conduits; starter cables for motors; electric cables and wires; electric cables and wires for data communication; c-track cables; electrical connectors for wires, cables and adaptors, in particular plugs, sockets and other contacts (electric connections); wiring systems, namely mounting plates, relays circuit boards, frame connectors; suppression devices, in particular suppression modules, valve suppressors, interface suppressors, motor suppressors, suppressor for Switching Gear, suppressor for valves; electronic components; semi-conductors; relays (electric); electric signal converters; electric and electronic switching devices and control systems for engineering and plant construction; data processing apparatus; electric sensors; interfaces for computers or interfaces for detectors;
Class 35 – Business management and organization consultancy; business consultancy; business management consultancy; preparation of professional business reports; research services relating to marketing; market research; organizational and other consultancy in business matters; organizing and conducting trade fairs events and exhibitions for commercial or advertising purposes; business management assistance; presentation of companies on the Internet and in other media; public relations; sales promotion services for third parties; writing and publication of advertising texts; document reproduction; advertising; organizing of information events for commercial purposes in the field of energy saving, none of the aforesaid services relating to employment, recruitment, outsourcing, outplacement, career counselling, personnel appraisal and testing, personnel management or personnel training;
Class 42 – Scientific and technological services and researches and designer services in this respect; services of engineers; industrial analysis and research services; services of engineers; preparation of technical reports, particularly in the field of electronics, electrical engineering and railway technology; technical project planning, particularly in the field of energy saving and energy efficiency; technical advice with regard to electronics, electrical engineering and railway technology; computer programming services relating to multimedia database, namely electronic storage of data, calculation models, pictures, video and audio comprehension and software, particularly in connection with electronics, electrical engineering and railway technology; consultancy in the field of energy saving; preparation of technical reports in the field of energy saving; research in the field of energy saving, energy efficiency and sustainability; development of concepts for energy saving and energy efficiency; drafting for third parties with respect to energy saving and energy efficiency, particularly in buildings, for technical installations and in railed vehicles; consulting, examining, researching, inspecting, monitoring in the field of technology, particularly environmental protection, electrical engineering and electronics, railway technology, building services engineering and safety engineering for industry; technical consultancy in the field of energy saving and energy efficiency and sustainability.
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2 The application was published on 4 January 2013.
3 On 3 October 2013, Sky plc (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amendedof the goods and services.
4 The grounds of opposition were those laid down in Article 8(1)(b), 8(4) and
Article 8(5) EUTMR.
5 The opposition was based on the following earlier rights:
– United Kingdom trade mark registration No 2 500 604, of the word mark SKY, filed on 20 October 2008 and registered on 7 September 2012 for goods and services in Classes 3, 4, 7, 9, 11, 12, 16, 17, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 40 and 41, of which the following are relevant in the present proceeding:
Class 9 – Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision) and teaching apparatus and instruments; apparatus for recording television programmes; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content; electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; televisions; LCD and plasma screens; home cinema systems; amplifiers; speakers; radios; wireless audio and/or audio visual devices; portable wireless audio and/or audio visual devices; remote controls; games controllers; wireless gaming controllers; wireless keypads; television receivers including a decoder; set-top boxes; digital set-top boxes; high definition set top boxes; personal video recorder; set-top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts; apparatus for decoding encoded signals including set top boxes for television reception; set top box apparatus including a decoder and an interactive viewing guide; set top box apparatus including a decoder and a recorder for recording television and audio programmes; set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings; satellite dishes; low noise blocks; satellite meters; computer software to enable searching of data; encoded programs for computers and for data processing and telecommunications; telephones; mobile telephones; PDAs; telephone and radio modems; television receivers including a decoder; set top boxes for use in decoding and reception of satellite, terrestrial cable and digital subscriber line (DSL), Internet or other electronic broadcasts; apparatus for decoding encoded signals; recorded television and radio programmes; recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs; video recordings; multimedia apparatus and instruments; portable or hand-held computers; DVD players; computers; computer hardware; computer hardware, apparatus and instruments all for transmitting, displaying, receiving, storing and searching electronic information; computer programs; electronic computer games; electronic interactive computer games; computer software; computer software and telecommunications apparatus to enable connection to databases and the Internet; computer software supplied from the Internet; network termination equipment; wired and/or wireless computer network routers, modems, firewalls and/or bridges; computer software and computer programs for distribution to, and for use by, viewers of a digital television channel for the viewing and purchase of goods and services; computer games software and computer quiz software; computer video games and/or quizzes adapted for use with television receivers and screens or with video monitors or with computer screens; computer programs for interactive television and for interactive games and/or quizzes; electronic apparatus adapted for use with television receivers in playing games; games consoles; interactive video game devices comprised of computer hardware and software and accessories, namely game consoles, game controllers and software for operating game controllers; portable and/or hand-held electronic devices for interactive computer and video games; portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code;
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electronic publications; computer games; computer video games; video screens; video projectors; tapes, discs and wires, all being magnetic; cassettes and cartridges, all adapted for use with the aforesaid tapes; blank and pre-recorded audio and video cassettes, tapes and cartridges; compact discs; DVD discs; phonographic records; laser readable discs for recording sound or video; ROM cartridges, CD Roms, cards and discs, integrated circuit cards, memory carriers, recording media, all pre-recorded with computer video games and/or quizzes; encoded cards; radio and television signal antennae; music, sounds, videos, images, text and information provided by a telecommunications network, by on- line delivery and by way of the Internet and/or the world-wide web or other communications network; interactive sound and/or audio recordings; music, video, sound and/or audio recordings (downloadable) provided from MP3 Internet websites; MP3 players, MP3 readers; audio and/or video file recorders and/or players; portable audio and/or video file recorders and/or players; telephone ring tones (downloadable); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus and instruments for the reception of radio and television broadcasts including the reception of cable, satellite and digital broadcasts; smart cards; credit cards; loyalty cards; acoustic apparatus or instruments; adaptors; aerials; antennae; amplifiers; amusement apparatus and instruments adapted for use with an external display screen or monitor; communication apparatus and instruments; encoded or magnetic banking or credit cards; cinematographic film; cinematographic instruments and apparatus; data carriers; apparatus for data storage; electrical telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; film reproducing instruments and apparatus; hand held electrical telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; hand held electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; interactive educational or entertainment games for use with television receivers and video apparatus; mobile telephones; motion pictures; telephone apparatus and equipment; parts and fittings for all the aforesaid goods; sunglasses, leather cases for holding mobile phones; e-sell through products, namely downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service; cases, containers, protective coverings and parts and fittings therefore, all for use with MP3 players, music storage devices, media storage devices and other consumer electronic devices; electrical, electronic and computer equipment for machinery for use in conservation, generation and efficient use of heat, light and water, including thermostatic controls, solar panels for electricity generation, photovoltaic devices, solar cells and motion detectors; electrical, electronic and computer equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; control and monitoring equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; electronic publications [downloadable), including electronic publications, magazines and newsletters regarding environmental protection, energy conservation and ecology, animal welfare and renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; apparatus and instruments for closed circuit television and surveillance systems; apparatus and instruments for personal security monitoring; apparatus and instruments for home security monitoring and control; home and personal security apparatus; home and personal security devices; home and personal security alarms; electronic protection equipment, including fire detecting and alarm equipment, intruder and burglar alarm equipment and motion detecting equipment; radio, telephonic, television and signalling apparatus and instruments, cameras, sound and video monitoring and recording and sound and video reproducing apparatus and instruments, all for control and telemetry purposes for the home and personal security; closed-circuit television systems (CCTV); monitors; cameras; optical lenses; camera casings; prepackaged cameras; videocassette recorders (VCRs); system controlling software; video monitoring apparatus; detectors; access control apparatus; readers; magnetic or encoded access control cards; monitoring apparatus; electronic panels for alarm management and
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monitoring; alarm panels; glass breakage detectors; smoke detectors; carbon monoxide detectors; digital audio recorders; digital video recorders; digital audio servers; digital video servers; electrical communication equipment; message programming equipment; radio paging equipment; electronic locking systems; life-saving apparatus and equipment; electric alarms; electronic devices for opening doors; electronic devices for protection; intruder alarms and anti-theft equipment; intruder detection apparatus; motion detecting equipment; electronic control apparatus; electronic apparatus for controlling operation of machines; remote apparatus for controlling operation of machines; computer apparatus for controlling operation of machines; electronic network equipment; electronic communication equipment; message programming devices; electronic locking apparatus; parts and fittings for all the aforesaid goods;
Class 35 – Advertising and promotional services; business management; business administration; office functions; administration services for businesses; customer relationship management, namely a marketing and public relation service; organisation, operation and supervision of sales and promotional incentive schemes; provision of product information and advice to prospective purchasers of home entertainment equipment, multi-media apparatus and instruments, television and radio equipment, audio visual equipment, set top boxes, personal video recorders, video recorders, computer games software, hardware and peripheral devices; rental of advertising space; television advertising commercials; preparation and presentation of audio visual displays for advertising purposes; dissemination of advertising matter; arranging and conducting of trade shows and exhibitions; arranging and conducting trade show exhibitions in the field of electronic, computer and video games for the computer and video game industry; advertisement and promotion of television services; compilation of business statistics and commercial information; loyalty card services; marketing studies; marketing of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; monitoring and analysis of call information (office services); business planning, inspection, survey and appraisal services; receipt, storage and provision of computerised business information data; compilation of business statistics and commercial information, all relating to television, radio, satellite broadcasting and video games; magazine and newspaper subscriptions; the bringing together, for the benefit of others of a variety of goods namely beauty products, toiletries, personal care products, cosmetics, perfumery, candles, pharmaceutical and veterinary goods, machines for household use, building, home improvement and gardening goods, home decorating equipment, paints and varnishes, hand tools, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision), teaching apparatus and instruments, amusement machines, video screens, video projectors, computer and video games, computer software, computer hardware and peripheral devices, computer games hardware and peripheral devices, portable and/or hand-held devices or computers for playing electronic, computer or video games, computer or video games software, computer software for playing video games and computer games, games software, quiz software, games consoles, interactive video games devices comprised of computer hardware and software and accessories, portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code, Portable Wireless Audio Devices, virtual reality systems, home entertainment equipment, multi-media equipment, audio visual equipment, video and television equipment, set top boxes, personal video recorders, video recorders, television receivers, satellite reception equipment, satellite dishes, MP3 players and readers, blank and pre- recorded audio and video cassettes, tapes, cartridges and discs, pre-recorded music, CDs, DVDs, records, tapes and films, cameras, telephones, mobile telephones, accessories for mobile telephones, sunglasses, spectacles, contact lenses, agricultural and horticultural goods, musical instruments, medical equipment, domestic electrical and electronic equipment including white goods, jewellery, clocks, watches, stationery, printed publications, books, newspapers, magazines, comics, journals, quiz books, shopping guides listing products for purchase, television listings magazines, printed materials, diaries, organizers, greeting cards, gift wrap, writing paper, writing sets, stickers for collecting and collating in albums, leather goods, luggage, footwear, headgear, clothing and accessories, hair accessories, lighting, kitchenware, glassware, china, porcelain, ornaments, furniture, kitchens, sanitary ware, art, paintings, posters, postcards, prints,
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photographs, household containers and utensils, crockery, cutlery, furnishings, carpets, textiles, table linen, bed linen, haberdashery, sewing machines and equipment, toys, games and playthings, playing cards, sports equipment, fitness equipment, camping equipment, pets goods, food and drink, massage apparatus, massage chairs and massage cushions, foot spas, deck chairs, aromatherapy apparatus, saunas, hammocks, yoga equipment, pilates equipment, meditation equipment, water features, sound therapy software and recordings, motor vehicles and their parts, enabling customers to conveniently view and purchase those goods including via an Internet website, an interactive television shopping channel, a digital television shopping channel, an Internet walled garden or by means of interactive television and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media; customer information and consultancy services for promotional, advertising and marketing purposes in relation to broadcast reception apparatus and instruments and parts and fittings therefor including cable, satellite and terrestrial, analogue or digital reception; advertising and promotional services in relation to lifestyle, ecological and environmental issues; management and conducting of renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels and projects in connection with other renewable energy sources; collection and processing of operational experiences in connection with renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, including compilation of statistics relating to operation and production; the bringing together for the benefit of others, via an Internet website, an interactive television shopping channel, a digital television shopping channel, an Internet walled garden or by means of interactive television and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media, of a variety of retailers and advertising services, promotional services, business management services, business advisory services, administration services for businesses, accounting services, business administration services, business inspection, survey and appraisal services, brand creation services, business consultancy services, business data analysis services, business development services, business enquiry services, business evaluation services, business information agency services, business intelligence services, business management advisory services, business merger services, business planning services, business promotion services, business relocation services, business secretarial services, business services relating to the establishment of businesses, business services relating to the provision of sponsorship for television commercials, business services relating to the provision of sponsorship for television programmes, business statistical information services, buyer to supplier matching services, career advisory services, charitable services, namely business management and administration, charitable services, namely organising and conducting volunteer programmes and community service projects, clerical services, commercial information services provided by access to a computer database, commercial management advisory services, price comparison services, computerised business information services, computerised data storage services, consumer market information services, credit card registrability services, data base services for business, data storage services, employee relocation services, employment agency services, employment bureau services, export-import agency services, franchising consultancy services, information services relating to advertising, information services relating to businesses, market assessment services, marketing advisory services, marketing agency services, market analysis studies, market forecasting, marketing information services, marketing studies, marketing, news clipping services, office equipment rental services, office management services, office services, outdoor advertising services, outdoor publicity services, press advertising services, price analysis services, product launch services, promotional services, sales promotion services, search engine marketing services, search engine optimisation services, search engine submission services, telephone marketing services [not selling], trade promotional services, incentive scheme services, product information services, analysis of business statistics, compilation of statistics, collection of commercial information, compilation of commercial information, provision of commercial information, loyalty card services, accountancy services, advertising analysis, advertisement and promotion of television services, magazine and newspaper subscription services, insurance services, information services relating to insurance, insurance advisory services, insurance arranging services, insurance brokers services, insurance claim assessments, warranty insurance services, warranties services, extended warranties for appliances, extended warranties for domestic electrical
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appliances, extended warranties for electrical appliances, financial services, advisory services relating to financial investment, advisory services relating to financial matters, advisory services relating to financial planning, financial brokerage services, card operated financial services, financial sponsorship services, computerised financial information services, computerised financial services, computerised information services relating to financial business, consultancy services relating to financial investment, consultation services relating to financial matters, economic financial research services, emergency financial services for travellers, financial evaluation services, financial advisory services, financial advisory services relating to assets management, financial appraisals services, asset management services, fund management services, financial credit services, financial data base services, financial transaction services, risk management services, provision of computerised financial information, financial information services for financial institutions provided via computer networks and satellite transmissions, financial information services for banks provided via computer networks and satellite transmissions, financial information retrieval services, financial information services, financial investigation services, financial investment advisory services, financial loan services, financial management advisory services, financial management, financial market information services, financial services for securing funds for others, banking services, advisory services relating to banking, bank account information services, bank card services, bankers clearing house services, banking services relating to travellers cheques, computerised information services relating to banking matters, home banking services, investment bank services, personal banking services, savings bank services, loan services, arrangement of loans, advisory services relating to loan services, financial loan services, instalment loan financing, credit card services, credit card advisory services, financial services relating to credit cards, insurance services relating to credit cards, issuance of credit cards, processing credit card transactions for others, debit card services, pre- payment card services, e-cash services, real estate services, advisory services relating to real estate ownership, advisory services relating to real estate valuations, agency services for the leasing of real estate property, appraisal of real estate, arranging of letting of real estate, brokerage of real estate, evaluation of real estate, financial services for the purchase of real estate, real estate brokerage services, real estate investment services, real estate management services, financial services relating to real estate property and buildings, financing services relating to real estate development, investment advisory services relating to real estate, leasing of real estate, property evaluations services, property finance services, property insurance services, property investment services, property management services, property leasing services, real estate administration services, real estate selection and acquisition services, real estate leasing, real estate licensing, information and consultancy services relating to real estate, real estate agency services, maintenance services, repair services, advisory services for maintenance, charitable services, namely repair, maintenance and installation, computer maintenance services, diagnostic maintenance services for computers, film projector repair and maintenance services, information services relating to maintenance of security systems, machinery maintenance services, maintenance and repair of communications systems, maintenance and repair of computer hardware, maintenance and repair of computers, maintenance and repair of data communications networks, maintenance and repair of data processing apparatus, maintenance and repair of electrical apparatus, maintenance and repair of electronic apparatus, maintenance and repair of electronic installations, maintenance and repair of telecommunications apparatus, maintenance and repair services in respect of electrical control apparatus, maintenance and repair of utilities in buildings, maintenance and servicing of fire alarm systems, maintenance and servicing of security alarms, office machines and equipment installation, maintenance and repair, advisory services relating to the maintenance of buildings, property maintenance services, burglar alarm installation and repair, fire alarm installation and repair, information services relating to repair or installation, provided on-line from a computer database or the Internet, consultancy services relating to the repair of buildings, locksmith services, photographic equipment repair services, repair information services, vehicle breakdown repair services, installation services, advisory services relating to the installation of environmental control systems, advisory services relating to the maintenance and repair of rainwater installations, installations of security systems, central heating installation, computer installation services, consultancy services relating to installation of computers, consultancy services relating to installation of telecommunication apparatus, double glazing installation, electrical apparatus installation, electrical installation services, information services
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relating to installation of security systems, installation closed circuit television systems, installation fire detection systems, installation lighting systems, installation of audio electrical apparatus, installation of cable television systems, installation of cellular communications systems, installation of communications network apparatus/instruments, installation of computerised information systems, installation of data processing apparatus, installation of data network apparatus, installation of office apparatus, installation of radio frequency communications systems, installation of radio telephone equipment, installation of safes, installation of stands for conferences/exhibitions/trade fairs, installation of telecommunications apparatus, kitchen equipment installation, machinery installation services, office equipment installation, office machine installation, maintenance, repair and installation services in relation to broadcast and/or telecommunications and/or communications reception apparatus and instruments, maintenance, repair and installation of telecommunications apparatus and equipment, maintenance, repair and installation of communications apparatus and equipment, maintenance, repair and installation of broadband apparatus and equipment, maintenance, repair and installation of apparatus for recording television programmes, maintenance, repair and installation of apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content, maintenance, repair and installation of electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts, maintenance and repair of televisions, LCD, plasma screens and home cinema systems, maintenance, repair and installation of amplifiers, maintenance, repair and installation of speakers, maintenance, repair and installation of radios, maintenance, repair and installation of wireless audio and/or audio visual devices, maintenance, repair and installation of portable wireless audio and/or visual devices, maintenance and repair of remote controls, maintenance and repair of games controllers and wireless gaming controllers, maintenance, repair and installation of television receivers including a decoder, maintenance, repair and installation of set-top boxes, maintenance, repair and installation of digital set-top boxes, maintenance, repair and installation of high definition set top boxes, maintenance, repair and installation of personal video recorders, maintenance, repair and installation of set-top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts, maintenance, repair and installation of apparatus for decoding encoded signals including set top boxes for television reception, maintenance, repair and installation of set top box apparatus including a decoder and an interactive viewing guide, maintenance, repair and installation of set top box apparatus including a decoder and a recorder for recording television and audio programmes, maintenance, repair and installation of set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings, maintenance, repair and installation of satellite dishes, maintenance, repair and installation of low noise blocks, maintenance, repair and installation of satellite meters, maintenance, repair and installation of telephones, maintenance and repair of PDAs, maintenance, repair and installation of telephone and radio modems, maintenance, repair and installation of set top boxes for use in decoding and reception of satellite, terrestrial cable and digital subscriber;
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;
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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;
– United Kingdom trade mark registration No 2 369 157, of the figurative
mark
, filed on 27 July 2004, registered on 30 January 2009 and duly renewed for goods and services in Classes 9, 16, 28, 35, 36, 38, 39, 41, 42, 43 and 45
– European Union trade mark (EUTM) registration No 81 784 36, of the word mark SKY, filed on 2 March 2009, registered on 22 May 2014, for goods and services in Classes 3, 4, 7, 9, 11, 12, 16, 17, 18, 25, 28, 35, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
‒ European Union trade mark (EUTM) registration No 6 870 992, of the word mark SKY, filed on 18 April 2008, registered on 8 August 2012, for goods and services in Classes 3, 4, 7, 9, 11, 12, 16, 17, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
– Non-registered mark SKY.
6 On 4 February 2016, the IR holder requested the opponent to furnish proof of its earlier rights which was rejected by the Office on 5 February 2016, as none of the earlier rights had been registered for more than five years.
7 By decision of 6 September 2016 (‘the contested decision’), the Opposition Division upheld the opposition in its entirety on the grounds that there was a likelihood of confusion. It gave, in particular, the following grounds for its decision:
– The Opposition Division based its decision on United Kingdom trade mark registration No 2 500 604, ‘SKY’. The relevant territory is the United Kingdom.
Contested goods in Class 9
– The contested scientific, nautical, surveying, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity are identically covered by the opponent’s earlier right in Class 9.
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– The contested life-saving apparatus and instruments are, albeit a slightly different wording, identical to the opponent’s life-saving apparatus and equipment.
– The contested connections for electric lines; sheaths for electric cables; wire connectors (electricity); identification sheaths for electric wires; identification threads for electric wires; electricity conduits; starter cables for motors; electric cables and wires; electric cables and wires for data communication; c-track cables; electrical connectors for wires, cables and adaptors, in particular plugs, sockets and other contacts (electric connections); wiring systems, namely mounting plates, relays circuit boards, frame connectors; suppression devices, in particular suppression modules, valve suppressors, interface suppressors, motor suppressors, suppressor for switching gear, suppressor for valves; electronic components; semi-conductors; relays (electric); electric signal converters; electric and electronic switching devices and control systems for engineering and plant construction; electric sensors are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; parts and fittings for all the aforesaid goods. Therefore, they are considered identical.
– The contested data processing apparatus include, as a broader category, the opponent’s computers. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the IR holder’s goods, they are considered identical.
– The contested interfaces for computers overlap with the opponent’s computer software. These broad categories of goods cannot be clearly separated and are, therefore, considered identical.
– The contested interfaces for detectors cannot be clearly separated from the opponent’s electrical, electronic and computer equipment for machinery for use in conservation, generation and efficient use of heat, light and water, including motion detectors. These categories of goods overlap and are, therefore, considered identical.
Contested services in Class 35
– As a preliminary remark, it must be noted that the limitation contained at the end of the specification of the contested services in this class (‘none of the aforesaid services relating to employment, recruitment, outsourcing, outplacement, career counselling, personnel appraisal and testing, personnel management or personnel training’) does not influence in any way the comparison of services made below. This is because the opponent’s broad categories of services in Class 35 (mentioned below) are not restricted in any way and, therefore, may encompass or be specifically provided in relation to not only the business fields explicitly referred in this limitation, but all business fields in general. Therefore, for reasons of clarity, and considering that it would not alter the result of the respective comparison, the aforementioned limitation will not be mentioned hereunder.
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– The contested business management; advertising are identically covered by
the opponent’s mark.
– The contested organizing and conducting trade fairs events and exhibitions for commercial or advertising purposes; organizing of information events for commercial purposes in the field of energy saving cannot be clearly separated from the opponent’s arranging and conducting of trade shows and exhibitions. These categories of services overlap and are, therefore, considered identical.
– The contested organization consultancy; business consultancy; business management consultancy; preparation of professional business reports; organizational and other consultancy in business matters; research services relating to marketing; market research; business management assistance; public relations consist of specific types of business assistance, business management, business administration and business analysis services. Therefore, they are identical to the opponent’s business management and business administration, either because they are included therein, or because they cannot be clearly separated from these broad categories of services and, consequently, overlap.
– The contested presentation of companies on the Internet and in other media; sales promotion services for third parties; writing and publication of advertising texts are included in the broad category of the opponent’s advertising and promotional services. Therefore, they are identical.
– The contested document reproduction services are included in the broad category of the opponent’s office functions. Therefore, they are identical.
Contested services in Class 42
– The contested computer programming services relating to multimedia database, namely electronic storage of data, calculation models, pictures, video and audio comprehension and software, particularly in connection with electronics, electrical engineering and railway technology are included in the broad category of the opponent’s computer programming services. Therefore, they are considered identical.
– Bearing in mind the interpretation of the term ‘particularly’ mentioned above, the contested preparation of technical reports, particularly in the field of electronics, electrical engineering and railway technology; preparation of technical reports in the field of energy saving cannot be clearly separated from the opponent’s drawing up expert reports in the field of environmental protection, energy conservation and alternative energy sources. These categories of services overlap and are, therefore, considered identical.
– The contested research in the field of energy saving, energy efficiency and sustainability cannot be clearly separated from the opponent’s research and development of durable use of nature and the environment. These categories of services overlap and are, therefore, considered identical.
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– The contested consultancy in the field of energy saving cannot be clearly separated from the opponent’s advice with regard to environmental protection, energy conservation; consultancy relation to all the aforementioned services. These categories of services overlap and are, therefore, considered identical.
– The contested development of concepts for energy saving and energy efficiency; drafting for third parties with respect to energy saving and energy efficiency, particularly in buildings, for technical installations and in railed vehicles overlap with the opponent’s providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, 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; effecting research projects concerning environmental protection, energy conservation and alternative energy sources. These services cannot be clearly separated and are, therefore, considered identical.
– The contested technical consultancy in the field of energy saving and energy efficiency and sustainability cannot be clearly separated from the opponent’s technical assistance concerning environmental protection, energy conservation and alternative energy sources; consultancy relation to all the aforementioned services. These categories of services overlap and are, therefore, considered identical.
– The contested scientific and technological services and researches and designer services in this respect; technical advice with regard to electronics, electrical engineering and railway technology; consulting, examining, researching, inspecting, monitoring in the field of technology, particularly environmental protection, electrical engineering and electronics, railway technology, building services engineering and safety engineering for industry; technical project planning, particularly in the field of energy saving and energy efficiency; services of engineers (mentioned twice) and industrial analysis and research services consist of broad categories of services, which may be applied to several technical and scientific areas. They promote the research and development of technologies and resources in the scientific, technological and/or industrial 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; 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 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
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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 in Class 42.
– These services partly coincide in their technological nature since, for instance, the opponent’s design services or design and development of computer hardware and software may be specifically applied to numerous fields of application and market sectors (such as the ones in which the contested services are rendered); in addition, the broad categories of the contested services indicate that they comprise services which may be applied in several areas, such as the scientific, technological and research services as regards environmental protection, energy conservation and alternative energy sources, ecology, etc. 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 industrial analysis and research and, based on this, the provider may design and develop computer hardware and software for customers’ needs. The services may, therefore, be provided to the same customer. Consequently, they are considered similar.
Relevant public
– The goods and 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 relevant public’s level of attention will vary from average to high, depending on the price and frequency of purchase of these goods and services.
– The conjoined expression ‘SkyBLUE’, considered as such, has no univocal meaning for the relevant public. It is likely that it is perceived as referring to a type of ‘light or pale blue colour’; this concept is normally written as two separate words (sky blue) or with the terms joined with a hyphen (sky- blue), as confirmed by the Oxford and Collins English Dictionaries online (http://www.collinsdictionary.com/dictionary/english/sky-blue and http://www.oxforddictionaries.com/es/definicion/ingles/sky-blue? q=sky+blue). In any case, the English-speaking public at issue is fully aware that the semantic content of this expression comes precisely from the two terms of which it is composed: a shade of blue as the colour of clear skies. The contested sign may also be associated with the idea of a ‘blue sky’ in general. The relevant consumers will instantly perceive the verbal element ‘SkyBLUE’ of the contested sign as being composed of the meaningful elements ‘sky’ and ‘blue’, because they are both words known to them.
– The word ‘SKY’, contained in both signs, 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
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http://www.collinsdictionary.com/dictionary/english/sky). This word is neither descriptive nor lacking distinctiveness for any of the relevant goods and services in Classes 9, 35 and 42. It does not describe or even allude to any of their essential characteristics. The same conclusion is applicable to the contested sign considered as a whole: whether perceived as referring to ‘blue skies’ or to a specific colour (a tonality of blue), the sign conveys no descriptive or even allusive information in relation to the relevant goods and services.
– The marks under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
– The contested goods and services are identical or similar to the goods and services covered by earlier United Kingdom trade mark No 2 500 604, ‘SKY’.
– The signs under comparison are visually, aurally and conceptually similar, on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included, yet clearly perceptible, in the beginning of the contested sign, ‘SkyBLUE’. The signs differ in the additional word, ‘BLUE’, of the contested mark.
– The signs are both word marks and the entire earlier mark, ‘SKY’, is contained, as a distinguishable element, in the first part of the contested sign.
– English-speaking consumers will not fail to comprehend that the reference in question derives precisely from the sum of the parts of the conjoined expression at issue, ‘SkyBLUE’ (i.e. a shade of blue as the colour of the clear sky). The presence of the initial word ‘sky’ and the sense that it gives to the expression as a whole will determine a degree of conceptual similarity between the marks, even if a low one.
– The coinciding meaningful element ‘SKY’ is considered distinctive to an average degree in relation to all the relevant goods and services, i.e. the earlier mark enjoys an average distinctiveness.
– Given the reproduction of the distinctive element ‘SKY’ in the contested sign, it is likely that the relevant public will, at least, associate the contested sign with the earlier mark.
– Consumers may legitimately believe that the contested trade mark, ‘SkyBLUE’, is a new brand line or a recent development under the opponent’s mark, considering that it will be applied to goods and services which are identical or similar to those marketed under the ‘SKY’ brand. The consumers may confuse the origins of the goods and services at issue by assuming that they come from the same undertaking or from economically- linked undertakings.
– The IR holder alleges that the opponent acted in bad faith when filing several of its earlier marks and that the opponent ‘simply wants to prolong
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artificially the grace period of use of the mark in bad faith by repetitive applications’. As a consequence, argues the IR holder, the opponent should provide proof of use in relation to this earlier trade mark. To support its arguments, the IR holder refers to two previous decisions of the Office (15/11/2011, R 1785/2008-4, Pathfinder and 13/02/2014, R 1260/2013-2, Kabelplus). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
– However, the claim of the IR holder is not the subject matter of this procedure and could only be taken into account in a cancellation procedure. The sole fact that the opponent might have repeatedly filed identical applications is irrelevant to the proceedings at hand and cannot ipso facto lead to an obligation of proof of use beyond the clear circumstances established by Article 42 EUTMR.
– In opposition proceedings, the Opposition Division shall, in principle, be restricted in its examination to the trade marks in conflict. Therefore, considering the lack of evidence of a proceeding that may affect the validity of the opponent’s earlier trade mark registration in the UK, and bearing in mind the legal interests of both parties, the Opposition Division considers that the earlier UK trade mark No 2 500 604, SKY, invoked as a basis for the opposition was duly substantiated by the opponent and should be deemed valid. A fortiori, as this earlier right was only registered on 7 September 2012, it is not yet subject to the use requirement and the IR holder’s proof of use request in relation thereto is inadmissible.
– The differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element, ‘SKY’. For identical and similar goods and services, there is a likelihood of confusion, including a likelihood of association, on the part of the public.
– 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 and 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.
– 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.
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8 On 7 November 2016, the IR holder filed an appeal against the contested decision, requesting that the decision be as amended set aside. The statement of grounds of the appeal was received on 9 January 2017.
9 In its observations in reply received on 17 March 2017, the opponent requests
that the appeal be dismissed.
Submissions and arguments of the parties
10 The arguments raised in the statement of grounds by the IR holder may be
summarised as follows:
– The contested decision emphasized the principle that a word sign will be perceived as a whole and will not be broken down into its elements. However, at the same time it concluded that the relevant consumers will perceive the contested sign as being composed by the meaningful elements ‘SKY’ and ‘BLUE’.
– In order to determine the visual impressions of the opposed marks, it is necessary to first identify and consider the individual letters of each mark. The earlier mark consists of the three-letter sequence ‘S-K-Y’, whilst the IR holder’s mark begins with the same three-letter sequence followed by the four-letter sequence ‘B-L-U-E’. The first visual difference lies in the respective length of the opposed marks. The contested mark is clearly longer which contributes to a visual dissimilarity between the signs (see 24/02/2006, B 717 316). The contested mark is more than twice as long as the earlier mark.
– The second element ‘BLUE’ of the contested mark is of a greater length than the first element ‘SKY’. The word ‘BLUE’ is visually more prominent than the first element ‘SKY’. The additional word ‘BLUE’ makes the signs at issue visually dissimilar.
– From an aural point of view, the earlier marks are pronounced as monosyllables whereas the contested mark is a word of two syllables which gives it a different overall phonetic impression, making the marks aurally dissimilar.
– The common syllable ‘SKY’ generates a rather ‘hard’ compact sound due to the two consonants ‘S-K’ following each other, whilst the uncommon second syllable ‘BLUE’ possesses an elongated bright sound due to the two vowels ‘U-E’ at the end of the IR holder’s sign.
– The aural impression created by pronunciation of the second syllable ‘BLUE’ is at least as aurally dominant as the first syllable ‘SKY’, if not more so. As the pronunciation of the contested mark will be made on the basis of the whole sign ‘SkyBLUE’, such differences result in the marks being phonetically dissimilar.
– Conceptually, the Opposition Division erred in the assumption of a ‘certain conceptual similarity’ between the marks. In decision 27/05/2003,
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B 283 665, the Office held that ‘SKYTOP’ has a different meaning than ‘SKY’, even though ‘SKYTOP’ may be interpreted as ‘up in the sky’. Just because two marks share one element does not necessarily generate conceptual similarities as the Opposition Division held.
– This applies all the more so where the colour ‘sky blue’ is only known to the public as a two-word term, either ‘sky blue’ or ‘sky-blue’, but not like the contested sign as a one-word expression. Thus, no conceptual similarities that would cause a likelihood of confusion exist between the signs at issue.
– With respect to trade marks containing the element ‘SKY’, the following decisions should be taken into consideration: 27/11/2007, R 1167/2006-1 SKY (Fig.) / SKYROCK and 30/10/2007, R 1166/2006-1, SKY/SKYROCK; where the Board held that the signs ‘SKY’ and ‘SKYROCK’ and ‘SKYZIN’ respectively, are ‘obviously different’ and, therefore, no likelihood of confusion exists (27/11/2007, R 1167/2006-1 SKY (fig.) / SKYROCK, § 28).
– In judgment 22/06/2004, T 185/02, Picaro, EU:T:2004:189, the Court has stressed that if one of the conflicting marks has a clear meaning, the two marks will be easily distinguished due to the differences. In the case at hand, both marks have a clear and different meaning. The consumer will be able to distinguish the word for heaven and the reference to a specific colour.
– Even if the goods and services are considered to be identical, there is no likelihood of confusion on the part of the public as the contested decision held. It is unlikely that the relevant public will associate the contested sign with the earlier mark.
– The Opposition Division did not deal properly with the request to furnish proof of use brought forward by the IR holder. It limited its explanations on a quotation of a Board of Appeal decision while the contested decision lacks its own justification as to why the IR holder’s argument cannot be heard.
– The IR holder requests the Board to examine the repetitive applications of the opponent in the same relevant Classes 9, 35 and 42. The opponent relies on four word trade marks of the sign ‘SKY’ and has five further identical marks which have been registered for more than five years before the publication of the challenged application:
EUTM No 126 425, SKY;
UK No 20 445 078, SKY;
UK No 232 176E, SKY;
UK No 2 386 970, SKY;
UK No 2 415 829, SKY.
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– The trade marks of the opponent constitute the same mark for the same goods and services as these marks listed above so that the request to furnish proof of use was well founded. The Opposition Division did not give any reason why this argument cannot be heard within the proceedings. Consequently, the Board is asked to review the Opposition Division’s conclusions.
– If the owner of a short sign can prove it gained distinctiveness or reputation through extensive use, the situation might be different. In the present case, the opponent does not even have an intention to use this element which is proven by the repeated application of an identical term. By simply filing the term ‘SKY’ over and over without using all of the goods and services cannot grant a right to take action against all marks beginning with the term ‘SKY’ regardless how long they are, how they are pronounced and whether the other sign has a different meaning.
– The appeal must be granted and the contested decision annulled as the
contested decision is based on incurred findings.
11 The arguments raised in reply to the appeal by the opponent may be summarised
as follows:
– The goods and services covered by the earlier rights are identical to those of the contested mark. Following the principle of interdependence, this leads to a higher likelihood of confusion, even in circumstances where the marks under comparison are not so similar; this is not the case here.
– The contested decision’s assessment is in line with the common practice of the EUIPO Guidelines concerning opposition: two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic or conceptual aspects (02/12/2009, T-434/07, Solvo, EU:T:2009:480, § 31; 13/09/2010, T-149/08, Sorvir, EU:T:2010:398, § 29; 14/0412011, T-466/08, Acno focus, EU.·T:2011:182, § 52).
– The IR holder ignores the irrefutable similarity between the marks visually, phonetically and conceptually. The IR holder downplays the importance of the ‘SKY’ element being in the foremost position which is of particular relevance given the strong and deep family of ‘SKY’ marks. The majority of the ‘SKY’ marks are in the form of ‘SKY plus a descriptive element’. This is replicated in the mark ‘SKY plus BLUE’.
– The capitalised element ‘BLUE’ is an attempt to take unfair advantage of the opponent’s goodwill and reputation by breaking down the mark into the two elements where the first is emphasised.
– The IR holder contends that the trade marks share the first element of ‘SKY’. Case-law clearly states that where marks coincide at the beginning, the likelihood of confusion is greater, as ‘consumers generally take more note of a word’s beginning than of its ending. This is further justified by the fact that the public reads from left to right, which makes the part placed at
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the left of the sign (the initial part) the one that first catches the attention of the reader’.
– When perceiving a word sign, consumers will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them. Consumers will not break the mark down into letters as argued by the IR holder, but given the IR holder’s trade mark contains two syllables, consumers will naturally the split the mark into two words ‘SKY’ + ‘BLUE’.
– Tile IR holder cites case-law which is not only extremely old, but irrelevant to the proceedings and can be distinguished from the case at hand. In decision 12/05/2010, R 347/2009-2, LUXINIA / LUX et al., however, the term ‘LUX’, the common element in the dispute, was not a term which the Spanish consumer perceived as a term with its own independent meaning. As such, a Spanish consumer would only see the trade mark as a whole, taking account of the fact that it had no meaning. ‘SKY’ + ‘BLUE’ will nevertheless be recognised and understood by an English-speaking consumer. The marks share the common element ‘SKY’, which constitutes the entire earlier mark and forms a large part of the of the contested trade mark. The IR holder cannot disregard the basic rules of finding similarity or cite case-law ten years old and distinguishable from the current proceedings.
– The opposed marks are aurally identical and English speakers will pronounce them the same way. The IR holder’s arguments that the element ‘BLUE’ is a notable syllable are unclear and without any evidence. The word ‘blue’ has a number of meanings that do not just relate to a specific colour or the notion of the sky.
– The IR holder cites decision 27/05/2003, B 283 665, SKY / SKYTOP failing to identify that the comparison of the trade marks were from a German perspective. The average consumer to be considered is the average English consumer in this case. Sky has hundreds of positive decisions from both the EUIPO and French registries and one rogue negative decision is inconsequential compared with those numbers.
– The opponent refers to its observations filed during the opposition proceedings in which it lists various decision in which the Office found that the earlier mark ‘SKY’ was similar to a later mark which comprised the element ‘SKY’
– Consumers will inevitably see the contested mark as a member of the ‘SKY’ family of marks, such as: ‘SKY SILVER’, ‘SKY MOVIES GOLD’ or ‘SKY SPORTS GOLD’ and ‘MY SKY’, ‘SKYSTRATOR’, ‘SKY ARTS’.
– In relation to 27/11/2007, R 1167/2006-1, SKY (fig.) / SKYROCK, the opponent has a commercial agreement in place with Vortex, and worked with Vortex to settle a third party dispute.
– The opponent has successfully opposed more than 170 SKY-formative applications before the Office and of these, a third included Class 9. A third
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included Class 35 and a third included Class 42. These decisions confirm that on the basis of equal treatment, the present opposition should also succeed. Further, a number of these oppositions were against conjoined marks, similar to this action. It is also notable that the opponent has successfully opposed the mark ‘REDSKY’.
– The IR holder requests proof of use of marks which are not the subject of the opposition proceedings and implies without any foundation whatsoever that the opponent does not use its ‘SKY’ mark and has not provided evidence of use of the ‘SKY’ mark in these proceedings.
– The IR holder claims that the opponent has made multiple filings for ‘SKY’
and ‘SKY’-formative marks. This is without foundation.
– The opponent is entirely free to make these filings to protect both the breadth of sub-brands the opponent offers, and also differing specifications to capture the wide and constantly evolving array of products and services offered. The Regulation does not prohibit filing later identical EUTMs. The opponent is a leading and expanding technology business and it is inevitable that as technology advances and as there is convergence of television, computing and the internet, businesses such as the opponent’s need to seek protection for new specifications.
– The clear rules on when proof of use is required cannot be circumvented because it suits the IR holder. The Office correctly rejected the request for proof of use in its correspondence dated 5 February 2016, as none of the earlier marks have been registered for more than 5 years.
– The IR holder claims that due to decision of 15/11/2011, R 1785/2008-4, Pathfinder, it may request proof of use of marks which are not the basis of this opposition. The opponent has not filed and then abandoned identical marks, but maintains earlier ‘SKY’ marks and files wider and different specifications for new ‘SKY’-formative sub-brands to protect its legitimate business interests. These specifications may change and evolve as technology changes, as the opponent’s business diversifies and as the law and interpretation of specifications changes.
– 13/12/2012, T-136/11, Pelikan, EU:T:2012:689 states that one distinguishing factor between acceptable and unacceptable re-filings is where those filings are not for identical specifications. ‘SKY’ has made refilings for different specifications. It is also quite entitled to hold national rights and parallel EUTM rights.
– If the IR holder considers that the marks of the opponent have not been put to use, it may seek to revoke those marks as any third party may. EUTM No 126 425, SKY was attacked and the opponent successfully rebuffed that attack.
– The earlier mark is not an identical refiling of a previously filed mark, the opponent has not abandoned any of its other marks. The opponent used its marks as the reputation evidence filed shows and the opponent has not offered the earlier marks for sale. Moreover, also for the relevant goods, the
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opponent has shown a legitimate interest, i.e. by protecting its current activities and meeting the constantly evolving market requirements.
– The opponent would like to rely on its earlier submissions and evidence in relation to Articles 8(4) and 8(5) as the IR holder’s mark is also objectionable under these two grounds of opposition. Detailed submissions regarding the opponent’s reputation, the distinctiveness of the ‘SKY’ mark, the misrepresentation and damage use of ‘SkyBLUE’ were filed.
– The opponent contends that the appeal should be rejected and that the
opponent should be awarded costs in these proceedings.
Reasons
12 The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and
49 CTMIR. It is, therefore, admissible.
Preliminary remark on the applicable Regulations
13 The EUTM application was filed before the entering into force (on 23 March 2016) of the new European Trade Mark Regulation (EUTMR) which was introduced by Amending Regulation (EU) No 2015/2424. Therefore, the former Community Trade Mark Regulation (EC) No 207/2009 (CTMR) is applicable to this appeal. However, for easy reference the Board will refer to ‘EUTMR’ and the new terminology introduced by the amending Regulation, bearing in mind that the material changes introduced by the latter Regulation will not apply to the case at hand.
14 On the other hand, since the new European Union Trade Mark Implementing Regulation (EUTMIR) will not enter into force until 1 October 2017, the Board will continue referring to the current Community Trade Mark Implementing Regulation (EC) No 2868/95 (CTMIR).
Preliminary remark on the request of proof of use
15 The IR holder requested proof of use of all the marks on which the opposition was based including earlier United Kingdom trade mark registration No 2 500 604, on the basis of Article 42(2) EUTMR.
16 The wording of Article 42(2) EUTMR leaves no doubt about the main condition for such a request being admissible, namely that at the date of publication of the EUTM application the earlier mark had been registered for not less than five years.
17 At the date of publication of the contested mark the earlier mark had been registered for less than five years. Therefore, the Opposition Division rejected the request for proof of use as inadmissible.
18 The IR holder argues that despite the non-compliance with this main condition, its proof of use request should have been accepted as the opponent’s earlier
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marks are just identical re-filings of previous marks, filed with the only intention to extend artificially the grace period for use of the marks. This special situation would render the provisions of Article 42(2) and (3) EUTMR applicable. It refers to the decision of the Boards of Appeal of 15/11/2011, R 1785/2008-4, PATHFINDER / MARS PATHFINDER. The applicant’s argument fails.
19 The opponent argues that the clear rules on when proof of use is required cannot be manipulated and that the reference to the ‘Pathfinder’ case is misleading. The latter refers to a situation in which an identical mark had been filed for identical goods and services and was later abandoned. The opponent has not filed and then abandoned identical marks but maintains earlier ‘SKY’ marks and files wider and different specifications for new ‘SKY’ marks to protect its legitimate business interest. In the ‘Pathfinder’ case it was established that the sole intent of the opponent was to obtain the mark on which the opposition was based to artificially prolong the grace period during which there are no actions under the law for non-use, which clearly is not the case here.
20 The ‘Pathfinder’ case concerns an exceptional situation in which the earlier mark was an identical re-filing of other marks which were filed by the opponent, that is to say identical as regards to the sign, the goods and services and the territory. These other marks were abandoned when the five-year registration period was over because they could have been revoked for non-use. Moreover, the opponent offered the earlier mark to the applicant for an amount of EUR 30 000 indicating that the mark had not been used on the relevant market. This all clearly demonstrated that the sole purpose of obtaining the mark on which the opposition was based was to artificially prolong the grace period during which there are no sanctions under the law for non-use.
21 The situation described above is obviously not the case here. The earlier mark is not an identical re-filing of a previously filed mark, the opponent has not abandoned any of its other marks, the opponent has used its marks as the evidence filed to demonstrate reputation shows and has not offered the earlier marks for sale. Moreover, also for the relevant earlier goods and services, the opponent has shown a legitimate interest, i.e. by protecting its current activities and meeting the constantly evolving market requirements.
22 The Board considers that the Opposition Division therefore correctly rejected the
proof of use request as clearly inadmissible.
Likelihood of confusion – Article 8(1)(b) EUTMR
23 Article 8(1)(b) EUTMR states, in material part, that the trade mark applied for 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.
24 The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically- linked undertakings, constitutes a likelihood of confusion on the part of the
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public, in the absence of which Article 8(1) EUTMR does not apply (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).
25 It is settled case-law that the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the visual, aural or conceptual similarities between 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. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, as said consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22-23; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Relevant public / relevant territory
26 As a preliminary point, it must be borne in mind that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products and services concerned, who is reasonably well- informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42).
27 Given that the earlier trade mark is a national UK trade mark registration, the
relevant public is the public in the United Kingdom.
28 In the present case, the contested decision took the view that the consumer’s degree of attention ranged from average to high. The Board endorses the contested decision’s finding in this respect since the goods and services considered in the present case target not only the general public, who is deemed to be reasonably well informed and reasonably observant and circumspect (25/10/2006, T-13/05, Oda, EU:T:2006:335, § 46), but also business clients with specific professional experience or knowledge.
Comparison of the goods and services
29 In assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Additional factors include the purpose of the goods and services, whether or not they can be manufactured, sold or supplied by the same undertaking or by economically-linked undertakings, and also their distribution channels and sales outlets.
30 The contested decision found the contested goods and services in Classes 9, 35 and 42 to be identical and similar to the earlier goods and services. The parties
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have not disputed this finding in the contested decision, which is endorsed by the Board, while referring to the contested decision’s reasoning in this respect.
Comparison of the marks
31 With regard to the comparison of the signs, the likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the signs, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
32 In general terms, two signs are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30 upheld by appeal by order of 28/04/2004, C-3/03 P, Matratzen, EU:C:2004:233, 12/07/2006, T-97/05, Marcorossi, EU:T:2006:203, § 39 and 22/06/2005, T-34/04, Turkish Power, EU:T:2005:248, § 43, upheld on appeal by order 01/06/2006, C-324/05 P, Turkish Power, EU:C:2006:368).
33 The signs to be compared are: 34
SKY SkyBlue
Earlier mark Contested sign
The earlier mark is a word mark, consisting of the word element ‘SKY’. As it is a
word mark composed of a single word, it does not contain a dominant element.
35 The Board recalls that the General Court has already confirmed that the term ‘sky’ refers to the ‘region of the atmosphere and outer space seen from the earth’ and further has confirmed that ‘sky’ is not a descriptive reference to goods and services in relation to telecommunications, television and the transmission of images (15/10/2014, T-262/13, Skysoft, EU:T:2014:884, § 37, 40). With respect to the remaining relevant goods and services, the Board finds that the word ‘sky’ is neither descriptive nor weakly distinctive, since it does not describe or unequivocally allude to any relevant characteristic of the goods, nor has this been argued by the IR holder.
36 For the above reasons, the Board agrees with the contested decision in that the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory and its distinctiveness must be seen as average.
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37 The contested sign is also a word mark, which consists of two word elements, namely ‘SKY’ and ‘BLUE’, put together as a single element as a conjoined expression.
38 The term ‘SKYBLUE’ will be understood by the relevant public as light blue colour or as the blue sky in general. It will also probably be divided into the units ‘SKY’ and ‘BLUE’ as an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 32-36; 25/03/2009, T-21/07, Spaline, EU:T:2009:80, § 19, 33)
39 Visually the signs coincide in the word ‘SKY’, which forms the whole of the earlier mark and the first three letters of the contested sign. In that sense it must be pointed out that consumers are generally deemed to pay more attention to the beginning of a mark than to its end (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 45). The signs then differ in the additional element present in the contested sign, which has no counterpart in the earlier mark; namely, in the element ‘BLUE, to which the common element ‘SKY’ is conjoined. The fact that the contested mark also comprises the elements ‘BLUE’ is not enough to counteract the overall visual impression of similarity created by said common element. Therefore, the Board takes the view that the fact that both marks include the term ‘SKY’, this being the sole component of the earlier trade mark and the first part of the contested mark, is sufficient to render the trade marks similar visually.
40 Aurally, the pronunciation of the signs coincides in the sound of the syllable /sky/, which is present in an identical form in both signs, being the only syllable in the earlier mark and the first syllable of the contested sign, and to that extent the marks are aurally similar. The pronunciation differs in the additional syllable /blue/ of the contested sign, which has no counterpart in the earlier sign. The first term of the contested sign is identical to the whole of the earlier sign. However, it is well established that consumers generally take more note of a mark’s beginning than of its ending, (see by analogy 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 45). The signs are, hence, phonetically similar, based on the identity of the first syllable ‘SKY’, despite their differences in length.
41 Conceptually, the earlier mark ‘SKY’ will be understood by the relevant English-speaking public as meaning ‘the region of the atmosphere and outer space seen from the earth’ and ‘heaven; heavenly power’ (Online Oxford Dictionary). As regards the contested sign, despite the fact that, as such, it has no meaning, it is highly probable that the relevant public will be able to recognise the term ‘SKY’, which is present in both signs, and the term ‘BLUE’. That is the case since, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C– 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), as argued by the IR holder, the fact remains that, when perceiving an essentially verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51 and 13/06/2012, T-342/10, Mesilette, EU:T:2012:290, § 33). The contested sign may be perceived as referring to the ‘blue sky’ or to a particular
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shade of blue, namely pale/light blue. In any case, the relevant public will perceive the term ‘sky’. The marks are conceptually similar insofar as they share the concept of ‘sky’.
42 In conclusion, and in line with the contested decision, the signs must be deemed similar on the basis that the contested sign consists almost exclusively of the earlier mark ‘SKY’, to which merely another word has been added, which is an indication that the two trade marks are similar (see by analogy 12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 28.)
Overall assessment of the likelihood of confusion
43 The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth Recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
44 Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24 and 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
45 The average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (see to this effect 11/11/1997, Sabèl EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
46 The conflicting goods and services have been found identical and similar and the signs as a whole have been deemed visually and aurally similar. Conceptually, the marks are also similar insofar as they share the concept of ‘sky’.
47 The similarity between the signs stems mainly from the fact that the element ‘SKY, which is the sole element of the earlier mark, is entirely incorporated at the beginning of the contested mark, in which it occupies, furthermore, a position which is easy to see and memorize, since it appears at the beginning. In that respect, the consumer is generally deemed to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and aurally, than the final part (07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 51, and 03/09/2010, T-472/08, 61 a nossa alegria, EU:T:2010:347, § 62 and case-law cited therein).
48 Therefore, a consumer who is aware of the earlier trade mark, when confronted with the contested mark, will naturally tend to believe that the trade marks
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correspond to an identical commercial origin, or will at least establish a link between them.
49 Bearing all the relevant factors in mind, the similarities between the signs are, taken overall, sufficient to confirm that there will be a likelihood of confusion for the relevant public, despite the fact that the relevant public may also be professional, since both signs include the same verbal element.
50 It must also be borne in mind that the public does not have the chance to make a direct comparison between the trade marks, it is concluded that although the public may perceive the differences between the signs it cannot be ruled out that they will consider the signs to be for different lines of services from the same undertaking or, at least, from linked undertakings. Therefore, there is a likelihood of confusion on the part of the relevant public, pursuant to Article 8(1)(b) EUTMR, with the earlier trade mark in respect of all the contested goods and services considered to be identical or similar to the goods and services of the earlier trade mark; thus the contested decision is upheld.
51 To support its arguments, the IR holder refers to previous decisions of the Office. The Board recalls that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the Court which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not to the Office’s practice in earlier decisions (16/07/2009, C-202/08 P and C-208/08 P, RW feuille d’erable, EU:C:2009:477, § 57; 05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 31; 03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 61; 11/05/2005, T-390/03, CM, EU:T:2005:170; 30/06/2004, T-281/02, Mehr fur Ihr Geld, EU:T:2004:198, § 35).
52 Accordingly, the Opposition Division did not err in rejecting the contested sign for the contested goods and services, since there is a likelihood of confusion between the trade mark applied for and the earlier UK trade mark registration.
53 Finally, the opposition succeeds on the basis of Article 8(1)(b) EUTMR and earlier United Kingdom trade mark registration No 2 500 604. In view of this, there is no need to examine the other grounds and earlier rights on which the opposition was based.
54 Given all the aforesaid, the Board dismisses the appeal.
Costs
55 Pursuant to Article 85(1) EUTMR, the IR holder, as the losing party, shall bear
the costs of the appeal proceedings.
56 Pursuant to Article 85(6) EUTMR and Rule 94(3), last sentence, EUTMR and the last sentence of Rule 94(3) CTMIR, the IR holder is therefore ordered to reimburse the representation costs incurred by the opponent in the appeal proceedings, which are fixed, in accordance with Rule 94(7)(d) CTMIR, at EUR 550. As regards the opposition proceedings, the contested decision ordered
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that the IR holder should bear the opponent’s costs in the opposition proceedings fixed at EUR 650. The fixing of costs set out in the contested decision is upheld.
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Order
On those grounds,
THE BOARD
hereby:
1. Dismisses the appeal;
2. Orders the IR holder to bear the costs incurred by the opponent in the appeal and the opposition proceedings, the amount of which is fixed at EUR 1 200.
Signed
T. de las Heras
Signed
C. Govers
Signed
H. Salmi
Registrar:
Signed
H.Dijkema
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