OPPOSITION DIVISION
OPPOSITION No B 2 680 141
Sky plc, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent),
represented by CMS Cameron McKenna Nabarro Olswang LLP, Cannon Place, 78
Cannon St., London EC4N 6AF, United Kingdom (professional representative)
a g a i n s t
Elbit Systems Ltd, Advanced Technology Center, P.O.Box 539, Haifa 31053, Israel
(holder), represented by Barzano’ & Zanardo Milano S.P.A., Via Borgonuovo, 10,
20121 Milano, Italy (professional representative).
On 24/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 680 141 is upheld for all the contested goods and services.
2. International registration No 1 251 995 is entirely refused protection in respect
of the European Union.
3. The holder bears the costs, fixed at EUR 650.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of international
registration designating the European Union No 1 251 995 for the word mark
‘SkyBreaker’. The opposition is based on, inter alia, United Kingdom trade mark
registration No 2 500 604 for the word mark ‘SKY’. In relation to this earlier right, the
opponent invoked Articles 8(1)(b) and 8(5) EUTMR. In addition, in relation to other
earlier rights, the opponent invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
Decision on Opposition No B 2 680 141 page: 2 of 8
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s United Kingdom trade mark registration No 2 500 604.
a) The goods and services
The goods and services on which the opposition is based are, inter alia, the
following:
Class 9: Computer software; computer programs; computer hardware, apparatus
and instruments all for transmitting, displaying, receiving, storing and searching
electronic information.
Class 41: Education services; instruction services; training services; provision of
training.
The contested goods and services are the following:
Class 9: Flight simulators containing computer-operated hardware units and
associated software, located on the ground, utilized mainly for training purposes;
avionics and tactical training hardware and software units; aircraft and helicopter
embeddable avionics and tactical virtual training hardware and software units; hybrid,
real and virtual environment avionics and tactical training hardware and software
units.
Class 41: Training, coaching, educating and flight simulation services for pilots and
aircrews; included in class 41.
Contested goods in Class 9
The contested goods consist of specialised units of software and hardware, such as
flight simulators, intended for use in tactical virtual training and virtual environment
avionics.
Therefore, the contested goods flight simulators containing computer-operated
hardware units and associated software, located on the ground, utilized mainly for
training purposes; avionics and tactical training hardware and software units; aircraft
and helicopter embeddable avionics and tactical virtual training hardware and
software units; hybrid, real and virtual environment avionics and tactical training
hardware and software units are included in, or overlap considerably with the broad
categories of the opponent’s computer software; computer programs; computer
hardware, apparatus and instruments all for transmitting, displaying, receiving,
storing and searching electronic information, as the latter may also include complex
units of hardware and software for use in the avionics and tactical training market
sector. Consequently, they are identical.
Contested services in Class 41
The contested training, coaching, educating and flight simulation services for pilots
and aircrews; included in class 41 are included in the broad categories of the
Decision on Opposition No B 2 680 141 page: 3 of 8
opponent’s education services; instruction services; training services. Therefore, they
are identical.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods and services found to be identical are directed mainly
at business customers with specific professional knowledge or expertise in the
aviation sector. The relevant public’s level of attention will tend to be higher than
average, considering the specialised nature of these goods and services.
c) The signs
SKY SkyBreaker
Earlier trade mark Contested sign
The relevant territory is the United Kingdom.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
Both signs are word marks. In the case of word marks, it is the word as such that is
protected and not its written form. Therefore, it is irrelevant whether the signs are
represented in upper or lower case characters; furthermore, for the same reasons,
they have no element(s) that could be considered clearly more dominant (visually
eye-catching) than other element(s). The earlier sign consists of the verbal element
‘SKY’ and the contested sign of the verbal element ‘SkyBreaker’.
It must be noted that the Court has held that, although the average consumer
normally perceives a mark as a whole and does not proceed to analyse its various
details, when perceiving a word sign, they will break it down into elements which, for
them, suggest a specific meaning or which resemble words known to them
(13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
The verbal element ‘SkyBreaker’, considered as such, has no clear univocal meaning
for the relevant public. Therefore, considering the aforementioned principle, it is
highly likely that the relevant English-speaking public will perceive the contested sign
as the conjunction of the meaningful elements ‘Sky’ and ‘Breaker’, because they are
words known to them.
The word ‘Breaker’ will be perceived as, inter alia, ‘a person or thing that breaks
something; a machine or plant for crushing something’ (Collins English Dictionary
online; https://www.collinsdictionary.com/dictionary/english/breaker). This term has no
Decision on Opposition No B 2 680 141 page: 4 of 8
meaning in relation to the relevant goods and services and is, therefore, normally
distinctive.
The word ‘SKY’, which forms the earlier mark and the beginning of the contested
sign, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending
upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of
divine power; heaven’ (Collins English Dictionary online;
https://www.collinsdictionary.com/dictionary/english/sky). This word is neither
descriptive nor lacking in distinctiveness for any of the relevant goods and services. It
follows that, contrary to the holder’s arguments in this regard, the inherent
distinctiveness of this term is average in relation to the relevant goods and services.
Indeed, because of its vague and unspecific nature – clearly illustrated by the
aforementioned meaning of the term – this word does not describe or even allude to
any of the essential, functional or otherwise informative characteristics of/about the
goods and services at issue.
Considering the contested sign as a whole, as mentioned above, the expression
‘SkyBreaker’ has no univocal meaning for the relevant public and is not used in
common parlance. It will be perceived as an expression with no clear meaning as a
whole (because the expression of someone or something that ‘breaks the sky’ is
vague and incomprehensible) and, therefore, as the conjunction of two words, the
semantic content of which corresponds to the simple sum of its parts, as per the
aforementioned meanings.
Therefore, the marks under comparison have no elements which could be
considered more distinctive than other elements.
Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced and plays
an independent and distinctive role at the beginning of the contested sign.
Consumers generally tend to focus on the first element of a sign when being
confronted with a trade mark. This is justified by the fact that the public reads from
left to right and from top to bottom, which makes the part placed at the beginning of
the sign (the initial part) the one that first catches the attention of the reader.
The signs differ in the additional element ‘Breaker’ contained in the contested sign.
However, as explained above, the coinciding initial element of the contested sign will
attract the public’s attention to a greater extent.
Therefore, considering that the initial and distinctive element of the contested sign,
‘SKY’, reproduces the earlier mark, the signs are considered visually similar to an
average degree.
Aurally, the initial and independent element of the contested sign, ‘SKY’, and the
earlier mark as a whole, are pronounced identically. The pronunciation differs in the
sound of the word ‘Breaker’ of the contested sign, which has no counterpart in the
earlier mark.
Overall, considering the average distinctiveness of the coinciding component ‘SKY’
and the fact that it is placed in the aurally most conspicuous part of the contested
sign – its beginning – the marks are aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive the elements ‘Sky’,
contained in both signs, and ‘Breaker’ of the contested sign, in accordance with the
meanings referred to above. As regards the contested sign as a whole, as explained
Decision on Opposition No B 2 680 141 page: 5 of 8
previously, it has no clear univocal meaning either. However, independently of the
way in which the expression ‘SkyBreaker’ is perceived and interpreted, the public will
be aware of the semantic content of the word ‘SKY’ at the beginning of the contested
sign. This word is inherently distinctive in relation to the goods and services at issue
and, therefore, this coincidence generates an average degree of conceptual similarity
between the marks.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods and services in question from the perspective of the
public in the relevant territory. Therefore, the distinctiveness of the earlier mark must
be seen as normal.
e) Global assessment, other arguments and conclusion
The contested goods and services are identical to the goods and services covered by
earlier United Kingdom trade mark No 2 500 604.
The signs under comparison are visually, aurally and conceptually similar to an
average degree, on account of the common element ‘SKY’, which constitutes the
earlier mark and is fully included, yet clearly perceptible, in the beginning of the
contested sign, ‘SkyBreaker’. The signs differ in the additional element, ‘Breaker’, of
the contested mark.
In word signs, the first part is usually the one that primarily catches the consumer’s
attention and, therefore, will be remembered more clearly than the rest of the sign.
This means that, in general, the beginning of a sign has a significant influence on the
overall impression made by the mark (15/12/2009, T-412/08, Trubion,
EU:T:2009:507, § 40; and 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).
This principle is fully applicable to the present case. 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. Therefore, this has to be taken into account when
assessing the likelihood of confusion between the marks, because it will have a
significant impact on the overall impression made by the contested sign.
It is also important to note that the coinciding meaningful element ‘SKY’ is considered
distinctive to an average degree in relation to all the relevant goods, i.e., the earlier
mark enjoys an average distinctiveness.
Decision on Opposition No B 2 680 141 page: 6 of 8
Therefore, given the reproduction of the distinctive element ‘SKY’ in the beginning of
the contested sign, it is likely that the relevant public will, at least, associate the
contested sign with the earlier mark.
Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be
registered if because of its identity with or similarity to the earlier trade mark and the
identity or similarity of the goods or services covered by the trade marks there exists
a likelihood of confusion on the part of the public in the territory in which the earlier
trade mark is protected; the likelihood of confusion includes the likelihood of
association with the earlier trade mark.
In the present case, even the highly attentive consumers in question may believe that
the contested trade mark 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 to those marketed under the ‘SKY’ brand, because it is a common market
practice for brands to identify new version or a new sub-brand through the use of
additional verbal elements in combination with the main (‘house’) brand. In other
words, even the highly attentive 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.
Account must also be taken of the principle that a likelihood of confusion implies
some interdependence among the relevant factors, and in particular a similarity
between the trade marks and between the goods or services. Accordingly, a lesser
degree of similarity between the goods or services may be offset by a greater degree
of similarity between the marks, and vice versa. In the present case, it is decisive that
the contested goods and services are all identical to the goods and services covered
by the earlier mark.
In relation to the holder’s arguments about the actual use in the market of the trade
marks in conflict for different goods and services, it should be noted that the
examination of the likelihood of confusion carried out by the Office is a prospective
examination. The particular circumstances in which the goods or services covered by
the marks are actually marketed have, as a matter of principle, no impact on the
assessment of the likelihood of confusion because they may vary in time depending
on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P,
Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73;
21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).
Therefore, when considering whether or not the EUTM application (or an IR
designating the EU) falls under any of the relative grounds for refusal, it is the
opponent’s rights and their scope of protection as registered that are relevant.
In its observations, the holder also argues that the earlier trade mark has a low
distinctive character given that there are many trade marks that include the word
‘SKY’, which is an easily recognisable English term.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of data concerning a register only, it cannot
be assumed that all such trade marks have been effectively used.
Furthermore, it must also be noted that, only under special circumstances may the
Opposition Division consider evidence of the coexistence of other marks in the
market (and possibly in the registry) on a national/European Union level as an
Decision on Opposition No B 2 680 141 page: 7 of 8
indication of ‘dilution’ of the distinctive character of the opponent’s mark which might
be contrary to an assumption of likelihood of confusion. This has to be assessed on a
case-by-case basis and such an indicative value should be treated with caution as
there may be different reasons as to why similar signs coexist, e.g. different legal or
factual situations in the past, or prior rights agreements between the parties involved.
The holder has not submitted any relevant evidence in order to demonstrate that
consumers have been exposed to widespread use of, and have become accustomed
to, trade marks that begin with the word ‘SKY’, in relation to the relevant goods and
services in Classes 9 and 41. Hence, the holder’s claim is unfounded.
Furthermore, it must be noted that although ‘SKY’ is a relatively common English
word, the holder did not demonstrate that this word has been used to such a
significant extent in relation to the relevant goods and services, that it has lost part of
its inherent distinctive capacity. Consequently, the Opposition Division sees no valid
reason to consider the inherent distinctiveness of the earlier mark to be of a less than
normal degree. Therefore, in the absence of convincing arguments and evidence
thereof, this argument of the holder must be rejected as unfounded.
Considering all the above, it is concluded that the differences between the signs are
not sufficient to counteract the similarity resulting from their coinciding initial and
independent element, ‘SKY’, and that, for identical goods and services, there is a
likelihood of confusion in the form of a likelihood of association, on the part of the
public.
Therefore, the opposition is well founded on the basis of the opponent’s United
Kingdom trade mark registration. It follows that the contested trade mark must be
rejected for all the contested goods 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.
As the earlier United Kingdom trade mark registration No 2 500 604 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods and services against which the opposition was directed, there is no need to
examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02,
Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)
(b) EUTMR, there is no need to further examine the other grounds of the opposition,
namely Article 8(4) and 8(5) EUTMR.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
Decision on Opposition No B 2 680 141 page: 8 of 8
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Liliya YORDANOVA Gueorgui IVANOV Monika CISZEWSKA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.