OPPOSITION No B 2 734 237

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

a g a i n s t

PC-Tel, Inc., 471 Brighton Drive, Bloomingdale, Illinois 60108, United States of America (applicant), represented by Haseltine Lake LLP, Redcliff Quay 120, Redcliff Street, Bristol BS1 6HU, United Kingdom (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 734 237 is upheld for all the contested goods.

2.        European Union trade mark application No 15 223 357 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 223 357. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604. In relation to this earlier right, the opponent invoked 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 interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

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

1. The goods

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

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; 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 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 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.

The contested goods are the following:

Class 9: Antennas, namely, antennas for use with tracking and time synchronization in Global Navigation Satellite Systems (GNSS).

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

Taking into consideration the aforementioned principles, the contested antennas, namely, antennas for use with tracking and time synchronization in Global Navigation Satellite Systems (GNSS) are included in the broad category of the opponent’s antennae. Therefore, they are considered identical.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical 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.

3. The signs

SKY	SKYLINK
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 ‘SKYLINK’.

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 ‘SKYLINK’, considered as such, has no clear univocal meaning for the relevant public. However, considering that this element is pronounced in two syllables (‘skái-link’) and that those syllables correspond precisely to the two conjoined words at issue, it is likely that the relevant English-speaking public will perceive the contested sign as the conjunction of the words ‘SKY’ and ‘LINK’, because they are both known to them. The word ‘LINK’ is likely to be perceived as, inter alia, ‘a relationship between two things or situations’, ‘something that allows you to communicate with another person or organisation’ and/or ‘a connection between people, places, organisations, etc.’ (Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/link).

In the context of the contested goods (antennae for tracking and time synchronization in global navigation satellite systems), this word is likely to be perceived as an allusion to the technical characteristics of the goods, e.g. that they are able to create communication channels that connect different devices, that they will enable the consumer to establish such connections and establish the desired communication/access the desired information, etc. Therefore, the word ‘LINK’ is suggestive of the functionalities of the antennae at issue and is, consequently, inherently weak in relation to those goods.

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, at http://www.collinsdictionary.com/dictionary/english/sky). This word is neither descriptive nor lacking in distinctiveness for any of the relevant goods in Class 9. It does not describe or even allude to any of their essential characteristics. It follows that the most distinctive element of the contested sign is the word ‘SKY’.

Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced as a noticeable element at the beginning of the contested sign. The signs differ in the additional element of the contested sign, ‘LINK’, which is, however, weak in relation to the relevant goods.

As mentioned above, the English-speaking public in the relevant territory is likely to perceive ‘SKY’ as an element in the contested sign. Therefore, the beginning of the contested sign coincides with the earlier mark. 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, considering the coincidence in the normally distinctive and initial element ‘SKY’, as well as the weakness of the differing component, the marks are visually highly similar.

Aurally, the contested sign will be pronounced in two syllables (‘skái-link’), corresponding to the two elements of which its verbal element is composed: ‘sky’ and ‘link’. Therefore, the first part, ‘sky’, is aurally identical to the earlier sign. The signs differ in the sound of the second element of the contested sign, ‘link’, which, as previously explained, is weak in relation to the goods. Overall, considering the above-mentioned principles and the importance of the coincidence in their initial element, it is concluded that there is a high degree of aural similarity between the marks.

Conceptually, the public in the relevant territory will perceive the word ‘SKY’ contained in both signs and the word ‘LINK’ of the contested sign, in accordance with the meanings referred to above. As regards the contested sign as a whole, as explained above, it has no clear univocal meaning, because the concept of a ‘link in the sky’ is a rather vague and unclear one. However, independently of the way in which the whole conjoined element is perceived and interpreted, the public will be aware of the semantic content of the words composing this element, ‘SKY’ and ‘LINK’, for the previously explained reasons.

Therefore, bearing in mind that the word ‘SKY’ is inherently distinctive in relation to the goods at issue, whereas the differing element ‘LINK’ is allusive and weak, this coincidence generates a high degree of conceptual similarity between the marks.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

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

The signs under comparison are visually, aurally and conceptually highly 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, ‘SKYLINK’. The signs differ in the additional element, ‘LINK’, 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 judgment of 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, whereas the differing element in the contested sign, ‘LINK’, is weak because it suggests to the consumer that the goods enable the establishment of connections between telecommunication devices.

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, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately 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 which are identical to those marketed under the ‘SKY’ brand. In other words, consumers may confuse the origins of the goods at issue by assuming that they come from the same undertaking or from economically-linked undertakings.

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

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

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

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

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

COSTS

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

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

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

The Opposition Division

Monika CISZEWSKA	Gueorgui IVANOV	Ewelina ŚLIWIŃSKA

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

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