OPPOSITION No B 2 662 784

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,

3. The holder bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods of international registration

designating the European Union No 1 247 246 for the word mark ‘SkyScen’. 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.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

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 2 662 784 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.

and instruments all for transmitting, displaying, receiving, storing and searching

electronic information.

The contested goods are the following:

Class 9: Computer generated forces (CGF) software for flight simulators; tactical

virtual training hardware and software units; hybrid, real and virtual environment

avionics and tactical training hardware and software units.

The contested goods consist of specialised units of software and hardware, intended

for use in flight simulators, tactical virtual training and virtual environment avionics.

Therefore, the contested computer generated forces (CGF) software for flight

simulators; tactical virtual training software units; hybrid, real and virtual environment

transmitting, displaying, receiving, storing and searching electronic information.

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 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,

Decision on Opposition No B 2 662 784 page: 3 of 8

c) The signs

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 ‘SkyScen’.

It must be noted that the Court has held that, although the average consumer

syllables (‘skái-cin’ or ‘skái-cen’) and that those syllables correspond precisely to the

two conjoined verbal elements at issue, it is likely that the relevant English-speaking

public will perceive the contested sign as the conjunction of the meaningful elements

‘Sky’ and ‘Scen’.

The element ‘Scen’ is meaningless as such; however, in the context of the contested

goods, and taking into consideration the high attentiveness of the public, as well as

the fact that the contested goods are precisely software and hardware units for

tactical virtual training (which incorporates, essentially, military and security

scenarios), the Opposition Division considers it highly likely that the relevant public

will associate the element ‘Scen’ of the contested sign with the words ‘Scene’ (‘the

themselves in (such as, war/battle scenes, military scenarios, scenarios of security

operations related to avionics, etc.).

All these factors weigh in favour of the finding that the highly attentive consumers at

issue will establish the association between the element ‘Scen’ and the words

‘scene’/’scenario’, thus understanding clearly that the expression ‘SkyScen’ is a

conjunction of two meaningful elements. The inherent distinctiveness of this element

Decision on Opposition No B 2 662 784 page: 4 of 8

is average, as consumers will also pick up the fanciful way of establishing the

aforementioned association; in addition, this is not a standard way of abbreviation of

these concepts.

divine power; heaven’ (Collins English Dictionary and Merriam-Webster English

Dictionary online). This word is neither descriptive nor lacking in distinctiveness for

arguments in this regard, the inherent distinctiveness of this term is average in

Considering the contested sign as a whole, as mentioned above, the expression

parlance. It will be perceived as an expression with no clear meaning as a whole and,

corresponds to the simple sum of its parts, as per the aforementioned meanings and

semantic associations.

considered more distinctive than other elements.

an independent and distinctive role at the beginning of the contested sign.

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 element ‘Scen’ of the contested sign, which has no counterpart in the

earlier mark and constitutes an additional syllable.

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 ‘Scen’ of the contested sign, in accordance with the

meanings/associations referred to above. As regards the contested sign as a whole,

as explained previously, it has no clear univocal meaning either. However,

independently of the way in which the expression ‘SkyScen’ is perceived and

Decision on Opposition No B 2 662 784 page: 5 of 8

interpreted, the public will be aware of the semantic content of the word ‘SKY’ at the

beginning of the contested sign. This word is inherently distinctive in relation to the

goods at issue and, therefore, this coincidence generates an average degree of

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

the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its

distinctiveness per se. In the present case, the earlier trade mark as a whole has no

meaning for any of the goods in question from the perspective of the public in the

normal.

e) Global assessment, other arguments and conclusion

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.

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 2 662 784 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.

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

that the contested trade mark is a new brand line or a recent development under the

or from economically-linked undertakings.

some interdependence among the relevant factors, and in particular a similarity

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 are all identical to the goods 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. 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

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

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.

Decision on Opposition No B 2 662 784 page: 7 of 8

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 in

goods at issue. The holder did not demonstrate that this word has been used to such

a significant extent in relation to the relevant goods, that it has lost part of its inherent

holder must be rejected as unfounded.

not sufficient to counteract the similarity resulting from their coinciding element,

likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United

rejected for all the contested goods.

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

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.

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.

Decision on Opposition No B 2 662 784 page: 8 of 8

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.