2NDSKY | Decision 0013028 | Trademarkers LLC

2NDSKY | Decision 0013028

Date Published: Oct 2, 2017

CANCELLATION No 13 028 C (INVALIDITY)

Sky plc, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (applicant), represented by Olswang LLP, 90 High Holborn, London WC1V 6XX, United Kingdom (professional representative)

a g a i n s t

2NDSKY Solar Development S.A.R.L., 320, Chemin des Falaises, 64210 Guethary, France (EUTM proprietor), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative).

On 01/03/2017, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 9 185 026 is declared invalid for some of the contested goods and services, namely:

Class 6: Goods of common metal, included in class 06; non-electric cables and wires of common metal; connectors (non-electric), included in class 6, and fastening material of metal for fastening photovoltaic systems.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; solar energy collectors for electricity generation; solar modules for electricity generation; solar batteries; apparatus for converting solar radiation into electrical energy, namely photovoltaic solar modules; solar cell installations for solar electric systems; solar cells; solar panels; electrical controllers and converters; photovoltaic cells and modules; photovoltaic systems consisting of solar cells and electric connections as well as electric instruments for regulating and/or modifying the electrical output; electrical connecting parts; data-processing equipment and computers; electrical sensors.

Class 11: Solar collectors (heating); solar modules for heat generation; solar furnaces; lighting apparatus; street lamps; LED (light emitting diode) lighting apparatus; LED (light emitting diode) street lamps; vehicle lightings namely, headlights, fog lights, taillights, and brake lights for vehicles; apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 35: Arranging of contracts with electricity suppliers; providing business information and consultancy for consumers (consumer consultancy); business consultancy and advisory services; organisational consultancy; organization of fairs and exhibitions for commercial or advertising purposes; arranging of contracts, for others, for the providing of services.

Class 37: Building construction; repair; installation services; installation and repair of rails, installation and repair of electric appliances, ovens, heating apparatus, air conditioning installations, machines; installation, maintenance and repair of solar energy equipment.

Class 39: Conducting and transporting of electrical energy, heating, gas or water; supplying consumers with electricity, heating, gas and water; distribution of energy.

Class 40: Generation of energy; treatment of materials; generating heat, generating electricity; rental of generators; rental of air conditioning apparatus; rental of room heaters.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research; design and development of computer hardware and software; consultancy relating to the conservation of energy; technical testing; scientific experiments; technical research; conducting of technical real examinations, quality testing; environmental assessment services.

3. The European Union trade mark No 9 185 026 remains registered for all the remaining goods, namely:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 9 185 026. The application is based on, inter alia, United Kingdom trade mark registration No 2 500 604. The grounds of the application are those laid down in Article 53(1)(a) and (c) EUTMR, in connection with Article 8(1)(b), Article 8(2)(c) in conjunction with Article 8(1)(b), Article 8(4) and Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the contested EUTM and the earlier registered trade mark because of the visual, aural and conceptual similarity between the signs and because the goods and services covered by the marks are identical and similar. The term ‘SKY’ contained in the signs is distinctive and is fully reproduced in the contested sign, where it will be clearly identified as a separate element. There is a likelihood of confusion and the contested trade mark should be rejected for all the goods and services.

The applicant also argues that the contested sign should be declared invalid pursuant to the UK law of passing off, as this law and the proprietorship of the mark ‘SKY’ in the United Kingdom confer to the applicant the right to prohibit the use of the contested sign (Article 53(1)(c) and Article 8(4) EUTMR). Further or alternatively, the applicant argues that the EUTM should be refused because it would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks (Article 53(1)(a) and Article 8(5) EUTMR). Finally, the applicant argues that EUTM No 9 185 026 should be declared invalid pursuant to Article 53(1)(a) and Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR, due to its similarity to the applicant’s well-known mark ‘SKY’.

The EUTM proprietor did not file arguments in reply.

PRELIMINARY REMARKS – EARLIER WELL-KNOWN MARK – ARTICLE 53(1)(a) EUTMR and ARTICLE 8(2)(c) IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

The Office’s Guidelines Concerning Opposition, Part C.1, page 41, mentions that ‘if the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will in general be taken as a claim that his registered mark has acquired a high degree of distinctiveness by use’.

In the present case, the application is based on, inter alia, United Kingdom trade mark registration No 2 500 604 for the word mark ‘SKY’. In addition, the applicant has also claimed the same mark in the same country as a well-known mark for goods and services which are entirely included in the specification of the aforementioned UK registered trade mark. Therefore, the Cancellation Division considers that the application is not based on any well-known mark different from the registered trade mark No 2 500 604 and that what is actually claimed is that the registered mark in question has acquired a high degree of distinctiveness by use.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s United Kingdom trade mark registration No 2 500 604.

The goods and services

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The goods and services on which the application is based are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; cleaning, bleaching and abrasive preparations and substances, all for laundry use; anti-perspirants; perfumes; non-medicated toilet preparations; cosmetic preparations; dentifrices; toilet articles; hair preparations; shampoos, soaps; essential oils; including all the aforesaid made from unbleached and/or organic and/or biodegradeable ingredients.

Class 4: Industrial oils and greases; lubricants; fuels (including motor spirit) and illuminants; fuel additives and preparations for enhancing combustion of fuels.

Class 7: Machine tools; motors and engines (except for land vehicles); turbines for power generation; control panels for turbines for power generation; turbines; parts and fittings for all the aforesaid goods.

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 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 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 11: Apparatus for controlling temperature; apparatus for controlling water supply; all the aforesaid include being controlled by remote or computer apparatus and instruments; apparatus for energy efficient heating and water supply purposes, in particular, apparatus for water conservation and use minimization, automated control apparatus for local management of heating and water supplies; parts and fittings for all the aforesaid goods.

Class 12: Vehicles; apparatus for locomotion by land, air or water; vehicles adapted for use with renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; parts and fittings for all the aforesaid goods.

Class 16: Printed matter; publications, newspapers, magazines (periodicals), comics, journals (publications) and books; excluding publications distributed in-flight to airline travellers in connection with airline services and not being predominantly a television or cinema listings magazine; publications including strategy guides, user manuals, books and magazines all in the field of computer games, science fiction, games and entertainment; quiz books; shopping guides listing products for purchase; promotional literature relating to the promotion of goods for sale via digital television, the Internet or other telecommunication channels; photographs; instructional and teaching materials (other than apparatus); posters; postcards and greeting cards; calendars; diaries; cards and stickers for collecting and collating in albums; writing requisites; rulers; erasers; writing paper; writing sets; catalogues; vouchers, all for holidays and for travel to and from the destination; adhesive stickers; advertising material; advertisements; bags; credit cards; instructional manuals; newsletters; pens; pencils; writing instruments; pen and pencil holders; programme guides; user guides or manuals; paper, cardboard and goods made from these materials; printed matter; bookbinding material; photographs; adhesives for stationery or household purposes; artists' materials; plastic materials for packaging; publications; magazines; including all the aforesaid made from recycled and/or unbleached materials and/or from organic matter.

Class 17: Insulation materials, in particular, for the conservation of heat within residential and commercial buildings.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (leatherwear) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrella covers, and wallets.

Class 25: Clothing, footwear, headgear; underclothing; clothing for men, women, children and infants, jeans, slacks, trousers, skirts, shorts, wraps, jerseys, sweaters, waistcoats, dresses, jumpers, sleepwear, robes, warm-up suits, rainwear, sweaters, scarves, hats, caps, mittens, snow suits, belts, smocks, swimwear, playsuits, bibs, stockings, socks, waterproof clothing, underwear; footwear for men, women, children, and infants shoes, sneakers, sandals, slippers, boots; headgear for men, women, children, and infants hats, headbands, earmuffs, caps, sweaters, dress shirts, blouses; jackets, ties, suits, bathing suits, belts, skirts, dresses, coats, hats, caps, tuxedos, pants, vests, hosiery, scarves, pyjamas, underwear, kilts, mufflers, shawls; footwear, shoes, boots, slippers, and athletic shoes; blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear.

Class 28: Toys, games and playthings; electronic games; hand-held devices for playing electronic, computer or video games; video games apparatus; parts and fittings for all the aforesaid goods; playing cards; card games, sporting articles; games involving gambling; amusement machines; amusement apparatus and instruments; interactive educational or entertainment games.

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, 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 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 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 36: Insurance; provision of insurance; insurance consultancy; provision of warranties, extended warranties and associated assistance; provision of warranties, extended warranties and associated assistance in relation to broadcast and/or telecommunications and/or communications reception apparatus and instruments and parts and fittings therefor including cable, satellite, terrestrial, analogue or digital reception equipment; financial services; financial management; financial affairs; financial sponsorship; financial and banking services; financial information; financial services provided via the Internet; monetary affairs; asset and fund management; financial, credit, debit, pre-payment, e-cash, cash management, loan and finance services; financial services relating to betting, gaming, gambling, lotteries or book-making; credit services; credit card services; provision of financial information relating to betting, gaming, gambling, lotteries or book-making services; real estate; real estate services; real estate affairs; real estate investment; real estate brokerage services; real estate agency services; real estate financing; real estate management; real estate administration; real estate leasing and licensing; real estate appraisals and valuations; real estate acquisition and sales; information, advice and consultancy services relating to real estate; information relating to the aforesaid services provided on-line from a computer database or via the Internet; information, advice and assistance relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

Class 37: Maintenance services; repair services; installation services; maintenance, repair and installation services in relation to broadcast and/or telecommunications and/or communications reception apparatus and instruments and parts and fittings therefor including cable, satellite, terrestrial, analogue or digital reception equipment; maintenance, repair and installation of telecommunications and/or communications and/or broadcasting apparatus and equipment including 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; maintenance and repair of LCD and plasma screens; maintenance, repair and installation of 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 audio visual devices; maintenance and repair of remote controls; maintenance and repair of games controllers; maintenance and repair of wireless gaming controllers; maintenance and repair of wireless keypads; 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 line (DSL), Internet or other electronic broadcasts; maintenance, repair and installation of apparatus for decoding encoded signals; maintenance and repair of recorded television and radio programmes; maintenance and repair of recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs; maintenance and repair of video recordings; maintenance, repair and installation of multimedia apparatus and instruments; maintenance and repair of portable or hand-held computers; maintenance, repair and installations of computers; maintenance, repair and installation of computer hardware; maintenance, repair and installation of computer hardware, apparatus and instruments all for transmitting, displaying, receiving, storing and searching electronic information; maintenance and repair of electronic computer games [hardware]; maintenance and repair of electronic interactive computer games [hardware]; maintenance, repair and installation of telecommunications apparatus to enable connection to databases and the Internet; maintenance, repair and installation of network termination equipment; maintenance, repair and installation of wired and/or wireless computer network routers, modems, firewalls and/or bridges; maintenance and repair of computer video games and/or quizzes adapted for use with television receivers and screens or with video monitors or with computer screens; maintenance, repair and installation of electronic apparatus adapted for use with television receivers in playing games; maintenance and repair of games consoles; maintenance and repair of interactive video game devices comprised of computer hardware and accessories, namely game consoles and game controllers; maintenance and repair of portable and/or hand-held electronic devices for interactive computer and video games; maintenance and repair of portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code; maintenance, repair and installation of amusement machines; maintenance and repair of video screens; maintenance, repair and installation of video projectors; maintenance and repair of radio and television signal antennae; maintenance and repair of MP3 players and MP3 readers; maintenance and repair of audio and/or video file recorders and/or players; maintenance and repair of portable audio and/or video file recorders and/or players; maintenance, repair and installation of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; maintenance, repair and installation of apparatus and instruments for the reception of radio and television broadcasts including the reception of cable, satellite and digital broadcasts; installation, inspection, maintenance and emergency call services for home and personal monitoring and control and security management; installation, inspection, demonstration, repair and maintenance of apparatus for electronic home and personal security systems; installation, inspection, demonstration, maintenance and repair of apparatus and instruments for controlling and rescue, of automatic discharge systems for fire protection, of electronic protection equipment, of fire alarm and detection equipment, of alarm central stations, of monitoring central stations, equipment for monitoring anti-theft and break-in alarm equipment, motion sensing equipment, electronic network equipment, electronic communication equipment, message programming equipment, electronic locking systems; service call services for building management (upkeep and maintenance services); construction, installation, maintenance and repair of power plants, turbines, thermostatic controls, solar panels for electricity generation, photovoltaic devices, solar cells and motion detectors and other machinery for use in connection with generating and processing renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; maintenance, repair and installation of parts and fittings for all the aforesaid goods; information and advisory services relating to maintenance repair and installation, provided on-line from a computer database or the Internet; 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.

Class 38: Telecommunications services; mobile and fixed telecommunications services; communications services; satellite, cellular and radio communication services; television and radio broadcasting; transmission and communication services; broadcasting and/or transmission of radio and/or television programmes and/or films; satellite, DTT, cable, DSL and broadband broadcasting and/or transmission of audio and/or audio visual programming; transmission of audio, video and/or audio visual programming (by any means); transmission of video films; broadcasting and transmission of television programmes and films to personal computers; broadcasting and communications by means of or aided by computer; transmission of audio, video and/or audio visual programming by Internet protocol (IPTV); telecommunications services over the Internet including but not limited to services provided using voice over Internet protocol (VOIP); provision of access and/or connectivity to broadband networks whether fixed, portable or wireless; transmission of text, messages, sound and/or pictures; telecommunication and/or communication and/or broadcast and/or transmission of audio visual content; communication of information (including web pages), data by radio, telecommunications and by satellite; telephone, mobile telephone, message collection and transmission, radio-paging, call diversion, answerphone and directory enquiry services; personal numbering services; teletext services; loan of replacement telecommunications and communications apparatus and instruments in case of breakdown, loss or theft; computer aided transmission of messages and images; messaging services namely, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; instant messaging; short message services (SMS); multimedia messaging services (MMS); unified messaging services; voicemail services; provision of telephone ring tones; video conferencing services; video telephone services; providing access to telecommunications infrastructures for other operators; provision of access to electronic conferencing, discussion groups and chat rooms; provision of chat rooms; hire, leasing or rental of apparatus, instruments, installations or components for use in the provision of the aforementioned services; advisory, information and consultancy services relating to all the aforementioned; communications services by satellite, television and/or radio; news agency services; provision of access to news, current affairs and sports information; hiring, rental and leasing of communications apparatus; electronic mail services; telecommunication services relating to the Internet; telecommunication of information (including web pages); provision of location based services for telecommunications and communications apparatus and instruments; provision of wireless application protocol services including those utilising a secure communications channel; provision of information relating to or identifying telecommunications and communications apparatus and instruments; provision of telecommunications links to computer databases and websites on the Internet; telecommunications services dedicated to retailing goods and services through interactive communications with customers; interactive television services being telecommunications and/or communications and/or broadcasting and/or transmission services; interactive services for television viewers including those watching on mobile telephones and PCs being telecommunications and/or communications and/or broadcasting and/or transmission services; television broadcasting services incorporating interactive services for viewing guides and intelligent automated selection for programme recordal; interactive services for television viewers facilitating the recordal of programmes automatically initiated on the basis of customer viewing habits/preferences being telecommunications and/or communications and/or broadcasting and/or transmission services; providing interactive television viewers (including those watching on their mobile telephones or PCs) with access to information, data, graphics, audio and/or audio-visual content from a restricted group of Internet websites or portals; broadcasting and transmission of interactive television, interactive games, interactive news, interactive sport, interactive entertainment and interactive competitions; video on demand and near on demand telecommunication and/or communication and/or broadcast and/or transmission services; streaming delivery of video on demand streams to viewers; providing access to movies, videos and television programmes to viewers on demand and near on demand; professional consultancy services relating to broadcasting; providing access to a database storing information relating to a variety of goods and services; enabling access to the Internet; provision of a connection between websites and television viewers via an interactive television portal; internet portal services; web portal services; provision of broadband services; interactive television portal services providing access to Internet websites for television viewers via their television receiving equipment including digital television receiving equipment; providing access to Internet websites to mobile telephone users; professional consultancy and information and advisory services relating to all the aforesaid services; leasing access time to an information database; telecommunications information; factual information services relating to television broadcasting; audio visual communication services; data communication services; data broadcasting services; delivery of messages; telecommunication and/or communication and/or broadcast and/or transmission of radio programmes, television programmes, films and motion pictures; telecommunication and/or communication and/or broadcast and/or transmission of audio and/or visual material and material from pre-recorded video tapes: transmission 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; rental, leasing or hire of communications equipment; message sending; telephonic or telephone communications services; wireless communication services; e-sell through services, namely delivery by telecommunication of 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; organisation of call information; call screening services; call alerting services; computer services for accessing a communications or computer network; computer services for accessing entertainment, education, information and data via telephone, line, cable, wire or fibre, database or computer network; computer services for accessing and retrieving information, messages, text, sound, images and data via a computer or computer network; computer services for accessing and retrieving radio and television programmes; consultancy, advising or providing information in relation to the foregoing; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

Class 39: Travel agency services; booking agency services; arranging, booking and reserving holidays, travel and tours by land, sea and air; information and advisory services relating to the aforesaid services; the packaging, storing and dispatch of goods; travel services; travel ticket reservation services; transport and storage; transport of persons and goods, in particular by road, rail, sea and air; porterage; transport of money and valuables; travel organization, booking and arrangement, excursions and cruises; arrangement of transport services; organization, booking and arrangement of excursions, day trips and sightseeing tours; travel advice and escorting of travellers; leasing, booking and provision of aircraft; leasing, booking and provision of ships, in particular rowing and motor boats, sailing vessels and canoes; leasing, booking and providing of motor vehicles and bicycles, horses and diving equipment; packaging and storage of goods; parcel delivery; organization of trips, sightseeing tours, holiday camps and holidays; services and operation of a travel agency (included in this class), in particular consultancy and booking services for travel, provision of travel information, arrangement of transport services and travel; online information, reservation and booking services in the tourism and business travel sector (online travel agencies); transport services, including the provision of energy efficient transport services including car sharing, cycling, public transportation and mass transit transport systems; distribution of electricity; consultancy, information and advisory services relating to the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

Class 40: Generating electricity; production of electricity; consultancy, information and advisory services relating to the aforesaid.

Class 41: Education and entertainment services; provision of training; provision of audio visual content relating to entertainment, education, training, sport and culture; education and entertainment services by means of radio, television, telephony, the Internet and on-line databases; hiring, rental and leasing of cine-films, videos, DVDs, sound recordings, sound recording apparatus, sports apparatus, television sets and video recorders, DVD recorders and radio recorders; production of films for television and cinema; providing on-line electronic publications (not downloadable); publication of magazines, books, texts and printed matter; publication of electronic books or journals on-line; provision of electronic publications; provision of recording studio facilities; live show production services; organising of sporting activities and competitions; box office services; production and presentation of programmes transmitted by television, the Internet or other telecommunication channels for the conduct of the interactive viewing, selection and purchase of goods; ticket reservation services relating to entertainment; production presentation and distribution of radio and television programmes, interactive television, interactive games, interactive entertainment and interactive competitions; production presentation and provision of competitions, contests, games, quizzes, studio entertainment and audience participation events; interactive television programme selection services for viewers; provision of interactive entertainment, news, cultural activities and sport for television viewers; interactive entertainment, educational, sporting and cultural services for television viewers; viewing guide services; viewing guide services facilitating the recordal and fixed term rental of programmes and movies; television programme recording services automatically initiated on the basis of customer viewing habits/preferences; video on demand and near video on demand entertainment, educational, sporting and cultural services; providing movies, videos and television programmes to viewers on demand and near video on demand; sporting and cultural activities; betting, gaming and gambling services; credit betting, gaming, gambling, lottery or bookmaking services; credit card betting, gaming, gambling, lottery or bookmaking services; organising and conducting lotteries; electronic betting, gaming, gambling, lottery or bookmaking services provided by means of the Internet, or via a global computer network, or on-line from a computer network database, or via telephony including to mobile telephones, or via a television channel including a television channel distributed by satellite, terrestrial or cable television broadcast; arranging and conducting competitions for video game players and computer game players; pay to play games services; peer to peer interactive games and gaming services; interactive poker games and gaming including single and multi player gaming formats; presentation and production of poker competitions, tournaments, games and gaming; electronic publishing services; video taping and filming services; information and advisory services relating to the aforesaid services; provision of news, current affairs and sports information; news, current affairs and educational information services; information and advisory services relating to television and radio programmes, to education, recreation, entertainment, music and to sport; information and advisory services relating to television and radio programmes, to education, recreation, entertainment, music and to sport, provided on-line from a computer database or the Internet or to mobile telephones; factual information services relating to television and radio programmes, news and sport; instruction services; training services; leisure services; advisory services relating to entertainment; arranging conferences, seminars, symposiums or workshops; arranging exhibitions or festivals; booking agency services; cinema services; cinema studio services; distribution 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; production 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; editing 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; hire, leasing or rental 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; exhibition 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 for entertainment, educational, sporting or cultural purposes; amusement park services with a theme of films, radio or television productions; organisation and management of amusement parks and theme parks; organisation of entertainment; preparation of radio programmes, television programmes, films, pre-recorded video tapes, DVDs, audio and/or visual material, pre-recorded video cassettes, pre-recorded video discs or motion pictures for distribution for transmission or broadcast by any means; provision of radio programmes, television programmes, films, audio and/or visual material or motion pictures online (not downloadable); publication of printed media and recordings; digital imaging services; dubbing; video tape editing; entertainment; film production; rental of motion pictures; movie studios; providing movie theatres facilities; production of shows; video film tape production; rental of audio equipment; rental of lighting apparatus for theatrical sets or television studios; rental of motion pictures; rental of movie projectors and accessories; rental of radio equipment; rental of televisions and television equipment; rental of sports equipment; rental of video cameras; rental of video tapes; rental of video recorders; theatre productions; movie studio services; organising or hosting awards ceremonies; presentation of films; production of special effects for films; reservation services (included in this class) for sporting, scientific, political and cultural events; production of artwork for animated films; recording studio services; provision of video and audio content by sale and rental, whereby the consumer is entitled to single or multiple viewings of the media content via any form of playback device, all relating to entertainment, education, sports and culture; education and providing of training in connection with environmental protection, energy conservation and ecology and animal welfare; education and providing of training in connection with alternative energy sources, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; publication of instructional material and promotional material relating to environmental protection, energy conservation and ecology and animal welfare; arranging and conducting of seminars and workshops (training); establishing training programmes and training manuals; organising and conducting safety courses and educational courses; consultancy, information and advisory services relating to all the aforesaid services; advising or providing information in relation to the foregoing; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

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; 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.

Class 43: Services for providing food and drink; arranging, booking and reservation of accommodation; temporary accommodation services; restaurant services; bar services; cafeteria and snack bar services; hotel services, hotel reservations services; restaurant information services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

Class 44: Hygienic and beauty care for human beings or animals; including all the aforesaid using unbleached and/or organic and/or biodegradeable ingredients; agriculture, horticulture and forestry services; including all the aforesaid using organic resources and/or methods for sustainable development; consultancy, information and advisory services relating to all the aforesaid services.

Class 45: Licensing 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; advisory services relating to intellectual property or industrial property licensing or protection; computer software licensing; exploitation of copyright protected material; exploitation of rights of radio programmes, television programmes, films, pre-recorded video tapes, pre-recorded video cassettes, pre-recorded video discs or motion pictures; exploitation of transmission rights; exploitation of intellectual property or industrial property rights; issue of licensing rights; licensing services; management of intellectual property or industrial property rights; services for the exploitation of rights in radio programmes, television programmes, films, pre-recorded video tapes, pre-recorded video cassettes, pre-recorded video discs or motion pictures; services for the exploitation of intellectual property or industrial property rights; exploitation of printed matter (copyright); provision of horoscopes; lobbying for political purposes, including political pressure concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare; security services for the protection of property and individuals; provision of home and personal monitoring and security alarm services; anti-theft and break-in alarm services; fire alarm and protection services; security assessment relating to the security of persons and domestic properties; computerised security services for persons and domestic properties; monitoring of personal security systems and security control apparatus; advisory services relating to security; rental of security apparatus; rental of security surveillance apparatus; electrical protection services for central offices; services for monitoring discharge systems and waterflow alarms; security and fire system monitoring services; site monitoring with regard to fire and security; security services with regard to protection against fires and break-ins; information and advisory services relating thereto; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

The contested goods and services are the following:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; goods of common metal, included in class 06; non-electric cables and wires of common metal; connectors (non-electric), included in class 6, and fastening material of metal for fastening photovoltaic systems.

Class 39: Conducting and transporting of electrical energy, heating, gas or water; supplying consumers with electricity, heating, gas and water; distribution of energy.

Class 40: Generation of energy; treatment of materials; generating heat, generating electricity; rental of generators; rental of air conditioning apparatus; rental of room heaters.

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

The terms ‘in particular’ and ‘including’, used in the applicant’s lists of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples.

However, the term ‘namely’, used in the proprietor’s and in the applicant’s lists of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Contested goods in Class 6

The contested connectors (non-electric), included in class 6, and fastening material of metal for fastening photovoltaic systems have relevant connections with the applicant’s electrical, electronic and computer equipment for machinery for use in conservation, generation and efficient use of heat, light and water, including photovoltaic devices in Class 9, as the former are fastening materials specifically adapted to photovoltaic systems and connectors which may be used in relation to such systems. Consequently, the goods under comparison will target the same users, through the same distribution channels. In addition, they may originate from the same undertakings and be complementary. Therefore, they are considered similar.

The contested goods of common metal, included in class 06; non-electric cables and wires of common metal are similar to the applicant’s wires, all being magnetic. The contested goods are finished metal products, such as cables and wires; as regards the broad category goods of common metal, included in class 06, it logically includes such finished metal products, inter alia, cables and wires. Therefore, these goods and the applicant’s wires in Class 9 share a similar nature and they may also coincide in purpose. Furthermore, they are normally distributed through the same channels, target the same public and may originate from the same undertakings.

The contested common metals and their alloys; metal building materials; transportable buildings of metal have no relevant points of contact with any of the goods and services covered by the earlier registration 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. Indeed, the contested goods consist of metals used in construction, metal building materials (such as metal doors, metal frameworks), transportable buildings of metal, steel buildings, etc. All these goods are offered by companies specialised in metallurgy, alloying and fabrication of metals and their use in construction. Consequently, they target a very specific professional market sector, which does not coincide with the relevant public of any of the applicant’s goods and services. The goods and services under comparison differ in nature and purpose. They are neither complementary nor in competition. Furthermore, they do not originate from the same companies. Therefore, they are considered dissimilar.

Contested goods in Class 9

The contested scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; computers are identically covered by the applicant’s earlier right.

The contested data-processing equipment includes, as a broader category, the applicant’s computers. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested electrical connecting parts; electrical controllers and converters; electrical sensors are included in the broad category of the applicant’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity. Therefore, they are identical.

The contested solar energy collectors for electricity generation; solar modules for electricity generation; solar batteries; apparatus for converting solar radiation into electrical energy, namely photovoltaic solar modules; solar cell installations for solar electric systems; solar cells; solar panels; photovoltaic cells and modules; photovoltaic systems consisting of solar cells and electric connections as well as electric instruments for regulating and/or modifying the electrical output consist of apparatus and instruments used in the generation of electricity through solar power. Therefore, they are identical to the applicant’s electrical, electronic and computer equipment for machinery for use in conservation, generation and efficient use of heat, light and water, including photovoltaic devices, solar cells and motion detectors; electrical, electronic and computer equipment for use in the generation of alternative energy including solar power; control and monitoring equipment for use in the generation of alternative energy including solar power, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the contested goods.

Contested goods in Class 11

The contested apparatus for heating and water supply includes, as a broader category, the applicant’s apparatus for energy efficient heating and water supply purposes, in particular, apparatus for water conservation and use minimization. It is impossible for the Cancellation Division to filter these goods from the abovementioned category. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.

The contested solar collectors (heating); solar modules for heat generation; solar furnaces cannot be clearly separated from the applicant’s apparatus for energy efficient heating. These categories of goods overlap and are, therefore, considered identical.

Likewise, the contested apparatus for cooking overlaps with the applicant’s apparatus for energy efficient heating, because the latter includes energy efficient heating apparatus and installations for foodstuffs. Therefore, these goods cannot be clearly separated and are considered identical.

The contested apparatus for sanitary purposes is highly similar to the applicant’s apparatus for water supply purposes, as the contested apparatus for sanitary purposes is generally dependent on water supply to function. The goods are, therefore, complementary to each other. Many items that are used for sanitary purposes (e.g. bathtubs, showers, sinks) are fundamentally related to water supply. The goods normally coincide in their distribution channels and sales outlets and are manufactured and installed by the same undertakings. Furthermore, they target the same end users.

The contested apparatus for steam generating refers to, among other things, items such as steam boilers, which can be used, inter alia, for heating purposes. The contested apparatus for drying refers to, for instance, appliances used to dry towels or hands in bathrooms by blowing hot air. These appliances have important characteristics in common with the applicant’s apparatus for energy efficient heating. For instance, an apparatus for energy efficient heating may be equipped with heat pumps that blow hot air. Consequently, the conflicting goods coincide partially in their nature and have similar purposes. They target the same customers, are sold in the same shops and are manufactured by the same undertakings. Moreover, to a certain extent, they may be in competition. Therefore, they are considered highly similar.

The contested lighting apparatus; street lamps; LED (light emitting diode) lighting apparatus; LED (light emitting diode) street lamps have relevant points in common with the applicant’s apparatus for controlling lighting in Class 9. The goods in question are complementary and have the same ultimate purpose. They are often sold in combination or next to each other in the same sections of shops. Furthermore, they are normally manufactured by the same undertakings and target the same consumers. Consequently, they are considered highly similar.

The contested vehicle lightings namely, headlights, fog lights, taillights, and brake lights for vehicles are similar to the applicant’s parts and fittings for vehicles in Class 12. These goods coincide partially in their nature and purpose, and they may be complementary. Furthermore, they normally originate from the same companies, target the same relevant public and are sold in the same shops.

The contested apparatus for ventilating includes apparatus which changes or replaces air in any space to provide high-quality indoor air. However, modern-day ventilation apparatuses and installations are usually equipped with heating functions. Therefore, the contested goods may have a similar purpose, in the broad sense, to the applicant’s apparatus for energy efficient heating, namely that of heating. They can originate from the same undertakings and target the same end users. Moreover, they are often sold side by side in the same outlets. Therefore, they are considered similar.

The contested apparatus for refrigerating is similar to the applicant’s apparatus for energy efficient heating, as they have the same broad purpose of conditioning air in closed environments. They often coincide in their producers and target the same consumers. Furthermore, they are usually sold in the same outlets and through the same distribution channels.

Contested services in Class 35

The contested organization of fairs and exhibitions for advertising purposes are included in the broad category of the applicant’s advertising and promotional services. Therefore, they are identical.

The contested arranging of contracts with electricity suppliers; providing business information and consultancy for consumers (consumer consultancy); business consultancy and advisory services; organisational consultancy; organization of fairs and exhibitions for commercial purposes; arranging of contracts, for others, for the providing of services are identical to the applicant’s advertising and promotional services; business management; business administration, either because the applicant’s broad categories include the contested services, or because the contested services overlap with the aforementioned broad categories and cannot be clearly separated from them.

Contested services in Class 37

The contested repair; installation services are identically covered by the applicant’s earlier right.

The contested building construction services are similar to the applicant’s design services in Class 42, as these services may be provided in combination and originate from the same companies, target the same consumers and be provided through the same distribution channels.

The contested installation and repair of electric appliances, ovens, heating apparatus, air conditioning installations, machines, installation and repair of rails; installation, maintenance and repair of solar energy equipment are at least similar to the applicant’s maintenance, repair and installation of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; maintenance, repair and installation of apparatus and instruments for the reception of radio and television broadcasts including the reception of cable, satellite and digital broadcasts; maintenance, repair and installation of home cinema systems; maintenance, repair and installation of amplifiers; maintenance, repair and installation of speakers; installation, maintenance and repair of power plants, turbines, thermostatic controls, solar panels for electricity generation, photovoltaic devices, solar cells and motion detectors and other machinery for use in connection with generating and processing renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; maintenance, repair and installation of parts and fittings for all the aforesaid goods. These services have the same nature and purpose, and may be provided by the same undertakings, through the same commercial channels. Consequently, they may also target the same consumers.

Contested services in Class 39

The contested conducting and transporting of electrical energy; supplying consumers with electricity; distribution of energy cannot be clearly separated from the applicant’s distribution of electricity. These services overlap to a considerable extend and are, therefore, considered identical.

The contested conducting and transporting of heating, gas or water; supplying consumers with heating, gas and water have relevant points in common with the applicant’s distribution of electricity. The market reality reveals that those services are often provided by the same undertaking, which distributes and delivers to its clients electricity, heating, gas and/or water. The services coincide in nature and purpose, and may target the same consumers, through the same commercial channels. Therefore, they are considered similar.

Contested services in Class 40

The contested generating electricity is identically covered by the applicant’s earlier right.

The contested generation of energy includes, as a broader category, the applicant’s generating electricity. It is impossible for the Cancellation Division to filter these services from the abovementioned category. Since the Cancellation Division cannot dissect ex officio the broad category of the contested services, they are considered identical.

The contested treatment of materials are services rendered by the mechanical or chemical processing or transformation of objects or inorganic or organic substances. Therefore, these services are similar to the earlier industrial oils and greases; lubricants; fuels (including motor spirit) and illuminants; fuel additives and preparations for enhancing combustion of fuels in Class 4. These goods and services are complementary to each other, as these services are commonly used to refine, produce and treat these goods (such as gasoline production in oil refineries, where material is separated from crude oil via distillation). These goods and services can be targeted at the same public as well, inasmuch as professionals may purchase the goods and the services. Therefore, the goods are not merely ancillary to these services, but can be sold independently as well. The distribution channels can be the same and these goods and services can be offered by the same companies, such as refineries and laboratories.

The contested generating heat, rental of generators; rental of air conditioning apparatus; rental of room heaters and the applicant’s production of electricity; consultancy, information and advisory services relating to the aforesaid may coincide partially in nature and ultimate purpose. Furthermore, companies specialised in the provision of consultancy, information and advice as regards apparatus for the production of energy will often also provide rental options to their clients, as regards the said apparatus and equipment. Therefore, the services may target the same consumers, through the same commercial channels. Consequently, they are considered similar.

Contested services in Class 42

The contested design and development of computer hardware and software are identically covered by the applicant’s earlier right.

The contested consultancy relating to the conservation of energy; environmental assessment services cannot be clearly separated from the applicant’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 research and design relating thereto; industrial analysis and research; scientific experiments; technical testing; technical research; conducting of technical real examinations, quality testing 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 applicant’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 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 applicant’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 — 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 and similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high, depending on the frequency of their purchase, their particular characteristics and their price.

The signs

SKY

2NDSKY

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, bearing in mind 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. The earlier sign consists of the verbal element ‘SKY’ and the contested sign of the alphanumeric element ‘2NDSKY’.

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 element ‘2NDSKY’, considered as a whole, has no clear meaning for the relevant public. However, considering the above-mentioned principle, the Cancellation Division considers that the English-speaking consumers at issue will instantly perceive the contested sign as a conjunction of the terms ‘2nd’ and ‘Sky’, because these are elements known to them. Indeed, as regards the first element, ‘2nd’, it is the most common way of abbreviating the word ‘second’, i.e. ‘the second item in a series is the one that you count as number two’ (Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/second), just as ‘1st’ in relation to ‘first’ or ‘3rd’ in relation to ‘third’.

The word ‘SKY’, which forms the earlier mark and the second element 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).

Therefore, the elements contained in the marks are neither descriptive nor lacking in distinctiveness for any of the relevant goods and services. They do not describe or allude to any of their characteristics. The same conclusion is applicable to the contested sign considered as a whole since, as explained above, the expression ‘2NDSKY’ conveys no clear or univocal meaning in relation to the relevant goods and services.

Consequently, the marks under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced as a noticeable element at the end of the contested sign. The signs differ in the additional element of the contested sign, the initial element ‘2ND’, which will be perceived as ‘second’.

Therefore, as mentioned above, the English-speaking public at issue will perceive ‘sky’ as an independent and distinctive element in the contested sign. Furthermore, it must be noted that the differentiating element ‘2ND’ qualifies the noun it precedes, namely ‘SKY’.

Therefore, considering the coincidence in the distinctive element ‘Sky’, the marks are visually similar to an average degree.

Aurally, the contested sign will be pronounced in two parts (‘second sky’), corresponding to the two meaningful elements of which it is composed. Therefore, the second element, ‘sky’, is aurally identical to the earlier sign. The signs differ in the sound of the initial element of the contested sign, ‘second’.

Overall, considering the above-mentioned principles, the importance of the coincidence in an independent element which has full distinctive capacity in relation to the relevant goods and services and the fact that the differentiating element in the contested sign merely characterises the element it precedes, it is concluded that there is a medium 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 term ‘2ND’ of the contested sign as ‘second’, in accordance with the meanings referred to above. As regards the contested sign as a whole, as explained above, it will be perceived as ‘second sky’, an expression which has no clear or univocal meaning in relation to the relevant goods and services. Therefore, the public will be aware of the semantic content of the words composing the conjoined element of the contested sign: ‘second’ and ‘sky’.

It follows that the concept conveyed by the word ‘sky’ (the earlier mark) will also be perceived in the contested sign, where it is qualified as ‘second’. As mentioned above, this word is inherently distinctive in relation to the goods and services at issue and, therefore, this semantic coincidence generates an average degree of conceptual similarity between the marks.

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

Distinctiveness of the earlier mark

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

According to the applicant, 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 applicant 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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The contested goods and services are identical, similar (to different degrees) or dissimilar 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, on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included, yet clearly perceptible, in the contested sign, ‘2NDSKY’. The signs differ in the additional element, ‘2ND’, of the contested mark, which will be perceived as ‘second’.

Therefore, the overall impression conveyed by the contested sign is such, that it consists of the elements ‘second sky’, whereby the initial element is simply qualifying and characterising the noun it precedes, ‘Sky’.

The signs are both word marks and the entire earlier mark, ‘SKY’, is contained, as a distinguishable element, in the second part of the contested sign. This 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 inherent distinctiveness.

Therefore, 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.

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 applicant’s mark, considering that the contested sign will be instantly perceived and understood as referring to ‘second sky’. In other words, 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.

Considering all the above, the Cancellation 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 or similar goods and services, there is a likelihood of confusion, including a likelihood of association, on the part of the public, regardless of the degree of attention paid during their purchase.

Therefore, the application is partly well founded on the basis of the applicant’s United Kingdom trade mark registration No 2 500 604. Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar to those of the earlier trade mark.

Since the cancellation application is partially 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 earlier mark due to its extensive use and reputation, as claimed by the applicant, even for identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the earlier mark for dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The application is not successful insofar as the dissimilar goods in Class 6 are concerned. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these goods cannot be successful.

The applicant has also based its cancellation application on the following earlier trade marks:

European Union trade mark No 6 870 992 for the word mark ‘SKY’, covering 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.

European Union trade mark No 5 298 112 for the word mark ‘SKY’, covering goods and services in Classes 9, 16, 35, 37, 38, 41 and 42.

European Union trade mark No 9 017 931 for the word mark ‘TEAM SKY’, covering goods and services in Classes 9, 10, 11, 12, 14, 16, 21, 25, 28, 29, 30, 31, 32, 33, 35, 36, 38, 41, 42 and 45.

The first two of those marks are identical to the one compared and cover the same or a narrower scope of goods and services, the outcome cannot be different for the dissimilar goods in Class 6 for which the cancellation application has already been rejected. Therefore, there is no likelihood of confusion for those goods.

As regards earlier EUTM No 9 017 931 ‘TEAM SKY’, it also covers a narrower scope of goods and services, with the exception of the goods in Classes 10, 14, 21, 29, 30, 31, 32 and 33, which are not covered by earlier UK trade mark No 2 500 604. These goods are the following:

Class 10: Heart monitors; heart monitors to be worn during exercise; parts and fittings for all of the above.

Class 14: Horological and chronometric instruments; watches; clocks; bands for watches; bracelets for watches; straps for watches of any material; cases for watches and clocks; watch chains; clock and watch hands; dials for watches; faces for watches; electric watches; mechanical and automatic watches; movements for watches and clocks; parts for clocks and watches; pendant watches; sports watches; watch and clock springs; watch clasps; watches for outdoor use; watches for sporting use; watches incorporating a memory function; time keeping devices; stop watches parts and fittings for all of the above.

Class 21: Water bottles; bidons.

Class 29: Meat; fish; poultry and game; preserved, frozen, dried and cooked fruits and vegetables; jellies; jams; compotes; eggs, milk and milk products; edible oils and edible fats; dairy products, butter; margarine and other butter substitutes; preserves; pickles; edible nuts and seeds and products prepared therefrom; shellfish; snacks; prepared meals and prepared dishes; soups, gravy and preparations for making gravy or soup; products made from any of the aforesaid goods.

Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparations made from cereals or from flour; bread; pastry and confectionery; ices; honey; treacle; yeast; baking powder; salt; mustard; pepper; vinegar; sauces (condiments); ice; spices; biscuits (other than biscuits for animals); cakes; pasta; pasta products and pastry products; chocolate; chocolates, non-medicated confectionery; ice-cream; water ices and frozen confections; coffee substitutes; coffee essences and coffee extracts; beverages and preparations therefore; puddings; desserts; prepared meals and prepared snacks and fillings; products made from any of the aforesaid goods.

Class 31: Fresh fruit and fresh vegetables; shellfish.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; energy drinks.

Class 33: Alcoholic beverages other than beer.

All these earlier goods in Classes 10, 14, 21, 29, 30, 31, 32 and 33 are also clearly dissimilar to the contested common metals and their alloys; metal building materials; transportable buildings of metal in Class 6, as they have no relevant points of contact with any of these contested goods. Indeed, the contested goods consist of metals used in construction, metal building materials (such as metal doors, metal frameworks), transportable buildings of metal, steel buildings, etc. All these goods are offered by companies specialised in metallurgy, alloying and fabrication of metals and their use in construction. Consequently, they target a very specific professional market sector, which does not coincide with the relevant public of any of the applicant’s goods mentioned above. The goods and services under comparison differ in nature and purpose. They are neither complementary nor in competition. Furthermore, they do not originate from the same companies.

Therefore, as similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and on the three additional EUTM’s listed above, and directed against these goods (common metals and their alloys; metal building materials; transportable buildings of metal in Class 6) cannot be successful.

Therefore, the examination continues in relation to the remaining grounds claimed by the applicant.

REPUTATION – ARTICLE 53(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

Under Article 53(1)(a) EUTMR, an application for a declaration of invalidity of a European Union trade mark shall be met where there is an earlier trade mark as referred to in Article 8(5) EUTMR and the conditions set out in that paragraph are fulfilled.

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are applicable only when the following conditions are met.

The signs must be either identical or similar.

The applicant’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the application is based.

Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application under Article 8(5) EUTMR (judgment of 16/12/2010, joined cases T-345/08 and T-357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The application may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Reputation of the earlier trade marks

The applicant claims that its earlier European Union trade marks No 6 870 992 and No 5 298 112 (for the mark ‘SKY’), No 9 017 931 for the mark ‘TEAM SKY’ and United Kingdom trade mark No 2 500 604 have a reputation in the European Union and United Kingdom respectively, in relation to goods and services in Classes 9, 16, 28, 35, 36, 37, 38, 39, 41, 42 and 43.

For reasons of procedural economy, the Cancellation Division will not undertake a full examination of the evidence submitted by the applicant. The examination of the application will proceed on the assumption that all the earlier marks have a reputation.

The ‘link’ between the signs

As seen above, the earlier marks have been assumed to have a reputation and the signs are similar to some extent. In order to establish that a later trade mark will encroach upon the reputation of an earlier mark, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgment of 23/10/2003, C-408/01, ‘Adidas’, paragraphs 29 and 31, and the judgment of 27/11/2008, C-252/07, ‘Intel Corporation’, paragraph 66. It is not an additional requirement but merely reflects the need to determine, after all the factors relevant to the particular case have been assessed, whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur.

Possible relevant factors for the examination of a ‘link’ include (judgment of 27/11/2008, C-252/07, ‘Intel Corporation’, paragraph 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the case at hand, the remaining goods against which the application is directed are the following:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal.

As previously explained, these goods consist of metals used in construction, metal building materials (such as metal doors, metal frameworks), transportable buildings of metal, steel buildings, etc. All these goods are offered by companies specialised in metallurgy, alloying and fabrication of metals and their use in construction. Consequently, they target a very specific professional market sector, which does not coincide with the relevant public of any of the applicant’s goods and services mentioned above, for which reputation has been assumed.

It must be noted that the contested goods in Class 6 and the goods and services covered by the earlier marks at issue have completely differing natures. Indeed, they have different distribution channels, they are neither interchangeable nor in competition with each other, they serve very different purposes and they do not belong to adjacent market segments. All of this results in a very limited degree of closeness between those contested goods and between those earlier goods and services. This clear dissimilarity of the goods and services at issue is a rather relevant factor which weighs against a finding that a ‘link’ between the marks may be established (judgment of 19/05/2015, T-71/14, ‘Swatchball’, paras. 30-33).

Overall, while it is indeed possible that the public for the above-mentioned contested goods in Class 6 may also be aware of the earlier marks, it can nevertheless be concluded that the relevant public will not establish a link between the marks at issue, since it is highly unlikely that that public will encounter the goods and services covered by those earlier marks in the same shops or trade channels as those of the contested goods or, in general, would even think of the goods and services covered by the earlier marks when presented with the goods such as common metals and their alloys; metal building materials; transportable buildings of metal, targeted at professionals from the metallurgy, alloying, fabrication of metals and construction sectors.

In circumstances such as those, in the present case, the view may be taken that, even assuming the reputation of the earlier marks and even considering the fact that there is a similarity between the marks at issue, the absence of similarity between the goods and services in question and the differences between their relevant publics are such that they are liable to exclude the existence of any link between the marks at issue.

Consequently, it is concluded that in relation to common metals and their alloys; metal building materials; transportable buildings of metal in Class 6, it is highly unlikely that the use of the contested mark, ‘2NDSKY’, will bring the earlier trade marks to the minds of consumers in the relevant territories.

Given that the relevant public is unlikely to establish a link between the trade marks at issue, the Cancellation Division considers that the use of the contested trade mark will not take advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks as required by Article 8(5) EUTMR. Indeed, as one of the necessary requirements is not met, the application is rejected as not well founded under Article 8(5) EUTMR.

NON REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE (Article 53(1)(c) EUTMR IN CONJUNCTION WITH ARTICLE 8(4) EUTMR)

Under Article 53(1)(c) EUTMR, an application for a declaration of invalidity of a European Union trade mark shall be met where there is an earlier right as referred to in Article 8(4) EUTMR and the conditions set out in that paragraph are fulfilled.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

pursuant to the law governing it, prior to the filing of the contested trade mark, the applicant acquired rights to the sign on which the application is based, including the right to prohibit the use of a subsequent trade mark;

the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the application based on a non-registered trade mark or other sign used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

The applicant has claimed a non-registered trade mark, trade name and company name ‘SKY’, used in the course of trade in the United Kingdom in relation to goods and services in Classes 9, 16, 28, 35, 36, 37, 38, 39, 41 and 42, and submitted information concerning the applicable national law.

In the United Kingdom, non-registered trade marks and other signs used in the course of trade, such as trade names and company names, are protected by common law and in particular by the ‘passing off action’. Among other requirements, such as the existence of goodwill in the earlier sign, a successful passing off action generally implies that there has been a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the plaintiff.

The applicant’s right vis-à-vis the contested trade mark

As a general rule, it is unlikely that a passing off action would succeed where the same case (that is, involving the same signs and goods and/or services) has failed under Article 8(1)(b) EUTMR.

In the present case, the earlier rights invoked consist of the word ‘SKY’, in respect of which it has already been found above that no likelihood of confusion exists in relation to the common metals and their alloys; metal building materials; transportable buildings of metal covered by the contested sign in Class 6, as these goods are radically dissimilar to all the earlier goods and services mentioned above in Classes 9, 16, 28, 35, 36, 37, 38, 39, 41 and 42.

Bearing in mind all the aforementioned conclusions, and in the absence of arguments and evidence to the contrary, the Cancellation Division considers that the EU trade mark applied for, ‘2NDSKY’, will not lead consumers in the United Kingdom into believing that the common metals and their alloys; metal building materials; transportable buildings of metal in Class 6, offered by the EUTM proprietor under that mark, are actually those of the applicant.

It follows that the trade mark of the EUTM proprietor does not constitute a misrepresentation, which is one of the necessary conditions for the application of the law on passing off.

Therefore, the application is not well founded on the basis of Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Liliya YORDANOVA

Gueorgui IVANOV

Ewelina SLIWINSKA

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.

2NDSKY | Decision 0013028

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