BINGOSKY | Decision 0009838
Date Published: May 16, 2018
CANCELLATION No 9838 C (INVALIDITY)
Sky plc, Grant Way, Islewordth, 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
Excent Investments Corporation, APUA Road, Cassada Gardens, St. John’s, Antigua and Barbuda (EUTM proprietor), represented by Abogados Daundén, S.L.P., Avenida Maisonnave, 11, 2°, 03003 Alicante, Spain (professional representative).
On 17/01/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 4 995 023 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 4 995 023 in Classes 9, 38 and 41. The application is based on, inter alia, European Union trade mark registration No 3 203 411. The applicant invoked Article 53(1)(a)(c) EUTMR in connection with Article 8(1)(b) EUTMR, as well as the SKY well known trade mark in the United Kingdom, Article 8(5) EUTMR with reputation claimed in the United Kingdom and Ireland and Article 8(4) EUTMR (on a number of non-registered SKY trade marks and SKY signs used in the course of trade in the United Kingdom and Ireland).
SUMMARY OF THE PARTIES’ ARGUMENTS
The Applicant is the owner of earlier registered and unregistered rights in the trade mark SKY. SKY is the dominant and distinctive part of the registration of the mark BINGOSKY. The registration and Applicant’s earlier rights cover identical goods and services and in those circumstances it is inevitable that consumers will be confused. The Applicant submits that the Registration should be invalidated on the basis of Article 53(1)(a) as it refers to Articles 8(1)(b) and 8(5) EUTMR.
It is without doubt that the Applicant’s earlier registered rights and trade marks have a distinctive character and reputation in the United Kingdom, and Ireland and did at the application date. As such the use of a similar mark, namely BINGOSKY takes unfair advantage of, or is detrimental to that distinctive character and reputation. Further, the Applicant submits that the registration should be invalidated on the basis of Article 53(1)(c) as it is contrary to Article 8(4) EUTMR.
In support of its observations, the applicant filed evidence of reputation, and in particular:
- Witness Statement from Simon McLennan Solicitor of British Broadcasting Group plc, responsible for managing the intellectual property portfolio of the applicant. The witness statements, supported by 81 exhibits, makes reference to, among others, the following:
- Tables of information compiled from the website of the Broadcasters’ Audience Research Board (‘BARB’) providing viewing estimates of the number of people watching television in UK private households including, among others, data on monthly UK viewing of the core ‘SKY’ channels from 1998 to 2006 showing that for instance in the UK more than 14 million people viewed SKY ONE during March 2000 and more than 18 million people during March 2004 and March 2006. The total number of viewers for all SKY branded channels in the UK was almost 40 million in March 2000, almost 50 million in March 2002, almost 60 million in March 2003, more than 50 million in March 2004 and more than 31 million in 2006.
- Witness Statement by Nigel Wally, Managing Director of Decipher Consultancy Limited, an expert consultancy firm in the area of digital media strategy in the UK, attesting that the applicant is ‘the leading supplier of digital television in the UK’, that ‘Sky has an enormous and impressive reputation’, that Sky ‘has been very much at the forefront of technological innovation, since, at least, 1998 when SKY DIGITAL was launched’, that ‘the SKY brand in the UK is regarded by consumers as at the leading edge of digital media innovation and, for those consumers who understand them, convergence’ and that ‘SKY is one of the most well-known brands in the UK’.
- Witness Statement of Joel Barry.
The EUTM proprietor claims that the evidence filed show that the mark “BINGOSKY” has been genuinely and consistently used for more than ten years in UK as well as in other EU countries or at least for more than seven years if counted from the date of it registration of the contested EUTM No. 4 995 023 registered on 29/06/2007 until the declaration of invalidity was filed on 19/09/2014, for bingo games provided online, gaming and gambling services as well as for related goods and services in classes 9, 38 and 41. The EUTM proprietor considers that the Cancellation Applicant has acquiesced to the use of the EUTM registration “BINGOSKY” for a period of more than five years after the registration of the challenged EUTM registration, in relation to the relevant goods and services, in particular bingo games provided on-line, gaming and gambling services. Indeed since it polices the market for trade marks containing SKY, it is likely that it had knowledge of the use of the contested BINGOSKY registered in 2007 without opposition. In addition, it filed a trade mark SKY GAMES in 2007 and it is likely that searches prior to that were carried out. So the applicant must have been aware of the existence of BINGOSKY. Now that it has applied for SKYBINGO trade marks in the United Kingdom, it decided to attack BINGOSKY. Nevertheless, the Cancellation Applicant is no longer entitled to apply for a declaration that the EUTM registration “BINGOSKY” be invalidated. The EUTM proprietor also considers that besides the defence of acquiescence, there is no likelihood of confusion between the EUTM registration “BINGOSKY” and the Cancellation Applicant’s earlier rights as they give an different overall impression. The presence of BINGO at the beginning creates visual and aural differences while the beginning of signs is paid more attention to. Conceptually, the public will not dissect BINGOSKY and would think it is meaningless. The other grounds invoked are not applicable either.
In support of its observations, the EUTM proprietor filed the following evidence:
- Exhibit 1: Printout from the UK website http://www.whichbingo.co.uk/, concerning the “New Site of the Year” award won by “BINGOSKY” in 2004.
- Exhibit 2: Domain www.bingosky.com
- Exhibit 3: Spreadsheet listing all the players in Europe who logged on to www.bingosky.com and registered their details in order to play bingo online in the first two months since launch (November and December 2004).
- Exhibit 4: Domain www.bingosky.co.uk
- Exhibit 5: Affidavit signed by Mr. Gonzalo José Gómez Pérez, CEO of the CB Corporation from 2001 to the present (the date of the affidavit being 02/03/2015).
- Exhibit 6: Evidence concerning the simultaneous presence of the EUTM Proprietor’s mark “BINGOSKY” and the Cancellation Applicant’s “SKYBET” in the same rankings of companies specialized in on-line bingo, gaming and gambling.
- Exhibit 7: Cancellation Applicant’s EUTM “SKYBET”
- Exhibit 8: Affidavit signed by Mr. Phil Fraser, owner of Focus Online Management Ltd, mentioning that BingoSKY has been known since 2004, as can be shown by it winning the ‘New Site of the Year’ award in 2004 and that it ran advertising for BingoSKY on the ‘New Sites’ page of www.whichbingo.co.uk from October 2007.
- Exhibit 9: Printouts from the UK bingo portal http://www.whichbingo.co.uk/, concerning the “Site of the Year Award” results from 2005 to 2012.
- Exhibit 10: Printout from the UK website http://www.onlinebingo.co.uk/, with an article concerning the “BINGOSKY” online platform.
- Exhibit 11: Printout from the UK website http://www.whichbingo.co.uk/, with a review of the “BINGOSKY” online platform.
- Exhibit 12: Printouts from websites specialized in bingo games of different EU countries, dated from 2007 to 2014, with reviews and rankings of the major player of the bingo industry, including “BINGOSKY”.
- Exhibit 13: Invoices of some UK based “affiliates”, such as Herotech Ltd, Paid On Results Ltd, AffiliateProgramAdvice.com, etc.
- Exhibit 14: Invoices dated from October 2007 to December 2008, issued by UK marketing companies such as Focus Online Management Ltd for the promotion of the “BINGOSKY” online platform.
- Exhibit 15: Screenshots of Internet forums of different EU countries related to the “BINGOSKY” online platform, showing comments dated from 2007 to 2014.
- Exhibit 16: “Trouble Tickets 2007-2010”.
- Exhibit 17: Evidence provided by third parties (the German company Wirecard Technologies AG) concerning the payments received by the CTM Proprietor, through the German bank Wirecard from 2007 to 2009, for the “BINGOSKY” online bingo platform.
- Exhibit 18: “Payouts 2007-2010”, that is, evidence provided by third parties (such as the UK bank Natwest – National Westminster Bank Plc and the Irish/Canadian company Chexx Inc.) concerning the prizes paid to winners of the “BINGOSKY” games from 2007 to 2010.
- Exhibit 19: Advertisement of “VistaGaming” published on the July 2014 edition of the magazine GPWA Times.
- Exhibit 20: 20 issues of the “BINGOSKY” UK weekly newsletter, dated from
2007 to 2010.
- Exhibit 21: Cancellation Applicant’s EUTM No 5 825 369, “SKY GAMES” (fig.)
- Exhibit 22: Statement of grounds submitted by the Cancellation Applicant in the opposition decision of 27/02/2003, B 274 029, “SEA&SKY” vs. “SKY”.
In its rejoinder, the applicants repeats previous arguments and underlines that since BINGO is mentioned in the list of good and services covered by the contested BINGOSKY, it is surprising that the EUTM proprietor considered that BINGO would not be identified in BINGOSKY. It also mentions that it became aware of the use of the contested mark around 19/07/2010 when Samuel Downey, employed by one of the applicant’s group of companies, came across the use of the mark on the website www.bingosky.uk . Since the invalidity application was filed on 19/09/2014, less than 5 years had passed. The evidence of use of the contested mark or of the applicant’s knowledge of the use after 19/09/2009 is not relevant. The relevant period is between 29/06/2007 (date the contested trade mark was registered) and 20/09/2009. Much of the evidence supplied by the EUTM proprietor falls outside the relevant period and must be disregarded. It also mentions that the EUTM “BINGOSKY” was registered “with the deliberate intention of trading off the Applicant’s reputation and fame in its SKY mark and business”.
In support of its observations, the applicant filed in particular:
- Witness Statement of Samuel Downey (Annex 1).
In its rejoinder, the EUTM proprietor mentions new circumstances as to acquiescence. It considers it has shown that Sky plc was unreasonably silent in parallel UK proceedings as to when they became aware of the use of the registered EUTM ‘BINGOSKY’. In addition, it brings evidence that at least two people employed by the Cancellation Applicant were aware of the use of the EUTM registration BINGOSKY in the Community since 2008.
In support of its observations, the applicant filed:
- Enclosure A: a Witness Statement signed by Ms. Alexandra Zoe Pygall, of Stephenson Harwood LLP, the UK solicitor representing the “BINGOSKY” trade mark in the UK proceedings.
- Enclosure B: evidence that Ms. Helga Hastings opened an account on the Bingosky.co.uk platform on 30/052008.
- Enclosure C: Helga Hastings’s profiled on LinkedIn® showing she was working as Sales Assurance Manager at British Sky Broadcasting Ltd. e).
- Enclosure D evidence that Ms. Jacqueline Walker (Jackie Walker) opened an account on the Bingosky.co.uk platform on 08/04/2008. The email indicated by Jackie Walker was “email@example.com”.
- Enclosure E: Jacqueline Walker’s profile on LinkedIn® indicates that she worked in the sales department at British Sky Broadcasting Ltd.
It then considered in further submissions that the EUTM “BINGOSKY” has been in continuous use in the Community, and especially in the UK, since 2004. The Applicant was aware of the use of the EUTM “BINGOSKY” in the UK from April/May 2008, due to direct contact between the Applicant’s Sales Assurance Manager and the EUTM Proprietor’s “BINGOSKY” UK website and one of the employees of the sales department of the Applicant and the EUTM Proprietor’s “BINGOSKY” UK website. The Applicant could reasonably have been presumed to be aware of the publication and subsequent registration and use of the EUTM “BINGOSKY” in the UK and in the Community from February/April 2007. Despite the above, the Applicant did not take any action against the use of the EUTM “BINGOSKY” until 19 September 2014.
The parties have a last exchange of observations where previous arguments are repeated or further discussed. The applicant mentions the recent judgement of 20/04/2016 T-77/15 ‘SkyTec’ where it was found that the evidence of acquiescence submitted by the EUTM proprietor was correctly assessed by the Board of Appeal and that it was not proven whether the invalidity applicant was ‘actually’, and not only potentially, aware of the use of the contested EUTM.
The EUTM proprietor filed the following additional evidence:
- Annex I: a new Witness Statement of Ms. Alexandra Zoe Pygall, of Stephenson Harwood LLP, the UK solicitor representing the “BINGOSKY” mark in the co-pending UK proceedings, explaining why Sky did not fully follow the UK Civil Procedure Rules in the parallel UK proceedings.
According to Article 53(3) EUTMR, the EUTM may not be declared invalid if the owner of the earlier right consents expressly to the registration of the EUTM before filing the application for a declaration of invalidity.
According to Article 54(1) and (2) EUTMR, where the proprietor of an earlier mark or sign has acquiesced, for a period of five successive years, in the use of a later EUTM in the territory where the earlier mark or sign is protected while being aware of such use, it is no longer entitled on the basis of that earlier mark or sign to apply for a declaration of invalidity against the later EUTM, unless registration of the later EUTM was applied for in bad faith. The relevant period is between 29/06/2007 (date the contested trade mark was registered) and 18/09/2009 included (5 years before the cancellation action filed on 19/09/2014).
In the present case, the EUTM proprietor claims that the applicant has acquiesced in the use of the contested EUTM. The Cancellation Division considers the claim is unfounded.
Evidence of express consent must take the form of a statement (and not of conduct). The statement must come from the applicant (and not from third parties). The consent must be ‘express’ (and not implicit or presumed) (decision of 23/07/2009, R 1099/2008-1, § 46). The burden of proof for such consent lies with the EUTM proprietor.
The contested mark must have been made in good faith and used in the relevant territory and the proprietor of the earlier trade mark must have had knowledge that the trade mark had been registered and used after its registration. There is no evidence that the trade mark was filed in bad faith. The fact that it is sometimes used not as BINGOSKY but as a figurative BINGO SKY is not sufficient in order to prove that there is bad faith. The mark has been put into genuine use although for economy of proceedings, this is supposed without assessing in details the evidence brought as the last condition for acquiescence is not met in any event.
As previously mentioned, the EUTM proprietor considers it has shown that Sky plc was unreasonably silent in parallel UK proceedings as to when they became aware of the use of the registered EUTM ‘BINGOSKY’. This is contested by the applicant but the cancellation division notes that even if it was admitted, this would not be considered as relevant in the present case since silence in a parallel case is not relevant in order to show there was express consent in the present case. In addition, in the present case, the applicant informed that it became aware of the use of the contested mark around 19/07/2010 when Samuel Downey, employed by one of the applicant’s group of companies, came across the use of the mark on the website www.bingosky.uk. Since the invalidity application was filed on 19/09/2014, less than 5 years had passed. The evidence that at least two people employed by the Cancellation Applicant contracted services of the website www.bingosky.uk since 2008 is not found relevant as contrary to Samuel Downey who informed the relevant persons of its finding, there is no evidence that the employees did the same in 2008. They could have contracted the service for personal needs without realising it was a registered trade mark as well and the cancellation division cannot base itself on suppositions. The fact that the accounts were not used cannot be regarded as evidence that they were opened on behalf of the company to further investigate again without making suppositions. If it is admitted by both parties that the applicant has an active policy to defend its SKY trade marks, supposing that it made investigations which were not followed up with the relevant actions against the trade mark is not logical. In addition, if investigations were proven this would also be indicative that it did not precisely acquiesce. The other arguments invoked by the EUTM proprietor are only suppositions (‘since it is policing the market for trade marks containing SKY, it is likely that he had knowledge of the use of the contested BINGOSKY registered in 2007 without opposition’/ ‘it filed a trade mark SKY GAMES in 2007 and it is unlikely that he did not carry out searches prior to that, so he must have been aware of the existence of BINGOSKY’). There is no evidence that leads to reasonably conclude that the applicant had knowledge of the contested trade mark within the relevant period (between 29/06/2007 and 18/09/2009 included). As mentioned in the recent judgment of 20/04/2016 T-77/15 ‘SkyTec’ quoted by the applicant, the invalidity applicant must have ‘knowingly’ tolerated the use of the subsequent EUTM, the onus is on the EUTM proprietor (§ 33). Consequently, it is not sufficient that ‘potential’ knowledge of use of the subsequent mark is proven, it has to be proven that there was ‘actual’ knowledge of such use (§ 34-35).
Therefore the EUTM proprietor has not proven that there has been acquiescence and the examination of the cancellation application must continue.
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 European Union trade mark registration No 3 203 411.
- The goods and services
The goods and services on which the application is based are in particular the following:
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 or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; including data storage apparatus and instruments, software and data storage software, and software for video-conferencing, but excluding car batteries.
Class 38: Telecommunications, including video-conferencing services and sharing of files, images, music, video, photos, drawings, audio-visual, text, documents and data; but excluding telegraph communications services.
Class 41: Education except for education in relation to dental services provided to dentistry businesses, including dental laboratory businesses and their personnel, only; providing of training except for providing of training in relation to dental services provided to dentistry businesses, including dental laboratory businesses and their personnel, only; entertainment; sporting and cultural activities.
The contested goods and services are the following:
Class 9: Computer software for use in playing bingo; computer software for use in playing bingo provided on-line, via the Internet or other means; electronic publications (downloadable) provided on-line from databases or the Internet; CD ROMs; DVDs; compact discs; media for storing information, data, signals, images and sounds; machine readable media; computer and video games; computer games consoles; computer and video games; computer and video game apparatus; interactive games.
Class 38: Providing access to gambling and gaming websites on the internet.
Class 41: Entertainment services, namely the provision of bingo games provided on-line; gaming and gambling services; organisation and presentation of games; composition of interactive games, interactive entertainment and interactive competition services; information relating to entertainment, games and gaming provided on-line from a computer database or the Internet; electronic games services provided by means of the Internet; providing on-line electronic publications; provision of computer games programs from a computer database or via the Internet; interactive and on-line games and competitions; provision of a website allowing a user to play bingo.
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.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term namely, used in the EUTM proprietor’s list 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 9
The contested computer software for use in playing bingo; computer software for use in playing bingo provided on-line, via the Internet or other means; computer and video games (repeated); computer and video game apparatus; computer games consoles are identical to the applicant’s data processing equipment and computers including data storage apparatus and instruments, software and data storage software, and software for video-conferencing, but excluding car batteries; apparatus for recording, transmission or reproduction of sound or images either because they are synonyms, are included in a broader expression or overlap with them.
The contested CD ROMs; DVDs; compact discs; media for storing information, data, signals, images and sounds; machine readable media are media that are included or overlap with the applicant’s broad categories magnetic data carriers, recording discs and therefore are identical.
The contested electronic publications (downloadable) provided on-line from databases or the Internet are similar to the applicant’s data processing equipment as the goods are complementary, they have the same distribution channels, relevant public and producer.
Contested services in Class 38
The contested providing access to gambling and gaming websites on the internet are telecommunication services included within and therefore identical to the applicant’s telecommunications, including video-conferencing services and sharing of files, images, music, video, photos, drawings, audio-visual, text, documents and data; but excluding telegraph communications services.
Contested services in Class 41
The contested entertainment services, namely the provision of bingo games provided on-line; gaming and gambling services; organisation and presentation of games; composition of interactive games, interactive entertainment and interactive competition services; information relating to entertainment, games and gaming provided on-line from a computer database or the Internet; electronic games services provided by means of the Internet; provision of computer games programs from a computer database or via the Internet; interactive and on-line games and competitions; provision of a website allowing a user to play bingo are included within and therefore identical to the applicant’s broad entertainment.
The contested providing on-line electronic publications are similar to the applicant’s providing of training except for providing of training in relation to dental services provided to dentistry businesses, including dental laboratory businesses and their personnel, only as they are complementary services, they use the same distribution channels, they target the same relevant public and have the same providers.
- 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 or similar are directed at the public at large and to business customers with specific professional knowledge or expertise. The degree of attention can vary from average to higher than average considering that some of the good and services are not bought on a daily basis, are expensive and/or are technological.
- The signs
Earlier trade mark
Contested trade mark
The relevant territory is the European Union.
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).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, given that the signs are composed of English terms.
The English-speaking public will perceive the earlier trade mark as composed of the word SKY meaning ‘the region of the atmosphere and outer space seen from the earth’ (www.oxforddictionaries.com) which is distinctive for the relevant goods and services.
The contested sign, even if nonsensical as a whole, would be perceived by the English-speaking public as including the two words ‘BINGO’, meaning ‘a game in which players mark off numbers on cards as the numbers are drawn randomly by a caller, the winner being the first person to mark off all their numbers’ (www.oxforddictionaries.com) and ‘SKY’ with the previously described meaning also distinctive. According to the well-established case-law of the General Court, a common word element can be identified in an isolated manner in a composite mark, either because it is separated by a space or hyphen or because it is otherwise (because of its clear meaning) identified as an individual element. This is because the average consumer usually breaks down a word mark into its different elements only when these elements suggest a concrete meaning or resemble known words (judgment of 06/10/2004, T-356/02, ‘Vitakraft’, paragraph 51). The cancellation division therefore does not agree with the EUTM proprietor according to whom the words would not be split.
The element ‘BINGO’ of the contested sign will be associated with games. Bearing in mind that all of the relevant goods and services are –or could be- related to games, this element is non-distinctive for these goods and services.
Although more attention is usually paid to the beginning of a word, the fact that BINGO would be dissected because of its meaning and would be understood as being descriptive for all the goods and services compensates the fact that the common element SKY is placed at the end of the contested mark. In addition, the earlier trade mark is fully incorporated in the contested one.
These findings will have a bearing on the degree of similarity between the signs.
Visually, the signs are similar to an average degree to the extent that they coincide in ‘SKY’. On the other hand, they differ in the additional first letters ‘BINGO’ of the contested trade mark.
Aurally, the pronunciation of the marks coincides in the syllables ‛SKY’ present identically in both signs, and to that extent the marks are aurally similar to an average degree. The pronunciation differs in the syllables ‛BIN/GO’ of the contested mark, which has no counterpart in the earlier mark.
Conceptually, as the word ‘BINGO’ does not alter the meaning of ‘SKY’, the signs are conceptually similar to an average degree.
Taking into account the abovementioned visual, aural and for part of the public, conceptual coincidences, it is considered that the signs are similar.
- 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
As previously mentioned, the fact that ‘BINGO’ is at the beginning of the contested sign loses impact due to its non-distinctive nature – meaning that the common element SKY which is also the only element of the earlier sign, will be focused on.
As the goods and services are identical and similar, due to the visual, aural and conceptual average similarities between SKY and BINGOSKY, it is considered that the sharing of the element ‘SKY’ can lead to a likelihood of confusion, more particularly a likelihood of association. Indeed, the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (for a definition of likelihood of association, see judgments of 11/11/1997, C-251/95, ‘Sabèl’; and of 29/09/1998, C-39/97, ‘Canon’). In the present case, the relevant English-speaking public may think, for instance, that the contested mark BINGOSKY is a brand variation of the earlier mark SKY and, therefore, that the goods and services come from the same undertaking or from economically-linked undertakings. In other words, the English-speaking consumers may confuse the origin of the conflicting goods and services found to be identical or similar.
Considering all the above, there is a likelihood of confusion on the part of the English -speaking part of the public within the meaning of Article 8(1)(b) in conjunction with Article 53(1)(a) EUTMR, even taking into consideration the potential higher degree of attention of the public for some goods and services. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.
Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 3 203 411. It follows that the contested trade mark must be declared invalid for all the contested goods and services.
Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its reputation as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right SKY leads to the success of the application and the cancellation of the contested trade mark for all the goods and services against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the application, namely Article 8(4) and (5) EUTMR in conjunction with Article 53(1)(a) and (c) EUTMR.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Ana MUÑIZ RODRIGUEZ
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.