Decision on Opposition No B 2 680 141 page: 6 of 8
Therefore, given the reproduction of the distinctive element ‘SKY’ in the beginning of
the contested sign, it is likely that the relevant public will, at least, associate the
contested sign with the earlier mark.
Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be
registered if because of its identity with or similarity to the earlier trade mark and the
identity or similarity of the goods or services covered by the trade marks there exists
a likelihood of confusion on the part of the public in the territory in which the earlier
trade mark is protected; the likelihood of confusion includes the likelihood of
association with the earlier trade mark.
In the present case, even the highly attentive consumers in question may believe that
the contested trade mark is a new brand line or a recent development under the
opponent’s mark, considering that it will be applied to goods and services which are
identical to those marketed under the ‘SKY’ brand, because it is a common market
practice for brands to identify new version or a new sub-brand through the use of
additional verbal elements in combination with the main (‘house’) brand. In other
words, even the highly attentive consumers may confuse the origins of the goods and
services at issue by assuming that they come from the same undertaking or from
Account must also be taken of the principle that a likelihood of confusion implies
some interdependence among the relevant factors, and in particular a similarity
between the trade marks and between the goods or services. Accordingly, a lesser
degree of similarity between the goods or services may be offset by a greater degree
of similarity between the marks, and vice versa. In the present case, it is decisive that
the contested goods and services are all identical to the goods and services covered
by the earlier mark.
In relation to the holder’s arguments about the actual use in the market of the trade
marks in conflict for different goods and services, it should be noted that the
examination of the likelihood of confusion carried out by the Office is a prospective
examination. The particular circumstances in which the goods or services covered by
the marks are actually marketed have, as a matter of principle, no impact on the
assessment of the likelihood of confusion because they may vary in time depending
on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P,
Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73;
21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).
Therefore, when considering whether or not the EUTM application (or an IR
designating the EU) falls under any of the relative grounds for refusal, it is the
opponent’s rights and their scope of protection as registered that are relevant.
In its observations, the holder also argues that the earlier trade mark has a low
distinctive character given that there are many trade marks that include the word
‘SKY’, which is an easily recognisable English term.
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of data concerning a register only, it cannot
be assumed that all such trade marks have been effectively used.
Furthermore, it must also be noted that, only under special circumstances may the
Opposition Division consider evidence of the coexistence of other marks in the
market (and possibly in the registry) on a national/European Union level as an