CANCELLATION No 10237 C (INVALIDITY)

Japan Airlines Co., Ltd., 2-4-11, Higashi-Shinagawa Shinagawa-Ku, Tokyo, Japan (applicant), represented by Staeger & Sperling Partnerschaftsgesellschaf mbB, Sonnenstr. 19, 80331 Munich, Germany (professional representative)

a g a i n s t

Sky International AG, Stockerhof, Dreikönigstrasse 31a, 8002 Zurich, Switzerland (EUTM proprietor), represented by Olswang LLP, 90 High Holborn, WC1V 6XX London, United Kingdom (professional representative).

On 19/04/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 10 725 621 SKY WIFI (word) (the EUTM). The request is directed against part of the goods and services covered by the EUTM, namely:

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; mobile and fixed telecommunications services; communications services; satellite, cellular and radio communication services; transmission and communication services; 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; telecommunication and/or communication of audio visual content; access to telecommunications infrastructures for other operators; 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 telecommunications links to computer databases and websites on the Internet; telecommunications services dedicated to retailing goods and services through interactive communications with customers; enabling access to the Internet; internet portal services; web portal services; provision of broadband services; access to Internet websites to mobile telephone users; telecommunications information; data communication services; 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; wireless communication services; providing multiple user wireless access to the internet; rental of wireless communications systems; wireless broadcasting; 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; remote data access services; internet portal services; web portal services; online telecommunications services to enable the accessing and retrieving of data, files, e-mails, contacts, calendars, task lists, text messages, photos, music, audio, visual, audio visual, video, text, graphics, programs and other information via a computer or computer network or electronic device including services provided over a global communications network.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article  7(1)(b) and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

Applicant’s request

The applicant argues that the trade mark “SKY WIFI”, hereinafter the EUTM, may serve in trade to designate the kind of services, namely “wireless inflight internet access”. The term “SKY” is defined as “the region of atmosphere and outer space seen from the earth” (www.oxforddictionaries.com). In addition to the dictionary definition, the general understanding of the word “SKY”, by the relevant consumer, is that of a synonym for the concept of “inflight”. Therefore, in the field of aviation, the term “SKY” is used to describe the fact that specific services are provided on board aircrafts.

To support this claim the applicant has referred to several aviation companies who utilise the term “SKY”. For example, the German company Lufthansa has used for decades the term “SKY PHONE” for inflight telephones; Finnair has a “SKY BISTRO” service, providing inflight food and drinks; Czech Airlines offers a “SKY Shop”; Gulf Air offers inflight dining at “Sky Chef”; whilst Germania offer a “sky magazine”. More specific to the facility of internet in the field of air travel are American Airlines’ “Wi-Fi in the Sky”, and Thai Airways offer of “Thai Sky Connect”, a Wi-Fi internet services.

The applicant argues that the above information relating to the use of the term “SKY” within the realms of air travel means that the relevant public is absolutely familiar with the use of “SKY” as a synonym for “inflight”.

The terms “WIFI”, “WiFi” or “WI-FI” are terminology used to describe the technology that allows “computers, smartphones or other devices to connect to the internet or communicate wirelessly within a particular area” (www.oxforddictionaries.com). The use of the terms “WIFI”, “WiFi” or “WI-FI” are not limited to countries which use the English language, but are rather understood throughout the EU for indicating wireless internet connection. For example, Deutsche Telekom, Germany’s biggest telecommunication provider, offers free internet for “WIFI capable smartphones etc” in the city of Bonn.

The understanding of the terms “WIFI”, “WiFi” or “WI-FI” have not changed from the application date of the contested EUTM. The EUTM “SKY WIFI” has clearly been understood by the relevant consumer as meaning “inflight wireless internet access” since the date of application.

The contested services in class 38 are essentially telecommunication services, which would include “providing wireless access to the internet”. The fact that the services in class 38 claim all kinds of telecommunication means that “inflight services” are not excluded, and must therefore be assumed to be included. Further, the term “SKY WIFI” would have a descriptive meaning for all kinds of secondary telecommunication services, related to or using the internet, such as the sharing of documents, transmission and communication services, and internet and web portal services.

In support of its observations, the applicant filed the following evidence:

• Enclosure 1: an extract from lufthansa.com, explaining that a “Sky Phone” can make phone calls during a long haul flight.

• Enclosure 2: an extract from finnair.com, explaining that “SKY BISTRO” offers tailored meals on Finnair flights.

• Enclosure 4: an extract from gulfair.com, explaining that the use of a “Sky Chef” is available for individual requirements, provided by an onboard chef.

• Enclosure 5: an extract from gogoair.com, indicating that American Airlines uses “Gogo”, which makes Wi-Fi available on-board their planes. The article is entitled “Wi-Fi in the sky is here.”

• Enclosure 6: an extract from thaiarways.com, referring to “Thai Sky Connect”, which offers in-flight Wi-Fi internet.

EUTM proprietor’s response

The EUTM proprietor briefly explains that the two parties have a history of disputes and engagements in proceedings regarding trade marks that contain the term “SKY”.

The applicant for invalidity is itself the registered proprietor of the EUTM “SKY GALLERY”, for services including art exhibition on board aircraft. The EUTM proprietor argues that if one were to follow the applicant’s logic, namely that “SKY” is descriptive for services offered in the air/by airlines, then their own registration should be invalidated also. Given that the applicant owns a trade mark which is contrary to the reasoning advanced, it is clear that their application for invalidity has been made tactically.

The applicant argued that “SKY WIFI” consists exclusively of signs or indications which may serve in trade to designate wireless inflight internet access. The EUTM proprietor points out that such a term is not specifically covered by the registered specification.

According to the dictionary, the term “SKY” means “the region of atmosphere and outer space seen from the earth” (www.oxforddictionaries.com). According to the applicant, “SKY” is a synonym for inflight. The EUTM proprietor argues that the applicant has furnished no-proof that the average consumer would immediately, and without further reflection make a definite and direct association between the term “SKY” and the idea of “inflight”, to which it is supposedly a synonym. The term “SKY” does not describe planes, flights or modes of transport.

The EUIPO, Boards of Appeal and Courts have all found the term “SKY” to be inherently distinctive. The EUTM proprietor referred to previous decisions and judgments to support the claim that “SKY” has been found to be inherently distinctive. The decisions and judgments include, inter alia, the decision of 27/03/2008, Opposition Division B 721 920, SKY v SKY VENTURE, the decision of 17/12/2008, Opposition Division B 958 100, SKY v skymeeting, the decision of 29/09/2014, R1075/2013-4, SKY v SKYPE, the judgment of 05/05/2015, T-184/13, SKY v SKYPE, and judgment of 18/11/2014, T-510/12, SKY v EuroSky. The EUTM proprietor argues that each decision or judgment reflects a recognition of the reputation of the SKY trade mark, and a confirmation of its distinctive character.

The applicant’s evidence does not prove that the term “SKY” is common in the airline industry. The EUTM proprietor argues that each use of “SKY” is a reference to a product or service in a trade mark sense, not in a descriptive manner. Besides which, any references to the term “SKY” used in relation to goods and services that are not related to wireless inflight internet access, telecommunication services or the provision of internet access are irrelevant. Therefore evidence of “SKY BISTRO” or “Sky Chef” does not possess probative value. In addition, any evidence filed from a date after the date of application of the registration is furthermore irrelevant.

The EUTM proprietor does not refute the meaning of “Wi-Fi” as denoting a technology that allows “computers, smartphones or other devices to connect to the internet or communicate wirelessly within a particular area”. Rather, the EUTM proprietor refers to the fact that a trade mark must be assessed in its entirety, and not simply considered dependent on the meaning of its constituent parts. Even if one constituent part is descriptive, this does not make the whole descriptive.

The applicant’s application for a declaration of invalidity was essentially based on the argument of descriptiveness under Article 7(1)(c) EUTMR. The Article 7(1)(b) EUTMR argument was secondary, and based on the fact that a distinctiveness objection flows from the allegation of descriptiveness. There is therefore no specific argumentation to reply to.

The EUTM proprietor claims that the “SKY” brand enjoys an extensive portfolio. The EUTM proprietor refers to the fact that as of December 2014, the “SKY” brand was protected by over 2,900 applications and registrations in 135 territories, and enjoys national or international protection in 26 of the current 28 Member States. Included in this portfolio is the EUTM 5 297 461 “SKY BROADBAND”. The “SKY BROADBAND” service was the fastest growing broadband and telephone provider in the UK during the twelve months ending 31/12/2007. The brand “SKY” has spent over £7,500 million on marketing between 2007 and 2012, which is before the time of filing of the contested EUTM. The brand’s reputation was recognised at the EUIPO in the Opposition Division decision of 30/01/2013, B 1 589 376, SKY v RUN2SKY, where it was found:

“It is clear from the evidence filed that the opponent’s SKY trade mark has a colossal reputation in the U.K. market, especially in the field of satellite broadcasting. Despite the applicant’s assertions to the contrary, this point is beyond serious dispute. The opponent has provided cogent and apparently incontrovertible evidence that the trade mark in question has been put to intensive use in the U.K.”

The EUTM proprietor has listed in Annex 19 its other trade marks which include the term “SKY”. The EUTM proprietor argues that the relevant public is accustomed to seeing the term “SKY” used in connection with other words relevant to the products and services being provided. The EUTM proprietor points out that in the EUIPO Opposition Division decision of 31/01/2013, B 1 058 991, SKY v Skydeals, it was found that:

“The SKY trade mark belongs to that exclusive club which may accurately be referred to as a household name. Such trademarks, supported as they are by colossal advertising budgets, are rarely out of the public eye…businesses frequently make use of sub-brands, i.e. signs that derive from a principal mark and which share with it a common element, in order to distinguish the scope of one product from another.”

The EUTM proprietor has filed extensive submissions and evidence, to the number of 4,700+ pages in its first round. The EUTM proprietor has indicated that the majority of these submissions either relate to use of the term “SKY” as a house mark with additional descriptive elements, or are the documents of registrations the brand of “SKY” has across Europe. The evidence consists essentially of an indication of and purported proof of reputation and enhanced distinctiveness. For the purposes of efficiency, fairness and economy of timeliness, the evidence shall not be listed at this juncture, but will rather be listed dependant on a finding of descriptiveness under Article 7(1)(c) EUTMR, at which point it would prove essential to evaluate the probative value of such evidence in accordance with Article 52(2) EUTMR.

Applicant’s reply

The applicant has dismissed the findings by the offices and courts around the world that the term “SKY” is inherently distinctive, bearing in mind that “SKY” means “the region of atmosphere and outer space seen from the earth”. This is because the applicant argues that the interpretation of the meaning in the offices and courts is not applicable to the relevant EU customer of airline services. The understanding of the term “SKY” is not limited to the dictionary definition, but includes the perception of the general public in the EU.

The non-native English speakers from Germany, the Netherlands or Sweden, for example, will not immediately and directly consider the Oxford dictionary’s interpretation of the term “SKY” when they are in an air travel situation. Instead, they will understand it as an indication for air travel and inflight in general. The applicant argues that this statement has been supported by the evidence filed in the first round.

Whilst the decisions cited by the EUTM proprietor refer to “SKY” trade marks as having distinctiveness, the goods and services in question in those cases were different from the contested EUTM. None of the documents presented by the EUTM proprietor support the argument that “SKY” has distinctiveness for telecommunication services in the field of air travel in general and in particular for inflight wireless internet access, whilst on the contrary the applicant’s evidence of third parties using the term “SKY” for a variety of on-board services indicated that “SKY” is descriptive for inflight goods and services.

In air travel, the term “SKY” is directly linked to the sky itself as the aircraft is in the sky whilst flying. In the field of air travel the relevant consumer does not see “SKY” as an indication of trade, but rather as a mere descriptive use for air travel and inflight.

EUTM proprietor’s rejoinder

The EUTM proprietor maintains that the dictionary definition of “SKY” is relevant, as it is the reference point for natives and non-natives in order to understand words. In addition, the term “SKY” either does not have meaning in other EU languages, or it has the same meaning as in English. Considering that it has only one potential meaning throughout Europe it must therefore be considered to be distinctive for the non-English speaker also.

The relevant consumer’s interpretation of a meaning of a word does not alter if they are on a flight or not.

The case law cited reflects years of decisions across many courts. It is therefore clearly relevant. In particular, the recent Board of Appeal decisions of 12/11/2015, R3081/2014-4, § 22 stated: “The word “SKY” will be understood as the region of the atmosphere and outer space seen from the earth. It is not descriptive or weakly distinctive for any of the relevant services in class 38.”

ADMISSIBILITY

The request complies with the formalities prescribed in the EUTMR and EUTMIR, in particular in Article 56(1) EUTMR and Rule 37 EUTMIR, and is therefore admissible.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the European Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, trade marks which consist exclusively of signs or indications which may serve in trade to designate the kind, intended purpose or other characteristics of the goods or services, shall not be registered. Thus Article 7(1)(c) EUTMR pursues the aim, which is in the common interest, of ensuring that signs or indications which describe the categories of goods or services in respect of which registration is applied for remain available. Hence, this provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 31).

The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought. Accordingly, a sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by a specific intended public.

Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (10/02/2010, T-344/07, Homezone, EU:T:2010:35, § 21).

According to Article 7(2) EUTMR a trade mark shall not be registered, even if the grounds of non-registrability pertain to only part of the European Union. An obstacle in the Anglophone population of the European Union, for example, is consequently sufficient to declare the EUTM invalid.

The Cancellation Division is acutely aware of the volume of submissions submitted in these proceedings. The pages provided by the EUTM proprietor in their response alone number more than 4,700. However, the pertinent facts of the case are relatively straightforward, and the answer to the central question can be found without being overwhelmed by either party’s extensive submissions. The fundamental question is whether or not the term “SKY” possesses distinctive character for the contested services.

As both parties are aware, an assessment of the distinctive character of a trade mark must be based on the perceivable concept of that trade mark as a whole. Although the Cancellation Division has stated that the crux of the assessment of these proceedings will be based on the distinctive character of only one of the two elements of the trade mark, i.e. “SKY”, this should not be mistaken for assuming the Cancellation Division has not considered the meaning of the additional word “WIFI”.

The meaning of “WIFI” as provided by the applicant has not been denied by the EUTM proprietor, as it would be redundant to do so in light of the fact that it is such a universally recognised and understood term, not only in English, but in the majority of European languages. The applicant’s request for invalidity is against services in class 38, which consist of, essentially, forms of telecommunication and their affiliated services. The term “WIFI”, which refers to a system that allows machines to wirelessly access the internet, is undoubtedly likely to be found descriptive in relation to the majority of the selected services in class 38. The assessment, therefore, of whether or not the trade mark “SKY WIFI” as a whole is descriptive is dependant on the concept of the element “SKY”, and its effect on the otherwise descriptive element “WIFI”.

The applicant has argued that courts’ and offices’ interpretation of the term “SKY” is not applicable to the relevant EU customer of airline services. The applicant has argued that it is not only the dictionary definition of the term “SKY” which should be considered, but also the general public’s perception of the term, especially when said public is experiencing a service whilst on an aeroplane. This is based on the applicant’s argument that the term “SKY” is a synonym for “inflight”. The Cancellation Division finds to the contrary. Firstly, the applicant has not substantiated with any evidence or fact that the term “SKY” is a synonym for inflight. Secondly, whilst the Cancellation Division notes that the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it (05/12/2000, T-32/00, electronica, EU:T:2000:283, § 47), and that it is therefore not obliged to follow precedent cases from either member state national offices or its own archives (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47, and 09/10/2002, T-36/01, Glaverbel, EU:T:2002:245, § 35), it cannot ignore established and concrete case-law relating to trade mark cases from superior courts, involving trade marks possessing an identical term to that in these proceedings. With this in mind, the Cancellation Division must pay heed to analogous “SKY” trade mark cases.

In its submissions filed in response, the EUTM proprietor referred to the fact that the parties in these proceedings have a history of disputes and engagements regarding trade marks that contain the term “SKY”. One such previous proceeding was the recently published Board of Appeal decision R3081/2014-4, 10/11/2015, “JAL SKY Wi-Fi / SKY WIFI et al.” As referred to be the EUTM proprietor, the Boards found in para. 22 of said decision that:

“The word “SKY” will be understood as the region of the atmosphere and outer space seen from the earth. It is not descriptive or weakly distinctive for any of the relevant services in class 38.” [emphasis added]

The Board of Appeal decision dealt with an opposition from the EUTM proprietor in these proceedings [Sky plc/Opponent] against an international designation applied for by the applicant in these proceedings [Japan Airlines Co., Ltd./Applicant]. The Board of Appeal found in favour of the opponent, i.e. Sky plc, the EUTM proprietor in these proceedings. In doing so, the Board of Appeal identified that the term “SKY” had no descriptive meaning in relation to the services in class 38. Furthermore, the Board explained that the mere fact that the services were rendered on board an aeroplane, i.e. inflight, did not render the term “SKY” to be descriptive (see decision R3081/2014-4, 10/11/2015, “JAL SKY Wi-Fi / SKY WIFI et al.”, § 23 ). This undermines further the applicant’s argument that the term “SKY” is a synonym for “inflight”. This decision is a clear indication that the Office has found the term “SKY” to be distinctive in relation to the services which the applicant is requesting to invalidate.

The applicant referred to third parties in the trade of air-travel, who were using the term “SKY” during their inflight services. The purpose of this was to indicate that the term “SKY” is synonymous with inflight services, in particular in relation to those services in class 38. The companies using the term “SKY” included Lufthansa, Finnair, Czech Airlines, Germania, American Airlines and Thai Airways. Only two of these companies used the term “SKY” in relation to inflight internet: American Airlines and Thai Airways. As pointed out by the EUTM proprietor, the other companies used the term “SKY” for a variety of other goods and services not related to those services in class 38, i.e. an onboard bistro, magazine and shop.

Of the two companies who appear to use the term “SKY” in relation to Wi-Fi internet, i.e. services included in the contested class 38, it is not evident at which date American Airlines began to use this service, and as for Thai Airways, they began to offer this service as of 14/02/2014. This date is later than the date of application for the earlier registered EUTM. The contested EUTM was registered on 16/04/2013, but more importantly, the application was filed on 14/03/2012. In order to invalidate a registered trade mark for being descriptive, it is necessary to prove descriptiveness at the time of filing of the application. Although these facts and arguments of descriptiveness must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might nonetheless also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43). However, the Cancellation Division finds a gap of two years between the date of filing of the EUTM and the indication of use by a third party to be too long to be considered a relevant indication to allow a descriptive conclusion. In addition, the use of Thai Airways is only one piece of evidence, which does not prove probative enough to conclude that the term “SKY” is or was descriptive of inflight internet at the time of filing.

The applicant’s submissions can be summarised into two salient points: “SKY” is a synonym for inflight; “SKY WIFI” is used to indicate an internet service provided onboard an aeroplane. In regards to the first point, the applicant has not been able to prove this to be correct, either through dictionary definitions or through evidence. As for the second point, only one example of the use of the term “SKY” has been submitted in relation to inflight internet, and this example is from a date two years after the date of application of the contested EUTM. This example from Thai Airways is further lacking in probative value due to the fact that, whilst it may have presence in Europe due to flight-paths, Thai Airways is essentially an Asian company, with the majority of its evidence based outside of the European market.

The Cancellation Division explained at the beginning of the proceedings that the core consideration of the case would be the distinctiveness or potential descriptive meaning of the term “SKY”. This was justified due to the fact that “WIFI” is clearly descriptive in relation to the services, and so the concept of the additional element must be considered. The applicant has not succeeded in proving that the term “SKY” is descriptive for inflight, and so the combination “SKY WIFI” is not considered to mean inflight Wi-Fi.

In coming to this conclusion, the Cancellation Division has considered, as explained, analogous decisions from alternative offices and judgments from higher courts, in relation to the trade mark “SKY”. The analogous decisions and judgments all do two things. As well as explaining that “SKY” is a distinctive term in relation to the goods and services particular to that case, they all acknowledge the enormous reputation of the “SKY” trade mark. The applicant identified several decisions during its first submissions, whereby the term “SKY” was acknowledged as having reputation in either the United Kingdom or the European Union. The Opposition Division’s decision of 31/01/2016, B 1 589 376 “RUN2SKY” stated on page 9 that it was “clear from the evidence filed that the opponent’s SKY trade mark has a colossal reputation in the U.K market, especially in the field of satellite broadcasting.” Further, the Opposition Division’s decision of 17/12/2008, B 958 100 “SKY MEETING”, stated on page 7 that “’SKY’ alone and/or in combination with other words, descriptive of the content of the service, is well known in the UK and enjoys a reputation, in particular but not only, for the services in classes 38 and 41”. These covered services included broadcasting, communications and telecommunications. This decision also explained that it is irrelevant what the additional word element is, including if that element is descriptive. This is perfectly analogous with the trade mark in these proceedings, which consists of the term “SKY” followed by a descriptive additional term.

Furthermore, Opposition Division’s decision of 31/01/2013, B 1 058 991, SKY v Skydeals, explained that: “The SKY trade mark belongs to that exclusive club which may accurately be referred to as a household name. Such trademarks, supported as they are by colossal advertising budgets, are rarely out of the public eye…businesses frequently make use of sub-brands, i.e. signs that derive from a principal mark and which share with it a common element, in order to distinguish the scope of one product from another.” This is another example of the fact that “SKY” enjoys a high reputation, and is recognised as being used with additional descriptive elements.

The most significant indications of the reputation of “SKY” and its recognition as a distinctive element are to be found in the SKY v SKYPE cases. Originally, the EUTM proprietor in these proceedings acted as the opponent against a third party, applying for “SKYPE”. In the original Opposition Division decision of 06/07/2011 B 1 023 680, the opponent “SKY” claimed a level of reputation in the United Kingdom for goods and services including Telecommunications; broadcasting and transmission of television programmes; transmission of sound and/or pictures; communications services by satellite and/or television; computer aided transmission of message and images; telecommunications information; audio visual services, provision of audio visual content; communication services; distribution of content via the Internet and/or broadband in Class 38. In said decision, the Opposition Division found that the earlier mark was able to “unequivocally show that the mark enjoys a high degree of recognition among the relevant public.”

This decision was appealed. However, on 29/09/2014 the Board of Appeal confirmed, in its decision R1075/2013-4, that: “The evidence submitted, including the detailed and extensively substantiated description of the variety of goods and services offered by the opponent under the trade mark ‘SKY’ in the Witness Statements of Mr Simon Robert MacLennan (see para. 4) leaves no doubt that the opponent’s mark is reputed for television broadcasting and entertainment, interactive television broadcasting services and for related goods like digital set top boxes and video recorders as well as related telecommunication and online services in the United Kingdom.” (para. 39) [emphasis added]. The decision further explained that: “The fact that the opponent’s extended range of goods and services stems from their reputed traditional television broadcasting services does not preclude a reputation or enhanced distinctiveness of the trade mark ‘SKY’ for these extended goods and services. Over time companies expand their traditional business activities using the strength and the reputation of their core-brand for brand extensions to become reputed under the same brand as well” (para. 40). This extension would encompass the additional contested services in class 38 in these proceedings.

In the judgment of 05/05/2015, T-184/13, EU:T:2015:258 the Court confirmed the reputation of the earlier mark “SKY”, § 45-46:

“It should be considered, having regard to all of those factors, that the Board of Appeal was correct in finding that the SKY mark had an enhanced distinctiveness in the United Kingdom, on account of the public’s recognition of it, for ‘apparatus for recording, transmission or reproduction of sound and images’ in Class 9, ‘telecommunications’ in Class 38 and ‘entertainment’ in Class 41. In particular, contrary to what the applicant argues, the Board of Appeal did not ‘overstate’ that recognition by the public.”

“The Board of Appeal was also correct in finding that the fact that the interveners’ extended range of products stems from their reputed traditional television broadcasting services does not preclude an enhanced distinctiveness of the trade mark ‘SKY’, acquired on account of its recognition by the relevant public, from being extended to other areas of activity…”

The Cancellation Division concludes that the above assessment has shown that the term “SKY” is not a synonym for inflight, which subsequently means that “SKY WIFI”, the challenged EUTM, is not descriptive of “inflight WIFI”. Further, any doubt as to the distinctiveness of the element “SKY” in the trade mark has been eradicated due to the recognition it possesses as a trade indicator for the services in class 38, due to an acknowledgment of analogous decisions and judgments. In addition to the overlapping evidence provided by the same party on several occasions, and examined and recognised for its probative value by different Offices and Courts, the EUTM proprietor supplied over 4,700 pages in these proceedings to further prove the acquired distinctiveness of the term “SKY”. The distinctive character of the term “SKY” cannot be in any doubt.

It follows from the above that the Cancellation Division does not find the EUTM to have been registered contrary to Article 7(1)(c) EUTMR for the contested services in class 38.

Non-distinctiveness – Article 7(1)(b) EUTMR

Considering that the request for invalidation under Article 7(1)(c) EUTMR was not successful, the Cancellation Division shall examine the submissions for the remaining goods and services under Article 7(1)(b) EUTMR.

For a trade mark to possess a distinctive character within the meaning of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings.

It is apparent from settled case-law that distinctive character must be assessed, first, by reference to the relevant goods and, second, by reference to the perception of the relevant public (08/05/2008, C-304/06, Eurohypo, EU:C:2008:261, § 66 and 67). It should be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, EU:C:1999:323, Lloyd Schuhfabrik Meyer, § 26).

It is noted by the Cancellation Division that the substantial part of the submissions focused on the argument of descriptive meaning. In the applicant’s request, the argumentation that the trade mark is non-distinctive was based on the statement that because the trade mark has clear descriptive meaning, it is therefore subsequently non-distinctive. The Cancellation Division has already found that the term “SKY WIFI” is not descriptive for the contested services. Without a more specific argumentation as to why the trade mark is non-distinctive, the Cancellation Division cannot consider the validity of this argument.

Due to the lack of reasoning, the Cancellation Division cannot find that the trade mark lacks distinctiveness. In addition, the distinctiveness of the term “SKY” has been thoroughly investigated and found to possess reputation for the contested services, due to analogous decisions and judgments. It follows that the EUTM has not been registered contrary to Article 7(1)(b) EUTMR for the contested services.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

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 applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Richard BIANCHI

Dafydd COLLINS

Lars HELBERT

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.