OPPOSITION No B 2 539 305

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

a g a i n s t

Tianjin Skyland Bicycle Co., Ltd., 105-43 No. 1 Juying Road, Jinnan Economic Development District (East Zone), Tianjin, People’s Republic of China (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 539 305 is upheld for all the contested goods.

2. European Union trade mark application No 13 727 623 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 727 623. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604. In relation to this earlier right, the opponent invoked Article 8(1)(b) and 8(5) EUTMR. In addition, in relation to other earlier rights, the opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 2 500 604.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

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.

The contested goods are the following:

Class 12: Bicycles; cycles; mopeds, electric bicycles; electric tricycles; electric vehicles; scooters (vehicles); carrier tricycles; cycle cars (excluding toys); tricycles.

The contested electric vehicles are included in the broad category of the opponent’s vehicles. Therefore, they are considered identical.

The contested bicycles; cycles; mopeds, electric bicycles; electric tricycles; scooters (vehicles); carrier tricycles; cycle cars (excluding toys); tricycles are included in the broad category of the opponent’s apparatus for locomotion by land. Therefore, they are considered identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed essentially at the public at large. The relevant public’s level of attention will vary from average to high, depending on the price and frequency of purchase of these goods.

3. The signs

SKY
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 given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a word mark, consisting of the verbal element ‘SKY’.

The contested sign is a figurative mark which contains the verbal element ‘SKYLAND’, written in slightly stylised upper case black letters. This element is underlined by a thin horizontal black line. Under that line there appear several characters in a foreign language/alphabet (possibly of Asian origin), which is, in general, incomprehensible for the public in the relevant territory. Considering the positioning of these characters and the overall structure of the sign, consumers will most likely perceive the lower half of the sign as a representation of the verbal element ‘SKYLAND’ in a foreign language (possibly, an Asian language).

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 conjoined expression ‘SKYLAND’, considered as a whole, has no univocal meaning for the relevant public and is not used in common parlance. It may refer to, inter alia, a ‘land in the sky’ or a ‘land named sky’; however, it may also be perceived as a conjunction with no clear meaning as a whole. In any case, considering the aforementioned principle, it is reasonable to assume that the relevant consumers will instantly perceive the verbal element ‘SKYLAND’ of the contested sign as the sum of its parts, thus splitting it into the words ‘sky’ and ‘land’, because they are both words known to them.

The word ‘SKY’ (contained in both signs) is neither descriptive nor lacking distinctiveness for any of the relevant goods in Class 12; it does not describe or even allude to any of their essential characteristics. As regards the contested sign, even considering that the word ‘LAND’ appears in a conjoined verbal element with no univocal meaning as a whole, this element is likely to be perceived as an allusion to the nature of the relevant goods in Class 12, namely as an allusion that they are land vehicles. Therefore, this element is weak. Furthermore, as explained above, the element present in the lower part of the contested sign is illegible and incomprehensible for the public in the relevant territory, which will most likely perceive it as a representation of the verbal element ‘SKYLAND’ in a foreign language and, consequently, will not pay significant attention to these foreign characters. Finally, the horizontal line and the overall stylisation of the sign will be perceived as having a weaker than average distinctiveness, because such elements are common in many trade marks and have a role which is essentially ornamental, i.e., to bring the verbal element(s) of the mark to the attention of the public.

Therefore, for the aforementioned reasons, the public will attribute more trade mark significance to the element ‘SKY’ and this is the most distinctive element of the contested sign.

Contrary to the applicant’s claim, the contested sign has no elements which could be considered clearly more dominant (visually eye‑catching) than other elements. Although the foreign characters in the lower part of the sign are slightly larger than the upper element ‘SKYLAND’, they are far from overshadowing the latter. Furthermore, and more importantly, the verbal element ‘SKYLAND’ appears in the initial and top part of the sign, which will first attract the public’s attention.

The earlier mark has no element that 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 and plays an independent and distinctive role at the beginning of the contested sign’s verbal element, ‘SKYLAND’. As mentioned above, this is because the English-speaking public will instantly break down the conjoined term of the contested sign into the words ‘sky’ and ‘land’.

The signs differ in the overall stylisation and horizontal line of the contested sign, in the additional word ‘land’ and in the foreign characters present therein. However, the element ‘land’ is weak, whereas the elements present in the lower part of the sign are illegible and will not be paid significant attention by the public.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, considering that the most distinctive element of the contested sign reproduces the earlier mark, the signs are considered visually similar to an average degree.

Aurally, the contested sign will be pronounced in two parts, corresponding to the two words composing its verbal element: ‘SKY’ and ‘LAND’. The first part, ‘SKY’ (which plays a distinctive role within the contested sign), and the earlier mark are pronounced identically. The pronunciation differs in the sound of the word ‘LAND’ of the contested sign, which has no counterpart in the earlier mark.

Overall, considering the weakness of the differing component ‘LAND’ and the fact that the aurally most conspicuous part of the contested sign - its beginning ‘SKY’ - reproduces identically the earlier mark, the marks are aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the word ‘SKY’, contained in both signs, 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’ (information extracted from Collins English Dictionary online, at http://www.collinsdictionary.com/). The word ‘LAND’ of the contested sign will be perceived as, inter alia, ‘the solid part of the surface of the earth as distinct from seas, lakes, etc.’ or ‘any tract of ground capable of being owned as property’ (information extracted from Collins English Dictionary online, at http://www.collinsdictionary.com/). As mentioned above, the conjoined element of the contested sign has no clear or univocal sense as a whole, although a part of the public may perceived it as a reference to a ‘land in the sky’ or a ‘land named sky’; in any case, the public will perceive clearly the words of which this conjoined element is composed.

Therefore, the marks are conceptually similar to an average degree, as they share the concept of ‘sky’, which is inherently distinctive in relation to the goods at issue.

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

4. 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 opponent, 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 opponent 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical to the goods covered by earlier United Kingdom trade mark No 2 500 604.

The signs under comparison are visually, aurally and conceptually similar to an average degree on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included, yet clearly perceptible, in the beginning of the contested sign’s verbal element, ‘SKYLAND’. The signs differ in the additional word, ‘LAND’, in the stylisation and figurative elements and in the foreign characters in the contested sign.

As mentioned above, where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. In addition, the slight stylisation of the verbal element of the contested sign and the horizontal line placed below it will be perceived as ordinary graphic means of bringing the element in question, ‘SKYLAND’, to the attention of the public. Therefore, the relevant public will pay little attention to this stylisation.

As seen above in section c) of this decision, the elements written in the lower half of the contested sign will be perceived by the relevant public as a term in a foreign alphabet (possibly, as a representation of the sign ‘SKYLAND’ in a foreign language). As, in general, the relevant consumer in the United Kingdom cannot read or understand these characters, it will perceive the element but will ignore it or pay it only a scarce amount of attention because it is visually alien and incomprehensible.

Furthermore, it is decisive that the relevant public will immediately perceive the word ‘SKY’ as an element in the contested sign, recognising the meanings of the conjoined words ‘SKY’ and ‘LAND’, for the reasons explained above. It should also be noted that the coinciding meaningful element ‘SKY’ is considered distinctive to an average degree in relation to all the relevant goods.

In addition, it cannot be overlooked that this identical element will also establish a conceptual link between the signs, as explained above in section c) of this decision, thus further contributing to the finding of similarity between the marks.

Therefore, given the reproduction of the 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. Indeed, in the present case, consumers may believe that the contested sign, ‘SKYLAND’, is a new version or a new brand line of goods provided under the opponent’s ‘SKY’ mark.

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 must be noted that the contested goods are identical to the goods covered by the earlier mark.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the word ‘SKY’. In support of its argument the applicant refers to a list of several EU trade mark registrations.

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. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that begin with or contain the word ‘SKY’, in relation to the relevant goods.

Consequently, the Opposition Division sees no valid reason to consider the inherent distinctiveness of the earlier mark to be of a less than normal degree. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. Indeed, in the cases given by the applicant (Opposition Decisions in cases B 2 190 794 ‘SKY vs SKYNECTOR’ and B 1 771 701 ‘SKY vs SKYLE’S’, and Boards of Appeal Decision in case R 1253/2014-4 ‘SKYLOTEC vs SKY’) it was considered that the element ‘SKY’ does not play an independent distinctive role in the contested signs. Consequently, the conclusions reached in the aforementioned decisions cannot be transferred to the present case.

Considering all the above, the Opposition 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 goods, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition 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 opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier United Kingdom trade mark registration No 2 500 604 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra IBAÑEZ	Gueorgui IVANOV	Denitza STOYANOVA-VALCHANOVA

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 Opposition 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.