OPPOSITION No B 2 769 431

Shape6

OPPOSITION DIVISION

OPPOSITION No B 2 769 431

Sky limited, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent), represented by CMS Cameron McKenna Nabarro Olswang Posniak i Sawicki SP.K., Emilii Plater 53, 00-113 Warsaw, Poland (professional representative)

a g a i n s t

Shenzhen Skygrand Technology Co., Ltd., 18B Block B, Xiandaizhichuang Bldg., Huaqiang North Rd., Futian District, Shenzhen, Guangdong Province, People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 - Local 1 "Llopis & Asociados"., 03012 Alicante, Spain (professional representative).

On 30/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 769 431 is partially upheld, namely for the following contested goods:

Class 9: Couplers [data processing equipment]; USB flash drives; bags adapted for laptops; branch boxes [electricity]; radios; satellite navigational apparatus; smartphones; mobile telephones; loudspeakers; portable media players; chips [integrated circuits]; alarms; batteries, electric, for vehicles; phototelegraphy apparatus; goggles for sports; divers' masks; nose clips for divers and swimmers; pince-nez.

Class 14: Charms [jewellery, jewelry (am)]; necklaces [jewellery, jewelry (am)]; jewellery; ornaments [jewellery, jewelry (am)]; watches; clocks.

2. European Union trade mark application No 15 416 415 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 416 415 for the figurative mark Shape1 , namely against all the goods in Classes 9 and 14.

The opposition is based on the following earlier rights:

1. United Kingdom trade mark registration No 2 500 604 for the word mark ‘SKY’;

2. European Union trade mark registration No 6 870 992 for the word mark ‘SKY’;

3. European Union trade mark registration No 14 893 176 for the word mark ‘SKY’;

4. European Union trade mark registration No 10 155 604 for the word mark ‘SKY PLUS’;

5. Well-known trade mark ‘SKY’ in the United Kingdom;

6. Non-registered trade mark ‘SKY’, used in the course of trade in the United Kingdom;

7. Non-registered trade name ‘SKY’, used in the course of trade in the United Kingdom;

8. Non-registered company name ‘SKY’, used in the course of trade in the United Kingdom.

In relation to the earlier registered marks (earlier rights 1-4) the opponent invoked Article 8(1)(b) EUTMR, and in relation to earlier rights 1-3 it invoked also Article 8(5) EUTMR. In relation to the earlier well-known mark (earlier right 5) the opponent invoked Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR, and in relation to the non-registered signs used in the course of trade in the United Kingdom (earlier rights 6-8) the opponent invoked Article 8(4) EUTMR.

SUBSTANTIATION of European Union trade mark registration No 14 893 176

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

On 22/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material, which expired on 27/01/2017.

The documents filed by the opponent along with the notice of opposition, which were received by the Office on 09/09/2016, and the documents filed by the opponent along with its observations, which were received by the Office on 20/01/2017 and 25/01/2017, are not sufficient to substantiate the opponent’s earlier European Union trade mark registration No 14 893 176 for the word mark ‘SKY’.

In the present case, the opponent is the company Sky limited (changed from Sky plc), with an address in the United Kingdom. The owner of earlier EUTM No 14 893 176 is the company Sky International AG, with an address in Switzerland. This company was the owner of the above mentioned earlier mark also at the time of filing of the opposition. Therefore, the opponent is not the owner of the above mentioned earlier EUTM on which the opposition is based.

The opponent indicated in the notice of opposition that it is the licensee of the earlier EUTM.

According to Article 25 EUTMR and Articles 26 and 29 EUTMR, the Office registers and publishes licence agreements in respect of European Union trade marks. If the earlier mark basis of the opposition subject to the licence agreement is an EUTM, the opponent does not have to submit any evidence of the licence contract as long as the licence has been registered and published at the Office according to Article 25 EUTMR. The opponent will still have to submit evidence that proves that the licence agreement entitles it to act in defence of the mark if the licence is registered and published at the Office, if this evidence was not attached to the original request filed according to Article 25(5) EUTMR. It is not sufficient to prove the registration of the licence agreement - the opponent’s entitlement to defend the EUTM must also be submitted in writing.

In the present case, there is no recordal on the file concerning the registration and publication of any license agreement with the company Sky limited (previously Sky plc) for the earlier EUTM No 14 893 176 on which the opposition is based and the opponent did not submit a license agreement or any other documents in relation to its entitlement to file an opposition based on this earlier mark within the relevant period. Therefore, there are no indications of the possible entitlement of the opponent within the relevant time limit.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on earlier European Union trade mark registration No 14 893 176.

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.

1. Examination of the opposition in relation to earlier United Kingdom trade mark registration No 2 500 604 for the word mark ‘SKY’.

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.

a) The goods and services

The goods and services of UK trade mark registration No 2 500 604 on which the opposition is based belong to Classes 3, 4, 7, 9, 11, 12, 16-18, 25, 28 and 35-45. The full list of the opponent’s goods and services (which is not reproduced here due to its length) can be found in the documents submitted together with the notice of opposition, which can be accessed through https://euipo.europa.eu.

The contested goods are the following:

Class 14: Alloys of precious metal; works of art of precious metal; charms [jewellery, jewelry (am)]; necklaces [jewellery, jewelry (am)]; jewellery; ornaments [jewellery, jewelry (am)]; precious metals, unwrought or semi-wrought; pearls made of ambroid [pressed amber]; watches; clocks.

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 terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

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.

Contested goods in Class 9

The contested radios; mobile telephones are identically contained in the opponent’s list of goods.

The contested USB flash drives are included in the broad category of, or overlap with, the opponent’s apparatus for data storage. Therefore, they are identical.

The contested bags adapted for laptops are included in the broad category of, or overlap with, the opponent’s cases, containers, protective coverings and parts and fittings therefore, all for use with MP3 players, music storage devices, media storage devices and other consumer electronic devices. Therefore, they are identical.

The contested satellite navigational apparatus overlap with the opponent’s computers in, for example, navigation apparatus for vehicles [on-board computers]. Since there is an overlap between these goods, they are identical.

The contested smartphones are included in the broad category of, or overlap with, the opponent’s telephones. Therefore, they are identical.

The contested loudspeakers; portable media players are included in the broad category of, or overlap with, the opponent’s sound reproducing apparatus and instruments. Therefore, they are identical.

The contested alarms include, as a broader category, the opponent’s electric alarms. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested batteries, electric, for vehicles are included in the broad category of the opponent’s apparatus and instruments for accumulating electricity. Therefore, they are identical.

The contested phototelegraphy apparatus are included in the broad category of, or overlap with, the opponent’s telecommunications apparatus and instruments. Therefore, they are identical.

The contested goggles for sports are protective eyewear. Pince-nez are eyeglasses that are held in place only by means of a clip over the bridge of the nose. These contested goods are included in the broad category of, or overlap with, the opponent’s optical apparatus and instruments, which include eyewear. Therefore, they are identical.

The contested couplers [data processing equipment] are similar to the opponent’s computers; computer hardware, as they usually coincide in producers and distribution channels. The contested goods are needed in order for computer to function. Thus there is a close relationship and complementary character between the goods. Furthermore, they are can be directed at the same public.

The contested branch boxes [electricity] are used for ducting, isolating, cabling and laying cables and pipes in electrical and electronic installations. These goods are at least similar to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity as all of them are components for electricity, and therefore they have very similar natures and purposes. They usually have the same producers, relevant public and distribution channels.

The contested chips [integrated circuits] refer to a very small electronic circuit consisting of an assembly of elements made from a chip of semiconducting material, such as crystalline silicon. The opponent’s integrated circuit cards pre-recorded with computer video games and/or quizzes are usually plastic cards that have computer chips implanted into them that enable the cards to perform certain functions. The contested goods and the opponent’s goods have some points in common as the contested chips [integrated circuits] are essential for the opponent’s goods to perform their function. The contested goods and the opponent’s goods can also have the same manufacturers and distribution channels and are complementary to each other. Therefore, they are considered similar.

The contested divers' masks; nose clips for divers and swimmers have relevant connections with the opponent’s life-saving apparatus and equipment. These goods may have the same ultimate purpose (e.g. protection, life-saving) and they have similar natures. Furthermore, they often have the same distribution channels, specialised in the marketing of life-saving and protective equipment, which includes goods necessary for rescue operations, whether in land, water (diving equipment) or aircraft environments. Where this is the case, the goods will target the same consumers. Therefore, they are considered similar.

Contested goods in Class 14

The contested charms [jewellery, jewelry (am)]; necklaces [jewellery, jewelry (am)]; jewellery; ornaments [jewellery, jewelry (am)]; watches; clocks share some relevant points in common with the opponent’s the bringing together, for the benefit of others of a variety of goods namely jewellery, clocks, watches, enabling customers to conveniently view and purchase those goods including via an Internet website, an interactive television shopping channel, a digital television shopping channel, an Internet walled garden or by means of interactive television and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media in Class 35.

The opponent’s services are essentially retail services enabling customers to conveniently view and purchase the goods brought together. Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested charms [jewellery, jewelry (am)]; necklaces [jewellery, jewelry (am)]; jewellery; ornaments [jewellery, jewelry (am)]; watches; clocks are similar to a low degree to the respective categories of the opponent’s the bringing together, for the benefit of others of a variety of goods namely jewellery; clocks, watches, enabling customers to conveniently view and purchase those goods including via an Internet website, an interactive television shopping channel, a digital television shopping channel, an Internet walled garden or by means of interactive television and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media in Class 35 (considering that charms [jewellery, jewelry (am)]; necklaces [jewellery, jewelry (am)]; ornaments [jewellery, jewelry (am)] are included in the broader category of ‘jewellery’ and are, therefore, identical to it).

However, the same does not apply for the remaining contested goods in Class 14, namely alloys of precious metal; works of art of precious metal; precious metals, unwrought or semi-wrought; pearls made of ambroid [pressed amber] when compared to the opponent’s goods and services in Classes 3, 4, 7, 9, 11, 12, 16-18, 25, 28 and 35-45. The goods and services under comparison have different natures, purposes and methods of use and are not usually produced or provided by the same undertakings. They are neither complementary nor in competition.

In relation to the opponent’s retail services in Class 35, when compared to the abovementioned contested goods, apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The opponent’s services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods (or other forms of services around the sale of goods) covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail/wholesale/mail order services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical.

Therefore, the abovementioned contested goods are dissimilar to all of the opponent’s goods and services.

b) 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 or similar (to different degrees) are directed at the public at large and partly at business customers with specific professional knowledge or expertise (e.g. in the case of some electric or electronic components in Class 9).

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods purchased.

c) The signs

SKY

Shape2

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 mark is a word mark. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark consisting of the verbal element ‘Skygrand’, depicted in slightly stylised title case letters.

The earlier mark, ‘SKY’, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon that is characteristically blue or grey during the day, red in the evening, and black at night’, ‘outer space, as seen from the earth’ (information extracted from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/sky on 14/08/2019). This word has no relevant connection to any of the relevant goods and services and is, therefore, of normal distinctiveness.

The contested mark’s verbal element, ‘SKYGRAND’, as a whole, has no meaning for the public in the relevant territory.

It should be noted that the Court has held that, although average consumers normally perceive a mark as a whole and do 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).

Consequently, the relevant consumers will perceive it as a combination of the words ‘SKY’ and ‘GRAND’ because these are both words known to them.

The word ‘SKY’ will be perceived with the meaning described above. The considerations of its distinctiveness are equally valid in relation to the contested sign and the contested goods found to be identical or similar (to different degrees) to those of the earlier mark.

The second part, ‘GRAND’, will be perceived as an adjective meaning ‘large or impressive in size, extent, or consequence’, ‘characterized by or attended with magnificence or display; sumptuous’, ‘of great distinction or pretension; dignified or haughty’. Although this element may allude to some positive values, its use is unusual and appears exaggerated in relation to goods such as those at issue in Classes 9 and 14. Therefore, despite its positive connotation, the Opposition Division sees no reason to consider the inherent distinctiveness of this term to be less than average.

As a whole, the word combination ‘SKYGRAND’ will be perceived by the relevant public as the mere combination of the meaningful elements ‘SKY’ and ‘GRAND’. In any event, the element ‘SKYGRAND’ as a whole is of average distinctiveness in relation to the relevant goods.

Visually, the signs coincide in the word ‘SKY’, which constitutes the earlier mark in its entirety and is included as an identifiable element at the beginning of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The marks differ in the additional conjoined word ‘GRAND’ placed at the end of the contested sign’s verbal element, ‘SKYGRAND’. They differ also in the stylisation of the verbal element of the contested sign, which is not particularly elaborate and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.

Therefore, considering that the sole and distinctive verbal element of the earlier mark retains an independent and distinctive role at the initial part of the contested sign, it is considered that the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘SKY’, which constitutes the entire earlier mark and is present at the beginning of the contested sign’s verbal element, and which will be pronounced in one syllable. The pronunciation differs in the sound of the word ‘GRAND’ at the end of the contested sign, which has no counterpart in the earlier mark and will also be pronounced in a single syllable.

Therefore, considering the normal distinctiveness of the coinciding component ‘SKY’ and the fact that it is placed in the most aurally conspicuous part of the contested sign - its beginning - the marks are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

There is a conceptual link between the signs due to the coinciding word ‘SKY’. The marks differ in the additional concept conveyed by the contested sign, that of the word ‘GRAND’.

As indicated above, the word combination ‘SKYGRAND’ has no clear univocal meaning that would be different from the simple sum of the meaningful elements of which it is composed. In any case, the public will be aware of the semantic content of the word ‘SKY’ at the beginning of the contested sign. This word is inherently distinctive in relation to the goods at issue and, therefore, this coincidence generates at least an average degree of conceptual similarity between the marks.

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

d) 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 the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The goods and services under comparison are partly identical or similar (to different degrees) and partly dissimilar. The earlier mark has an average degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to an average degree on account of the coinciding verbal element ‘SKY’, constituting the earlier mark in its entirety and fully included as an identifiable and distinctive element at the beginning of the contested sign. The marks differ in the additional conjoined word, ‘GRAND’, of the contested sign, which will not go unnoticed by consumers.

Nevertheless, given the reproduction of the distinctive and initial element ‘SKY’ in the contested sign, it is likely that, even if the relevant public displays a higher level of attention in relation to some of the goods and services, it 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 legitimately believe that the contested sign is a new extension/continuation or a new brand line of goods or services, provided under the opponent’s ‘SKY’ mark, because the addition of sub-brands attached to the main/house-brand is a common market practice. In other words, consumers may confuse the commercial origins of the goods and services at issue, assuming that they come from the same undertaking or from economically linked undertakings.

Furthermore, the likelihood of confusion for the relevant public cannot safely be excluded for the contested goods that are similar to only a low degree to services of the earlier mark, due to the relevant visual, aural and conceptual similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 500 604.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including to a low degree) to goods and services of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. The same applies as regards the opponent’s claim that it has a family of marks.

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

2. Examination of the opposition in relation to earlier European Union trade mark registrations No 6 870 992 and No 10 155 604

a) The goods and services

The goods and services of European Union trade mark registration No 10 155 604 for the word mark ‘SKY PLUS’ belong to Classes 9, 16, 28, 35, 36, 38, 41, 42 and 45 and the goods and services of European Union trade mark registration No 6 870 992 for the word mark ‘SKY’ belong to Classes 3, 4, 7, 9, 11, 12, 16-18, 25, 28 and 35-45. The full lists of the opponent’s goods and services (which is not reproduced here due to its length) can be found in the documents submitted together with the notice of opposition, which can be accessed through https://euipo.europa.eu.

The remaining contested goods, for which the opposition is not successful on the basis of United Kingdom trade mark registration No 2 500 604 examined above, are the following:

Class 14: Alloys of precious metal; works of art of precious metal; precious metals, unwrought or semi-wrought; pearls made of ambroid [pressed amber].

The goods and services of these earlier marks were in their vast majority already compared to the remaining contested goods as most of them are covered by those protected by earlier UK trade mark registration No 2 500 604 already compared above. Nevertheless, the Opposition Division notes that these goods and services of the opponent encompass various goods and services in other fields of the economy than those of the remaining contested goods in Class 14. The goods and services under comparison have different natures, purposes and methods of use and are not usually produced/provided by the same companies. They are neither strictly complementary nor in competition.

Therefore, the abovementioned contested goods are dissimilar to all of the opponent’s goods and services.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on the above mentioned earlier trade mark registrations.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Consequently, the outcome cannot be different with respect to the goods in Class 14 for which the opposition has already been rejected in the previous section. No likelihood of confusion exists with regard to those dissimilar goods also in relation to earlier European Union trade mark registrations No 6 870 992 and No 10 155 604.

EARLIER WELL-KNOWN MARK – ARTICLE 8(2)(C) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

In its notice of opposition, the opponent claims to have a well-known mark in the sense of Article 6bis of the Paris Convention for the word mark ‘SKY’ in the United Kingdom in relation to the following goods and services:

Class 9: Broadcasting-related and television-related apparatus; apparatus for decoding encoded signals; telecommunications equipment; data processing apparatus; apparatus for recording, transmitting, reproducing or receiving sound, images and/or audio visual content; apparatus for use in the decoding and/or reception of satellite, terrestrial or cable broadcasts; computer hardware; computer games programmes downloaded via the internet; computer programmes for interactive television and interactive games; computer games apparatus adapted for use with television receivers; remote controls; games controllers; games consoles; set-top boxes; personal video recorders; recorded programmes for broadcasting or other transmission on television, mobile telephones and on PCs; encoded cards; electronic publications.

Class 16: Printed matter; magazines.

Class 28: Games; electronic games apparatus; games controllers.

Class 35: Advertising; advertising services; airtime advertising sales; media solutions for advertising; producing advertising and promotional campaigns; interactive television advertising; interactive television programme sponsorship; television programme sponsorship services; online advertising; digital text advertising; print advertising; market research services; market research for compiling information on viewers of television; market research services relating to broadcast media; market research for advertising; research services relating to advertising and marketing; interpretation, analysis and provision of market research data; customer information and consultancy services in relation to broadcast reception apparatus and instruments and parts and fittings therefor including cable, satellite and digital reception.

Class 36: Credit card services; the provision of warranties and assistance in relation to broadcast reception apparatus and instruments and parts and fittings therefor including cable, satellite and digital reception.

Class 37: Maintenance services; repair services; installation services; installation, maintenance and repair of communications, broadcasting and television-related apparatus and equipment.

Class 38: Telecommunications; broadcasting services; broadcasting and transmission of television programmes; transmission of sound and/or pictures; communications services by satellite and/or television; computer aided transmission of messages and images; telecommunications information; audio visual services; provision of audio visual content; communication services; distribution of content via the Internet and/or broadband and/or mobile telephone; broadcasting and transmission of interactive television, interactive games, interactive news, interactive sport and interactive entertainment; providing movies and television programmes to viewers on demand and near on demand; enabling access to the Internet; internet portal services; web portal services; provision of broadband services; providing internet chatrooms, message boards and forums.

Class 39: Travel arrangement; travel agency services; booking agency services; arranging, booking and reserving holidays, travel and tours by land, sea and air; information and advisory services relating to the aforesaid services; travel services; travel ticket reservation services.

Class 41: Entertainment; television entertainment services; production and presentation of television programmes; audio visual services; provision of audio visual content; distribution of entertainment via the Internet and/or broadband and/or mobile telephone; on-line game services; games portal services; interactive services for television viewers; production presentation and distribution of television programmes, interactive television, interactive games and interactive entertainment; provision of interactive entertainment, news and sport for television viewers; viewing guide services; providing movies and television programmes to viewers on demand and near video on demand; electronic publications (not downloadable).

Class 42: Design and development of computer hardware; information provided on-line from a computer database or via the Internet; providing access to a database storing information relating to a variety of goods; home computer services.

The remaining contested goods are the following:

Class 14: Alloys of precious metal; works of art of precious metal; precious metals, unwrought or semi-wrought; pearls made of ambroid [pressed amber].

According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR ‘earlier trade marks’ means:

marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

Article 8(2)(c) EUTMR, in general, defines the earlier trade mark only ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Thus, the grounds for refusal and opposition are those provided by Article 8(1) EUTMR.

In order for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable, the following has to be established:

a) the earlier mark was well-known in the relevant territory on the date when the contested EUTM application was filed and

b) because of identity with or similarity of the contested mark to the earlier well known 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 relevant territory.

With regard to the second requirement, these are all the conditions that have to be fulfilled to render Article 8(1)(b) EUTMR applicable, namely identity or similarity between the conflicting signs and identity or similarity between the goods or services covered by the signs, and a consequent likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

The goods and services of the earlier well-known mark are included among the goods and services of earlier United Kingdom trade mark No 2 500 604 examined above or are very similar to those goods and services. Consequently, the Opposition Division notes that the goods and services of this earlier mark are also dissimilar to the remaining contested goods in Class 14, since they have different natures and purposes and they are usually provided by different companies through different channels to consumers with very different needs. They are neither complementary nor in competition.

Consequently, one of the necessary conditions for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable is not fulfilled, that is identity or similarity between the goods and services.

The opposition must, therefore, be rejected insofar as it is based on Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR for the unregistered word mark ‘SKY’ well-known in the United Kingdom.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier United Kingdom trade mark registration No 2 500 604, ‘SKY’.

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

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

 The signs must be either identical or similar.

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

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the United Kingdom.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 09/05/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, which belong to Classes 9, 16, 28, 35, 36, 37, 38, 41 and 42. The full lists of the opponent’s goods and services for which it has claimed reputation (which is not reproduced here due to its length) can be found in Attachment 1 to the notice of opposition, which can be accessed through https://euipo.europa.eu.

The remaining contested goods for which the opposition is not successful under Article 8(1)(b) EUTMR are the following:

Class 14: Alloys of precious metal; works of art of precious metal; precious metals, unwrought or semi-wrought; pearls made of ambroid [pressed amber].

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 20/01/2017 and 25/01/2017 the opponent submitted the following evidence:

 Annex 1, containing the following documents:

o A document prepared by the opponent in the form of a table and entitled ‘Chronology of Events in Evolution of Sky Business’, identifying key events in the opponent’s history and in that of the ‘SKY’ brand until 2011. According to the document, the earliest predecessor of the opponent, Sky Television, was incorporated in 1980. Over the years, the opponent has launched several ‘SKY’-branded TV channels and has signed various agreements for the provision of television coverage of various events. The document also mentions the provision of broadband, telephony and messaging services, as well as betting over the internet.

o A brochure entitled ‘SKY – 20 years on …’, providing a timeline of events in the opponent’s history from 1989 to 2009 and containing information about the history and the content of the opponent’s TV channels.

 Annex 2: a document prepared by the opponent in the form of a table containing a list of positive decisions taken as of July 2015 in relation to ‘SKY’ marks globally, including in the European Union. The list gives the contested trade mark, the date of the decision and the relevant classes of the Nice Classification for each case.

 Annex 3: a witness statement dated 12/01/2017 by Mrs Emma Campbell, Head Counsel of IP and Operations of the Sky Group. The document contains an overview of the activities and history of the Sky Group (referred to as Sky). It states that Sky operates the leading pay television service in the United Kingdom and the Republic of Ireland and broadcasts a wide range of TV channels. It is stated that the ‘SKY’ brand is also well known in the UK for broadband and telephony goods and services. According to the document, by June 2007, Sky had achieved 70% network coverage with its ‘SKY BROADBAND’ service. By the end of 2014, Sky had served around 20 million customers across Austria, Germany, Italy, Ireland and the UK. The witness statement includes tables containing turnover figures for Sky for 2000-2014, subscriber figures for the UK and Ireland for ‘SKY TV’ for 2008-2014, subscriber figures for ‘SKY+’ services for 2002-2009, and subscriber figures for ‘SKY BROADBAND’ internet services and for ‘SKY TALK’ telephone services for 2006-2014. According to this document, the opponent provided around 28 ‘SKY’-branded TV channels in 2013. The witness statement makes reference to the following exhibits (some exhibit numbers not mentioned as the exhibits do not exist (exhibits 1, 2, 42, 52 and 59), as indicated by the opponent):

o Exhibit 3: press releases and network summaries dated 1985-1988, some of which report on the first use of the ‘SKY’ brand in relation to television channels. The first ‘SKY’-branded channel began broadcasting in 1984.

o Exhibits 4-5, 7-9, 34, 37-38, 40-41, 44-46, 48-50, 55 and 63: press cuttings dated between 1983 and 2010, published in various online and print media in the United Kingdom or on the opponent’s website. The articles relate to the opponent’s business and contain various direct or indirect references to the well-known character of the opponent’s signs (inter alia, ‘SKY’, ‘SKY CHANNEL’, ‘SKY TELEVISION’, ‘SKY ONE’, ‘SKY MOVIES’, ‘SKY SPORTS’, ‘SKY NEWS’, ‘SKY+’, ‘SKY DIAL’, ‘SKY BROADBAND’, ‘SKY MOBILE TV’, ‘SKY BET’, ‘SKY TRAVEL’, ‘SKY MAGAZINE’, ‘SKY GNOME’ and ‘SKY MEDIA’) used in relation to television and telephony services, interactive online platforms, video recorders and set-top boxes, magazines, advertising and sponsorship services.

o Exhibit 6: an extract from the opponent’s website www.sky.com entitled ‘Preparing for your Sky installation’ and copies of sample subscriber contracts dated 2004-2008.

o Exhibit 10: a list of decisions with positive outcomes for the opponent taken in relation to ‘SKY’ marks globally until 2010.

o Exhibit 11: a table prepared by the opponent containing versions of ‘SKY’, ‘SKY SPORTS’, ‘SKY ONE’, ‘SKY NEWS’ and ‘SKY MOVIES’ logos used according to the opponent up to 2010.

o Exhibit 12: photographs of ‘SKY’-branded envelopes.

o Exhibit 13: an undated Wikipedia extract referring to the ‘SKY+’ video recorder from a page modified in 2008, a page from the website http://techdigestuk.typepad.com obtained on 03/12/2008 with information about a new interactive recording feature for the SKY+ device, and copies of Currys (a UK retailer) brochures, some of which with indications that they were printed in 2006, promoting ‘SKY+’ boxes and packages.

o Exhibit 14: extracts from the Broadcasters’ Audience Research Board (BARB) website, with a reference to 2014, providing information about the organisation, which provides official viewing figures for UK television audiences. The extracts provide information about television ownership and viewing in the UK until 2013.

o Exhibit 15: a document containing a table, allegedly compiled using data from BARB, concerning the viewing figures for various ‘SKY’ channels for March 2004-March 2014.

o Exhibit 16: a witness statement dated 16/09/2005 by Mr Nigel Walley, Managing Director of Decipher Consultancy Limited, an expert consultancy firm in the area of digital media strategy in the United Kingdom. According to the statement, ‘SKY’ is one of the best-known brands in the UK in the television field. The witness statement refers to the following three exhibits:

- Exhibit NW1: a document entitled ‘Background & Information on Decipher’, dated June 2005, providing information about the consultancy company, its management and its activities.

- Exhibit NW2: a document entitled ‘Interactive Technology Road Map’, prepared by Decipher in January 2000, providing information about the consultancy company and an overview of interactive technology.

- Exhibit NW3: a document entitled ‘Creating Premium Applications and Content for 2½G & 3G Wireless’, prepared by the company ActiveSky, referring to software applications. According to the opponent’s submissions, this company was the applicant for a contested trade mark in other proceedings.

o Exhibit 17: a witness statement dated 20/12/2006 by Mr Nigel Walley of Decipher Consultancy Limited, made in support to the opponent’s opposition to the UK trade mark application No 2 363 401 by Skyworth TV Holdings Limited and confirming the statements he made in his previous witness statement dated 2005, in particular that ‘SKY is now one of the most well-known brands in the UK’.

o Exhibit 18: photographs of product packaging and design models, as well as specifications of satellite receivers and decoders produced by Panasonic, Amstrad, Thomson, etc., and branded additionally as ‘sky digibox’.

o Exhibit 19: examples of the opponent’s retail point-of-sale promotional materials and brochures promoting ‘SKY DIGITAL’ packages, including television and broadband subscriptions and digital receivers and recorders. According to Mrs Emma Campbell’s witness statement, consumers can use the receivers even without subscription contracts.

o Exhibit 20: copies of pages from Sky’s audited annual accounts confirming the turnover and operating profit figures for 2000-2014, as well as a copy of Sky’s Annual Report for 2012.

o Exhibit 21: a document prepared by the opponent containing a graph and a table of data allegedly prepared in 2004 by the bank Credit Suisse First Boston, showing British Sky Broadcasting (BSkyB) Group’s market capitalisation and rankings on the FTSE100 share index between 1996 and 2003.

o Exhibit 22: an extract from the website of Nielsen Media Research, www.nielsenmedia.co.uk, dated 2007, providing information about the company, which is a leader in multinational media research and analysis, and its products.

o Exhibit 23: a selection of press cuttings published in the magazines Campaign and Marketing between 1999 and 2007, showing the rankings of major advertising spenders in the United Kingdom together with a summary of the methodology used by Nielsen Media Research. The company BSkyB appears among the top ten advertisers from 2004 on and is present in the top 30 advertisers in previous years.

o Exhibits 24, 39, 43 and 73: samples of advertising materials relating to various advertising campaigns for ‘SKY’ goods and services between 2006 and 2013 (some containing indications of the date and other dated by the opponent). For some of the materials, it is indicated that they were published in British or Irish media (e.g. the Daily Mail and the Evening Standard), while others were intended to be distributed by post or there is no information on how and where they were made available.

o Exhibit 25: a document containing two tables, allegedly prepared by the Audit Bureau of Circulation Ltd (ABC), containing national press circulation and readership figures for 1998-2005 for various UK newspapers and magazines. ‘SKY’ is not mentioned among the newspapers and magazines listed.

o Exhibit 26: a document prepared by the opponent containing a table of the UK awards that the ‘SKY NEWS’ and ‘SKY SPORTS’ television channels won between 1992 and 2010.

o Exhibit 27: an extract from the website of Factiva, a Dow Jones & Reuters Company, which provides business information and research services, showing search results obtained in 2005 and 2006 for publications dated 04/04/1998-04/04/2000 and 14/05/2003-14/05/2005 containing the words ‘SKY DIGITAL’, ‘SKY MOVIES’, ‘SKY NEWS’, ‘SKY ONE’ and/or ‘SKY SPORTS’.

o Exhibit 28: an extract from the website http://web.archive.org showing a screenshot from the opponent’s website www.sky.co.uk as it looked in 1996, as well as screenshots from www.sky.com, http://news.sky.com and http://stars1.sky.com in 2009.

o Exhibit 29: a document prepared by the opponent containing a map illustrating the links within Sky’s platform of commercial websites as of November 2003 with an indication that they have not changed in June 2004.

o Exhibit 30: a document prepared by the opponent containing a list of its websites as of June 2004, indicating the month and year in which each of them went live.

o Exhibit 31: an extract from the website of ABC Electronic (ABCE), obtained in 2007, providing information about the company and its activities. It is clear from this extract that this is a company that prepares website activity audits and database user demographic audits.

o Exhibit 32: an ABCE audit report showing the number of page impressions for ‘SKY’ websites, audited for January 2002, June 2002 and June 2004. The report shows that the websites had between 2.7 million and 5.9 million unique users for each of the months audited.

o Exhibit 33: a document entitled ‘Sky Active Fact Sheet’, dated October 2001, providing information about the opponent’s interactive television service ‘Sky Active’, which gives viewers more control over the way they watch television on the opponent’s channels, with the possibility of using communication (email and text), games, shopping, betting and information services.

o Exhibit 35: a copy of a document entitled ‘Sky News Active – Breaking the mould of Television News’, prepared by the opponent for the Royal Television Society in the UK and containing references to the year 2000. The document provides information about one of the opponent’s service that was launched in 2000, namely a 24-hour interactive television news on demand service, and containing, on the final page, some positive user opinions about the service.

o Exhibit 36: undated screenshots containing information on the ‘SKY SPORTS ACTIVE’ and ‘SKY NEWS ACTIVE’ interactive services as broadcast.

o Exhibit 47: several documents, namely extracts from a presentation prepared by the company Brainstorm, a press release from the opponent’s website obtained in 2007, extracts from a presentation prepared by the opponent and information from the opponent’s ‘SKY SPORTS’ website obtained in 2005, all relating to ‘SKY WAP’ services, ‘SKY MMS’ services and a ‘SKY MOBILE’ application provided by the opponent.

o Exhibit 51: a selection of destination guides with tourist information about various places, printed from the opponent’s ‘Sky Travel Shop’ website.

o Exhibit 53: copies of the covers of and pages from editions of magazines dated 1994-2006 - the ‘SkyTVguide’, ‘SKY customer magazine’ or ‘SKY the magazine’ – a ‘SKY’-branded TV listing and information magazine. According to Mrs Emma Campbell’s witness statement, the magazine was distributed exclusively to ‘SKY’ television subscribers.

o Exhibit 54: publications produced by the magazines Campaign and MediaWeek, dated between 1998 and 2010, presenting circulation figures, according to which in these years the magazine that is referred to as ‘Sky TV Guide’ (until 2000), ‘Sky Customer Magazine’ (between 2000-2002), ‘Sky the magazine’ (2002-2007) and ‘Skymag’ (2007-2009) had the highest circulation figures in the United Kingdom. It is reported that, in 2010, this magazine, marketed as ‘SKY MAGAZINE’ at that time, had more than 7.4 million readers.

o Exhibits 56 and 57: copies of issues of a ‘SKY MOVIE’ magazine and a ‘SKY SPORTS’ magazine, dated May 2007.

o Exhibit 58: an extract from www.imdb.com, obtained on 09/04/2009, showing company information about BSkyB, listing the company as the ‘Production Company’ or ‘Production Company (with the participation of)’ in relation to 40 films produced between 1993 and 2008.

o Exhibit 60: brochures and marketing materials used in relation to the provision of advertising services. In particular, this exhibit contains a brochure entitled ‘SKY FACTS – The Marketing Guide to Sky Television’, dated 1995, and extracts from ‘Sky Fact Books’ for 2003, 2004, 2005 and 2006, as well as an extract from a MediaWeek publication dated 2007 reporting on an award for Sales Team of the Year won by Sky in 2007.

o Exhibit 61: an extract from the opponent’s website www.skymedia.co.uk obtained on 13/03/2006 of a page entitled ‘Sky Media – Us and You – Channel Offering’ and showing a list of television channels. In Mrs Emma Campbell’s witness statement, it is claimed that these are the channels for which the opponent offered airtime advertising sales and advertising opportunities in March 2006.

o Exhibit 62: a case study of an interactive TV campaign for ‘Virgin Trains’ launched in 2005, which ‘SKY MEDIA’ was involved in preparing.

o Exhibit 64-66: materials referring to the opponent’s brand ‘SKY MEDIA’, namely a copy of a page, allegedly from Sky’s newsletter of February 2006, showing the indication ‘SKY media’ at the bottom of the page; a photograph of a cardboard box bearing the indications ‘SKY media’ and ‘The Ultimate Football Package’; and an undated extract from the ‘SKY MEDIA’ website.

o Exhibit 67: articles dated 1992-1994 and 1999-2000 and website extracts dated 2004, describing TV cards, some of which were developed by the company Hauppauge, which can be used in personal computers to view television programming. The opponent’s trade mark or activities are not mentioned in the documents.

o Exhibit 68: a list of UK and EU trade marks owned by the opponent that include the element ‘SKY’.

o Exhibit 69: a decision taken by the UK Trade Marks Registry dated 15/06/2005 in an opposition involving the application for the trade mark ‘SKYSTORM’ for goods in Classes 9 and 28, which was opposed by the opponent.

o Exhibit 70: a graph and a table prepared by the opponent, the data of which were allegedly provided by Merrill Lynch, referring to May 2010 and showing BSkyB Group’s market capitalisation and FTSE rankings.

o Exhibit 71: extracts from Sky’s Annual Report and Annual Review for 2007 and The Bigger Picture Review for 2007, as well as information prepared by the opponent concerning the company’s results for 2006 and 2007.

o Exhibit 72: a document containing tables and graphs prepared by the opponent, presenting comparative information on the growth of the main UK broadband providers between 2006 and 2010, including Sky.

o Exhibit 74: a document containing tables prepared by the opponent, showing information allegedly obtained by Enders and Company Financials regarding the growth of the ‘SKY TALK’ telephony service between Q4 2008 and Q1 2010.

o Exhibit 75: a document prepared by the opponent containing information about awards won by ‘SKY NEWS’ between 2006 and 2010.

o Exhibit 76: extracts from www.skyinteractive.com, http://waptv.com, www.broadbandbananas.com and www.brandrepublic.com, obtained in 2009. The documents refer to a developers’ programme and product support information for ‘Sky Interactive Technology’ products.

o Exhibit 77: extracts from Wikipedia, www.digitalspy.co.uk and http://skyplayer.sky.com, obtained in 2008 and 2009, containing articles relating to Sky’s ‘SKY ANYTIME’ video on demand service, the ‘SKY’ TV player and ‘Sky Player’ software.

o Exhibit 78: extracts from the magazine ‘SKY Focus Channel Guide’, dated May 2005-March 2008, mentioning some ‘SKY’ goods, such as ‘Sky Gamepad’ and ‘Sky Navigator’ (a remote control and keyboard), and ‘SKY’ services, such as ‘Sky’s Entertainment Packages’ for TV and radio channels, including Sky TV channels.

o Exhibit 79: an article published in The Guardian, dated 21/12/2007, entitled ‘Studios ink Sky on-demand movie deal’, as well as marketing emails sent to customers in 2008 detailing the latest service information and viewing options provided by the opponent.

o Exhibit 80: a DVD of a selection of advertisements allegedly used in 1992-2009 for some of the opponent’s ‘SKY’ products.

o Exhibit 81: a copy of the Office’s decision of 17/12/2008, B 958 100, in relation to an opposition by the opponent against the EUTM application Shape3 .

o Exhibit 82: internet data reports prepared by comScore concerning visitors to ‘Sky Portal’ between December 2010 and November 2013.

 Annex 4: a witness statement dated 16/09/2005 by Mr Nigel Walley, also submitted as Exhibit 16 (described above), accompanied by Exhibits NW1, NW2 and NW3 (described above) and a witness statement dated 20/12/2006 by Mr Nigel Walley, also submitted as Exhibit 17 (described above).

 Annex 5: a witness statement dated 24/01/2017 by Mr Joel Anthony Barry, a partner at the opponent’s representative and head of the company’s intellectual property department. According to the witness statement, the mark ‘SKY’ has a very substantial reputation and significant goodwill attached to it in the fields of advertising, retail, telecommunications, broadcasting, entertainment and converging communications technology. Consequently, anyone using the mark ‘SKY’ as part of their mark for goods and services in these fields would be assumed by the UK public to be in some way connected or associated with the opponent. In addition, it is stated that any use of the ‘SKY’ mark by the applicant in relation to its goods and services would be detrimental to the distinctiveness of the ‘SKY’ mark. It is noted in this witness statement that the opponent has also used its mark with a substantial number of secondary words (paragraph 9.1 of the statement). Therefore, the witness considers that the contested mark, which also incorporates an additional word to the word ‘SKY’, will ride on the coat-tails of the opponent’s reputation and will be detrimental to the distinctiveness of the ‘SKY’ mark, and that it could tarnish the excellent reputation that the opponent has achieved in relation to its quality of service and technological innovation. The witness concludes that it is inconceivable that anyone could use the ‘SKY’ mark with descriptive and/or non-distinctive prefixes or suffixes in the UK in relation to goods and services in the fields of telecommunications, broadcasting, entertainment and converging communications technology without the opponent’s reputation in relation to the mark ‘SKY’ being diluted or taken advantage of (paragraph 9.2 of the statement). The witness statement is accompanied by the following exhibits:

o Exhibit JAB-1: an extract from a survey by the European Commission, published in June 2012, noting that the most widely spoken foreign language in the European Union is English.

o Exhibits JAB-2 and JAB-3: extracts from English dictionaries giving the meanings of the words constituting the earlier marks and the contested sign.

o Exhibit JAB-4: website extracts of articles and information concerning the use of ‘grand’ in relation to electronic devices such as mobile phones.

o Exhibit JAB-5: extracts from the EUIPO’s eSearch database showing trade marks containing the words ‘GRAND’ or ‘GRANDE’ (or derivatives) for goods and services in various classes.

 Annexes 6-19, 21, 22 and 25: decisions of the EUIPO, the UK Intellectual Property Office and other institutions in several countries of the EU concerning successful oppositions by the opponent against various trade marks containing the element ‘SKY’ (e.g. word and figurative marks ‘SKYSTORM’, ‘SKYCAPITAL’, ‘SKYVENTURE’, ‘SKYWORTH’, ‘GOODSKY’, ‘SKYMEETING’, ‘SKYPE’, ‘RUN2SKY’).

 Annex 20: extracts from Sky’s Annual Reports for 2007-2014 and an article prepared for publication entitled ‘SKY PLC – Results for the twelve months ended 30 June 2015’.

 Annex 23: extracts from the website of Eurostat (the European Union’s statistical office), dated 2017 concerning the size of the population of, inter alia, the Member States of the European Union during the years 2005-2016.

 Annex 24: information concerning the opponent’s claims under Article 8(4) EUTMR, namely an extract from Kerly’s Law of Trade Marks and Trade Names concerning the English common law tort of passing-off.

The documents listed above demonstrate that the earlier mark ‘SKY’ has been subject to long-standing and intensive use in the United Kingdom in relation to some of the opponent’s goods and services for which reputation is claimed.

The witness statement of Mr Nigel Walley provides the Opposition Division with the independent opinion of an expert in a consultancy firm in the area of digital media strategy in the United Kingdom, according to which ‘SKY’ is one of the most well-known brands in the UK in the television field.

The witness statement of Mrs Emma Campbell provides extensive and detailed overview of the activities and history of the Sky group of companies and trade marks. It states that the opponent operates the leading pay television service in the United Kingdom and the Republic of Ireland broadcasting a wide range of TV channels, and providing broadband and telephony goods and services.

The information in this document is supported by the exhibits accompanying it. In particular, the press releases and advertising materials published online and in printed media mostly in the United Kingdom (exhibits 3-5, 7-9, 24, 34, 37-41, 43-46, 48-50, 55, 63, 73 and 80) give various direct and indirect information on the opponent’s investments and its promotional, communication and marketing strategies and the perception of its trade mark among consumers.

Some press releases refer to studies conducted in the past reporting on the awareness of the opponent’s mark; for example, a survey conducted in 1988 concerning the Sky Channel’s audience, states that the audience was made up by more than 10 million households across Europe at that time; an article from February 1989 reported on 84% awareness of the ‘SKY’ services.

Mrs Emma Campbell’s witness statement provides more recent information about the opponent’s activities, including turnover and subscribers figures for UK and Ireland and is supported by various exhibits. It becomes clear that a significant number of private households in the UK and Ireland (p. 13 of the witness statement) received the opponent’s television channels before the relevant date, in particular between 2000 and 2007 and between 2008 and 2012. As regards the opponent’s ‘SKY’ TV channels, in 2008 they were received in 19.92 million households, in 2009 in 23.61 million households, in 2010 in 24.27 million households, in 2011 in 24.66 million households and in 2012 in 24.24 million households. Some of the exhibits accompanying the witness statement provide supporting information to the claims made in it. In particular, exhibit 15 concerns the viewing figures of different ‘SKY’ channels and also shows substantial numbers of viewers.

Although some of the documents with statistical information have been prepared by the opponent itself and have, therefore, less probative value, these documents are sufficiently supported by the opponent’s annual reports and official accounts, which are public and have been audited by independent parties, and by the references to the opponent’s activities in various publications.

The annual turnover (p. 11-12 of the witness statement of Mrs Emma Campbell) of the ‘SKY’ group under the ‘SKY’ trade marks, for the UK and Ireland, confirmed by the audited annual reports (exhibits 20 and 71 and annex 20), includes the following results: GBP 4.048 million for 2005, GBP 4.148 million for 2006, GBP.4 551 million for 2007, GBP 4.952 million for 2008, GBP 5.359 million for 2009, GBP 5.912 million for 2010, GBP 6.597 million for 2011, GBP 6.791 million for 2012, GBP 7.235 million for 2013 and GBP 7.632 million for 2014.

The witness statement of Mrs Emma Campbell describes the opponent’s ‘SKY’-branded telecommunication services, including regular telephony services, Internet and portal services and e-mail services under the names ‘SKY NOW’ (a free Internet service provider (ISP) launched in 1999), ‘SKY DIAL’ (launched in 1997/1998) and ‘SKY TALK’ (launched in 1999). The ‘SKY TALK’ telephony service had 4.9 million subscribers in the UK in 2014.

SKY launched HD (high definition) television services in 2006, and the ‘SKY HD’ TV channels have evolved from 292 000 subscribers in 2007 to 5.242 million subscribers in 2014 (p. 16 and p. 17 of the witness statement of Mrs Emma Campbell). The ‘SKY BROADBAND’ internet access service was launched by SKY on 18/07/2006 and had 5.242 million subscribers in 2014 (p. 19 of the witness statement).

The information in relation to the opponent’s services is completed by some of the press releases giving information about the opponent’s interactive platforms (‘SKY NEWS ACTIVE’, ‘SKY SPORTS ACTIVE’) and services (‘SKY BY BROADBAND’, ‘SKY BY MOBILE’, ‘SKY DIAL’). Exhibits 26 and 75 provide information about awards won by the opponent’s television channels ‘SKY NEWS’ and ‘SKY SPORTS’ in 1992 – 2010. An article dated 2006 and entitled ‘Digital Channel Awards – Best News Channel – Winner: Sky News.’ reports on an award obtained by one of the opponent’s channels and an article dated 2006 reports on an award for the creation of ‘SKY BROADBAND’.

The witness statement of Mrs Emma Campbell also provides information about the history and evolution of ‘SKY’-branded mobile TV services and entertainment services provided through interactive online platforms since 2001 or, in some cases, even earlier, including interactive Internet shopping services through ‘SKY ACTIVE’, interactive entertainment allowing customers to play interactive games through ‘SKY GAMESTAR’, interactive sports coverage through ‘SKY SPORTS ACTIVE’, interactive television news service branded ‘SKY NEWS ACTIVE’ and interactive service for films branded ‘SKY MOVIES ACTIVE’. Supporting information about the provision of these services is contained in exhibits 33-36, which contain informative brochures and press releases in relation to these services.

The opponent also provides information about some ‘SKY’-branded goods, such as the ‘SKY+’ personal video recorder. Some of the press releases report on the launch of the ‘Sky Gamepad’ – a TV games controller, the ‘SKY+’ personal television recorders, and ‘SKY GNOME’ – a wireless device allowing users to listen to ‘SKY’ channels within a 30m radius of its base station. Some newspapers ranked the applicant’s ‘SKY+’ personal video recorder as the ‘number one’ among gadgets in 2003.

Some of the press releases report on the launch of the ‘Sky Gamepad’ – a TV games controller, the ‘SKY+’ personal television recorders, and ‘SKY GNOME’ – a wireless device allowing users to listen to ‘SKY’ channels within a 30m radius of its base station. Some newspapers ranked the opponent’s ‘SKY+’ personal video recorder as the ‘number one’ among gadgets in 2003.

The witness statement of Mrs Emma Campbell also clarifies that the ‘SKY’ magazine (‘SKY MAG’ between 2007 and 2009, ‘SKY MAGAZINE’ in 2010) was published monthly until July 2011 and ‘distributed exclusively to the great majority of SKY DIGITAL subscribers’. The magazine provided programme information, celebrity interviews and show business news.

The publications by the independent media Campaign and Media Week (exhibit 54) in 1998 – 2010 provide information, according to which the ‘SKY’ magazines were occupying the top position by circulation in the United Kingdom and reached to several million readers monthly. Although according to some documents these magazines were usually distributed to ‘SKY’ television subscribers, some magazine covers also bear prices (exhibit 53). In any event, the rankings of the opponent’s ‘SKY’ magazine as the most circulated one for a continuous period suggests that it became generally known in the market in, at least, the United Kingdom.

Some of the documents (exhibits 60-62) also provide indications in relation to the opponent’s activities marketed as ‘SKY MEDIA’ around the provision of advertising space, time and media and the production of advertising campaigns, which were promoted through brochures and guides of the opponent (exhibit 60) giving information about advertising opportunities through the ‘SKY’ television channels, the Sky TV Guide / SKY Magazine, the SKY websites, etc. Some articles in the press releases report on activities of ‘SKY MEDIA’ – ‘the advertising sales division of the company BSkyB’, including articles entitled ‘Emap Advertising strikes deal with Sky Media’ concerning promoting services of the company Orange, ‘ATR Look to the Sky for Ad Sales’, ‘Sky Media reports record month for interactive TV campaigns’, etc.

The witness statement of Mrs Emma Campbell provides an overview (p. 78 and 79) of the opponent’s own global expenditure on marketing and promoting its business, primarily under the ‘SKY’ trade marks, derived from its audited Annual Reports, including the following results: GBP 734 million spent in 2006-2007, GBP 743 million in 2007-2008, GBP 907 million in 2008-2009, GBP 1.118 million in 2009-2010, GBP 1.220 million in 2010-2011, GBP 1.064 million in 2011-2012, GBP 1.116 million in 2012-2013 and GBP 1.199 million in 2013-2014. The opponent has provided information by Universal McCann and MediaCom (p. 79-80 of the witness statement of Mrs Emma Campbell), supported by the publications in exhibit 23, according to which it has been consistently ranked as the top advertising spender in the entertainment and media sector.

The effects of the marketing actions of the opponent are also evidenced by the number of users of the opponent’s website. For example, exhibit 32 contains an independent report, according to which in some months in 2002 and 2004 the opponent’s ‘SKY’ websites had several million unique users per month.

The publications in independent media in the exhibits containing press releases provide information supporting the above data concerning marketing campaigns and expenditures amounting to millions of euros in relation to the ‘SKY’ marks and report on agreements for television coverage of various events.

Although a certain amount of time has elapsed between the publication of some of the information concerning the opponent’s activities, which show that the opponent used its mark for a continuous and long period, and the relevant point in time for proving reputation, account is taken of the relevant market sector and the fact that the other documents submitted show that the opponent continued to use and advertise its sign extensively in subsequent years and, consequently, remained active on the market.

Although the opponent’s sign ‘SKY’ is, in many occasions, used with additional terms (e.g. ‘NEWS’, ‘MOVIES’, ‘SPORTS’, ‘BROADBAND’, ‘MEDIA’, ‘MAGAZINE’), these indications are used to distinguish between the different types and lines of goods or services of the opponent (e.g. television channels indicated as ‘SKY NEWS’, ‘SKY MOVIES’ and ‘SKY SPORTS’, providing different types of content). It should be borne in mind that it is quite common in some market areas for goods or services to bear their individual mark as well as the mark of the business or product group (‘house mark’). Moreover, these words are descriptive terms relating to the nature of the goods and services at issue. Consequently, the indication ‘SKY’ will be perceived as the main sign indicating the commercial origin of the goods and services at issue.

The opponent’s intensive and widespread promotional activities in the United Kingdom are considered strong indications that the mark ‘SKY’ has earned recognition among the relevant public and that the opponent has undertaken steps to build up a brand image and enhance trade mark awareness among the public.

On the basis of the documents listed above the Opposition Division concludes that the earlier trade mark ‘SKY’ has acquired a reputation in the United Kingdom for some of the relevant goods and services for which reputation is claimed and for which the earlier mark is registered, namely the following:

Class 9: Telecommunications apparatus and instruments; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content.

Class 16: Magazines.

Class 35: Advertising services.

Class 38: Telecommunications services.

Class 41: Entertainment by means of television, telephony and the Internet; production and presentation of television programmes.

The Opposition Division notes that the abovementioned goods and services are either explicitly covered by the specification of goods and services for which the earlier mark is registered, or are included in broader categories of that specification (e.g. entertainment by means of television, telephony and the Internet is included in entertainment services in Class 41). Furthermore, it is noted that the abovementioned goods and services are also explicitly mentioned in the list of goods and services for which the opponent claimed reputation (including synonyms).

Considering that reputation is accepted to be proven for the entire categories listed above, there is no need to determine whether reputation is indeed shown for each and every item for which reputation is claimed belonging to any of these categories. Accepting that reputation is proven for the abovementioned goods and services is tantamount to accepting reputation for all possible variations belonging to these categories, including those explicitly mentioned in the earlier mark’s specification (e.g. set-top boxes in Class 9, since reputation is accepted for the broad category of telecommunications apparatus and instruments; television broadcasting in Class 38, since reputation is accepted for the broad category of telecommunications services; and betting, gaming and gambling services by means of television, telephony and the Internet in Class 41, since reputation is accepted for the broad category of entertainment by means of television, telephony and the Internet).

In conclusion, it is clear from the evidence that the sign ‘SKY’ has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The turnover figures and marketing expenditure demonstrated by the evidence and the various references in the press to the success of the sign all unequivocally show that it enjoys a high degree of recognition among the relevant public for the abovementioned goods and services.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the earlier trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to the abovementioned goods and services, whereas there is no or little reference to the remaining goods and services. For example, the opponent claims reputation for computer games and programs and the documents submitted mention that the opponent has provided some software applications related to its services. Some articles report on the launch of, for example, game controls. However, there is insufficient information in the evidence regarding the reception of these goods and the public’s recognition of the mark in relation to such goods or to any of the remaining goods and services not covered by the above categories.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. The signs are visually, aurally and conceptually similar to at least an average degree.

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

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

In the present case, the signs under comparison are similar to the extent that the earlier mark ‘SKY’ is fully included at the beginning of the contested sign, Shape4 . The earlier mark is inherently distinctive and, moreover, enjoys a high degree of recognition and reputation for the following goods and services:

Class 9: Telecommunications apparatus and instruments; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content.

Class 16: Magazines.

Class 35: Advertising services.

Class 38: Telecommunications services.

Class 41: Entertainment by means of television, telephony and the Internet; production and presentation of television programmes.

The remaining contested goods for which the opposition is not successful under Article 8(1)(b) EUTMR are the following:

Class 14: Alloys of precious metal; works of art of precious metal; precious metals, unwrought or semi-wrought; pearls made of ambroid [pressed amber].

The contested goods target consumers with specific needs (manufacturers of jewellery and other goods of precious metals, and the general public who may seek to purchase works of art for decoration or as collectibles or possibly precious or semi-precious stones for personal use and adornment). It is possible that the relevant section of the public for at least part of the goods and services covered by the conflicting signs is the same or overlaps to some extent, since the opponent’s goods and services and some of the contested goods target the public at large. However, this circumstance does not mean that a link would necessarily be established in the consumer’s mind, since these goods and services in conflict are of very different natures and have different purposes. They have completely divergent distribution channels, are offered by different companies or suppliers and target consumers with different needs.

Consumers seeking to purchase the abovementioned contested goods in Class 14 are unlikely to call to mind the opponent’s brand, which is reputed for goods and services in other fields, namely for telecommunication apparatus and instruments and telecommunication services, magazines and advertising services, entertainment by means of television, telephony and the Internet and production of television programmes. These sectors have nothing in common, and require completely different skills and infrastructure. For example, advertisers need to understand business strategies, psychology and language, whereas producers of precious metals and stones or of works of art need to have knowledge in the field of the extraction and processing of metals and gemstones or to have abilities in artistic creation. The fact that the contested goods could be the subject of advertising (which is the case with essentially any goods and services) is not sufficient for the establishing of a link between these goods and services. Similarly, the entities that provide entertainment by means of television, telephony and the Internet do not produce the specific contested goods.

The marks are similar due to the fact that the earlier mark, ‘SKY’, is included at the beginning of the contested sign. While this may be sufficient to trigger a link between the marks in relation to identical goods and services or goods and services that are similar to some degree, this similarity has a weaker effect in relation to the dissimilar goods and services mentioned above. Moreover, while ‘SKY’ may be perceived as an independent element in both marks, taking into account the very different natures of the goods and services, it is unlikely that, when intending to purchase the contested goods in Class 14, the relevant public would link them to an indication of commercial origin that has a reputation for telecommunication apparatus and instruments and telecommunication services, magazines and advertising services and entertainment by means of television, telephony and the Internet or production of television programmes. In this case, consumers will most probably perceive the term ‘SKY’ in the contested sign as a mere reference to its natural meaning, namely ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’. Therefore, it is unlikely that the contested mark would remind the relevant consumer of the earlier sign in relation to the abovementioned contested goods in Class 14.

The Opposition Division also notes that the opponent did not submit any arguments in relation to the necessary link between the signs in dispute, in particular as regards common aspects between the abovementioned contested goods in Class 14 and the goods and services for which reputation has been claimed and demonstrated in order to prove the contrary.

Therefore, any link between the marks is unlikely to be formed.

The opponent has also based its opposition under Article 8(5) EUTMR on earlier European Union trade mark registration No 6 870 992 for the word mark ‘SKY’.

The evidence submitted in relation to this earlier mark is the same that was already examined above. Consequently, it could prove reputation of no broader scope of goods and services and to the same degree as for the earlier UK trade mark examined above, hence the previous reasoning concerning the absence of a link as regards the remaining contested goods is equally applicable for this earlier mark. Therefore, the outcome cannot be different with respect to the remaining goods for which the opposition has already been rejected under Article 8(5) EUTMR in relation to this mark.

It should be noted that in its observations the opponent also claims to have a family of marks with the common element ‘SKY’ which would result in a transfer of the goodwill of the earlier reputed marks in favour of the applicant’s mark. However, the marks of the opponent have been used in completely different market sectors (e.g. several trade marks used to designate different television channels) than the ones to which the contested goods belong. Therefore, the Opposition Division is of the opinion that the trade mark applied for is not likely to be associated with the alleged series of marks of the opponent. Consumers, therefore, will not make the necessary mental association between the contested sign and the earlier marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them that could enable a risk of injury to be established. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

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

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

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

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

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

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

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

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

a) The right under the applicable law

The opposition under Article 8(4) EUTMR is based on the non-registered trade mark ‘SKY’, used in the course of trade in the United Kingdom. The opponent bases its claim on the tort of passing-off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its earlier rights. The evidence must show that the opponent’s sign is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that there is a misrepresentation, e.g. that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods or services originate from the opponent. In other words, the public would be likely to believe that goods or services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For reasons of procedural economy, the Opposition Division will assume that the opponent has proven that it enjoys goodwill for all the goods and services claimed under its earlier rights.

b) The opponent’s right vis-à-vis the contested trade mark

Misrepresentation (passing off)

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent.

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are the opponent’s.

The public is unlikely to be misled where the contested goods are dissimilar to the goods and services upon which the opponent’s goodwill has been built. Therefore, the contested goods must be compared with the goods and services for which it is assumed that the opponent has shown that it has acquired goodwill through use.

The goods and services

The opponent’s non-registered trade mark ‘SKY’ is assumed to have been used for the following goods and services:

Class 16: Printed matter; magazines.

Class 28: Games; electronic games apparatus; games controllers.

Class 37: Maintenance services; repair services; installation services; installation, maintenance and repair of communications, broadcasting and television-related apparatus and equipment.

The remaining contested goods are the following:

Class 14: Alloys of precious metal; works of art of precious metal; precious metals, unwrought or semi-wrought; pearls made of ambroid [pressed amber].

The goods and services have already been compared above under the grounds of Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR. Reference is made to those findings.

Consequently, the abovementioned goods applied for are dissimilar to the goods and services for which the opponent has claimed to have an earlier non-registered trade mark under Article 8(4) EUTMR. Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods for the goods and services of the opponent even if the signs are similar to some degree.

Therefore, the contested trade mark is not likely to lead the public to believe that the goods to be offered by the applicant are provided by the opponent.

The Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods in Class 14 for the goods and services of the opponent. Therefore, the opposition is not well founded under Article 8(4) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

Shape5

The Opposition Division

Begoña URIARTE VALIENTE

Boyana NAYDENOVA

Angela DI BLASIO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

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