OPPOSITION No B 2 928 573

Sky plc, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent), represented by CMS Cameron McKenna Nabarro Olswang LLP, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Bendra Lietuvos-Olandijos įmonė uždaroji akcinė bendrovė "VTEX", Mokslininku str. 2A, 08412 Vilnius, Lithuania (applicant), represented by Stasys Drazdauskas, Law firm Sorainen, Jogailos str. 4, 01116 Vilnius, Lithuania (professional representative).

On 10/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 928 573 is upheld for all the contested services.

2. European Union trade mark application No 16 524 506 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 524 506 for the figurative mark . The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604 for the word mark ‘SKY’, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. In relation to its other earlier rights, the opponent invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

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

1. The services

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

Class 42: Design and development of computer hardware and software; design, drawing and commissioned writing all for the compilation of web pages on the Internet; hosting websites; creating and maintaining websites; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; weather forecasting; maintenance and repair of interactive video game devices comprised of computer software and accessories, namely software for operating game controllers; home computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services; computer services, namely the organisation of an infrastructure to enable television subscribers to access internet services via the television; advice relating to the development of computer systems; advisory services relating to computer based information systems; advisory services relating to computer hardware or software; design, installation, maintenance or updating of computer software; design of computer hardware; design services; designing electrical or electronic systems; design services for artwork for animated films; monitoring and analysis of call information; computer programming services; internet walled garden services; operation of search engines; rental or leasing of computer hardware or software; testing, research, assessing, consultancy, advising or providing information in relation to the foregoing; computer services for on-line shopping; computer services relating to the processing of orders and payments; weather forecasting; providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, ecology and animal welfare as well as conducting research and drawing up expert reports in the aforementioned fields; research and development of durable use of nature and the environment; technical and legal assistance concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare and effecting such projects; development and testing for renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, and components therefor; effecting research projects concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare; consultancy, information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.

The contested services are the following:

Class 42: Software as a service [SaaS]; hosting services and software as a service and rental of software; providing temporary use of online non-downloadable software for word processing; design and development of word processing software; providing online non-downloadable software for word processing.

The contested hosting services includes, as a broader category, the opponent’s hosting websites. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested rental of software is identically contained in the opponent’s list of services (including synonyms).

The contested software as a service [SaaS]; software as a service is a software licensing and delivery model in which software is licensed on a subscription basis and centrally hosted. These services and the contested providing temporary use of online non-downloadable software for word processing; providing online non-downloadable software for word processing are included in the broad categories of, or overlap with, the opponent’s rental or leasing of computer software. Therefore, they are identical.

The contested design and development of word processing software are included in the broad categories of, or overlap with, the opponent’s design and development of computer hardware and software. Therefore, they are identical.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical are directed partly at the public at large and partly at a professional public with specific knowledge or expertise, such as professionals in the IT field. The degree of attention will vary from average to higher than average, depending on the sophistication and specialised nature of the services, the frequency of purchase, their price or terms and conditions of the services purchased.

3. The signs

SKY
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier 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 conjoined words ‘SKY’ and ‘LATEX’ depicted in different typefaces. Around the letters ‘LATEX’, there is a curved blue line resembling a cloud.

The contested sign has no more dominant (visually more eye-catching) elements.

It should be noted that the Court has held that, although average consumers normally perceives 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).

The verbal element ‘SkyLATEX’ of the contested sign as a whole does not have a meaning for the relevant public. Therefore, taking into account the aforementioned principle, it is highly likely that the relevant English-speaking public will perceive the contested sign as a combination of the meaningful elements ‘SKY’ and ‘LATEX’. The visual distinction between the letters in the sign further facilitates this perception.

The word ‘SKY’, which forms the entire earlier mark and the beginning of the contested sign, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (information extracted from Collins English Dictionary on 07/08/2018 at https://www.collinsdictionary.com/dictionary/english/sky). The inherent distinctiveness of this term is average in relation to the relevant services, as the word ‘SKY’ has no connection to any of their essential characteristics.

The second word of the contested sign, ‘LATEX’, will be perceived as ‘a whitish milky fluid containing protein, starch, alkaloids, etc., that is produced by many plants’ or ‘a suspension of synthetic rubber or plastic in water, used in the manufacture of synthetic rubber products, etc.’ (information extracted from Collins English Dictionary on 07/08/2018 at https://www.collinsdictionary.com/dictionary/english/latex). This word as such is also of average distinctiveness, as it has no connection to the relevant services.

As a whole, the word combination ‘SkyLATEX’ will be perceived by the English-speaking part of the public as the mere combination of the meaningful elements ‘SKY’ and ‘LATEX’ as this expression has no univocal meaning for the relevant public and is not used in common parlance. It may refer to, inter alia, abstract and unclear notions such as ‘latex in the sky’; however, it may also be perceived as an expression with no clear meaning as a whole. In any case, it is clear that the relevant English-speaking consumers will instantly recognise and perceive the words ‘SKY’ and ‘LATEX’ of the contested sign according to their aforementioned meanings, because they are both words known to them.

In relation to the relevant IT-related services the figurative element of the contested sign resembling a cloud may be perceived as alluding to the availability/compatibility of the services with a cloud-computing service and, therefore, its distinctiveness is below average. In addition, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the word ‘SKY’, which is the sole element of the earlier mark and is fully 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 element ‘LATEX’ placed at the end of the verbal element of the contested sign, ‘SkyLATEX’.

They also differ in the figurative element and the stylisation of the verbal elements in the contested sign, which, as seen above, will have a lesser impact on the consumer than the verbal elements.

Therefore, considering that the sole and distinctive element of the earlier mark, ‘SKY’, 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 syllable ‘SKY’, constituting the earlier mark and present at the beginning of the contested sign. The pronunciation differs in the sound of the letters ‘LATEX’ in the contested sign, which have no counterpart in the earlier mark and are likely to be pronounced in two syllables.

Therefore, the signs are aurally similar to a below average degree.

Conceptually, the public in the relevant territory will perceive the words ‘SKY’, contained in both signs, and ‘LATEX’ of the contested sign, in accordance with the meanings referred to above. The figurative element of the contested sign resembling a cloud may be perceived as allusive in relation to the services at issue and its impact is, therefore, limited.

As regards the contested sign’s verbal element as a whole, as explained above, it has no clear univocal meaning. 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 services at issue and, therefore, this coincidence generates 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.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the services under comparison are identical. The earlier mark enjoys an average degree of inherent distinctiveness. The signs are visually and conceptually similar to an average degree and aurally similar to a below average degree for the relevant public on account of the coinciding verbal element ‘SKY’, constituting the earlier mark in its entirety and fully included, yet clearly perceptible, in the beginning of the contested sign. The marks differ in the additional word, ‘LATEX’, of the contested sign, which will not go unnoticed by consumers, as well as in its figurative features, which are of lesser impact, as explained above.

Nevertheless, given the reproduction of the distinctive and initial element ‘SKY’ in the contested sign, it is likely that even the part of the relevant public displaying a higher degree of attention will at least associate the contested sign with the earlier mark in relation to identical services.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application may not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

In the present case, even highly attentive consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark, considering that it will be applied to services that are identical to those protected by the trade mark ‘SKY’. In other words, consumers may confuse the origins of the services at issue, assuming that they come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element, ‘SKY’, and that, for identical services, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 500 604. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Boyana NAYDENOVA

Pedro JURADO MONTEJANO

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.