OPPOSITION No B 3 002 956

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

Sheng Chen, Rm. 1201,Unit 2,Bldg 11,Zone A Oujinghuayuan,Choujiang St., Yiwu Zhejiang, China (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).

On 12/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 002 956 is upheld for all the contested services.

2. European Union trade mark application No 17 054 701 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 054 701 for the figurative mark . The opposition is based on, inter alia, United Kingdom trade mark registration No 3 230 041 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, which include other registered trade marks as well as non-registered signs used in the course of trade and a well know trade mark in the sense of Article 8(2)(c) EUTMR, 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 3 230 041.

1. The services

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

Class 35: Advertising; business management; business administration; office functions; Accounting; Administrative processing of purchase orders; Advertising by mail order; Advisory services for business management; Arranging newspaper subscriptions for others; Arranging subscriptions to telecommunication services for others; Auctioneering; Bill-posting; Business appraisals; Business auditing; Business efficiency expert services; Business information; Business inquiries; Business investigations; business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; Business management and organization consultancy; Business management assistance; Business management consultancy; Business management of hotels; Business management of performing artists; Business management of sports people; Business organization consultancy; Business research; Commercial administration of the licensing of the goods and services of others; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Commercial or industrial management assistance; Compilation of information into computer databases; compiling indexes of information for commercial or advertising purposes; Compilation of statistics; Computerized file management; consultancy regarding public relations communications strategy; consultancy regarding advertising communications strategy; Cost price analysis; Data search in computer files for others; Demonstration of goods; Direct mail advertising; Dissemination of advertising matter; Distribution of samples; Document reproduction; Drawing up of statements of accounts; Economic forecasting; Employment agencies; Import-export agencies; Invoicing; Layout services for advertising purposes; Marketing; Marketing research; Marketing studies; Modelling for advertising or sales promotion; negotiation of business contracts for others; News clipping services; Office machines and equipment rental; On-line advertising on a computer network; Opinion polling; Organization of exhibitions for commercial or advertising purposes; Organization of fashion shows for promotional purposes; Organization of trade fairs for commercial or advertising purposes; Outsourcing services [business assistance]; Payroll preparation; Personnel management consultancy; Personnel recruitment; Photocopying services; Presentation of goods on communication media, for retail purposes; Price comparison services; Procurement services for others [purchasing goods and services for other businesses]; Production of advertising films; production of teleshopping programmes; Professional business consultancy; Psychological testing for the selection of personnel; Public relations; Publication of publicity texts; Publicity; Publicity agencies; Publicity columns preparation; Publicity material rental; Radio advertising; registration of written communications and data ; Relocation services for businesses; Rental of advertising space; Rental of advertising time on communication media; Rental of photocopying machines; Rental of vending machines; Retail or wholesale services connected with the sale of pharmaceutical, veterinary and sanitary preparations and medical supplies; Sales promotion for others; Secretarial services; Shop window dressing; Shorthand; Sponsorship search; Systemization of information into computer databases; Tax preparation; Telemarketing services; Telephone answering for unavailable subscribers; Television advertising; Transcription; Typing; Updating of advertising material; updating and maintenance of information in registries; Word processing; Writing of publicity texts; promotional services; administration services for businesses; accounting services; customer relationship management; organisation, operation and supervision of sales and promotional incentive schemes; online advertisements; provision of product information and advice to prospective purchasers of home entertainment equipment, multi-media apparatus and instruments, television and radio equipment, audio visual equipment, set-top boxes, personal video recorders, video recorders, computer games software, hardware and peripheral devices; demonstration services for advertising, business, commercial & trade purposes; rental of advertising space; television advertising commercials; preparation and presentation of audio visual displays for advertising purposes; dissemination of advertising matter; arranging and conducting of trade shows and exhibitions; arranging and conducting trade show exhibitions in the field of electronic, computer and video games for the computer and video game industry; advertisement and promotion of television services; compilation of business statistics and commercial information; loyalty card services; marketing studies; marketing of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; monitoring and analysis of call information (office services); business planning, inspection, survey and appraisal services; receipt and provision of computerised business information data; compilation of business statistics and commercial information, all relating to television, radio, satellite broadcasting and video games; magazine and newspaper subscriptions; the bringing together, for the benefit of others of a variety of goods namely bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, cleaning, bleaching and abrasive preparations and substances, all for laundry use, anti-perspirants, perfumes, non-medicated toilet preparations, cosmetic preparations, dentifrices, toilet articles, hair preparations, shampoos, soaps, essential oils, beauty products, toiletries, colognes, eau de toilette, deodorants, body sprays, perfumed body sprays, oils, creams and lotions for the skin, preparations for the bath and shower, shampoos and conditioners, hair styling products, shaving gel, foams and cream, pre and post shave balms, aftershaves, razors, razor blades, chamois creams, embrocation creams, depilatory preparations, sunscreen preparations, cosmetics, perfumery, candles including all the aforesaid made from unbleached and/or organic and/or biodegradable ingredients, pharmaceutical and veterinary preparations, industrial oils and greases, lubricants, fuels (including motor spirit) and illuminants, fuel additives and preparations for enhancing combustion of fuels, machine tools, motors and engines, turbines for power generation, control panels for turbines for power generation, machines for household use, building and construction materials (non-metallic), building glass, sheet materials, metal hardware, insulation, cladding, roofing materials, pipes, doors, door furniture, windows, window furniture, joinery materials, ladders, kitchen units, kitchen furniture, bedroom furniture, dining room furniture, flooring, lighting, radiators, soft furnishings, storage, shelving, fireplaces and surrounds, living room furniture, natural materials for use as horticultural fertilizers, horticultural implements, gardening equipment, horticultural frames, garden tools (hand operated), watering cans, garden sprayers, garden lighting, garden furniture, covers for garden furniture, garden ornaments, gardening gloves, seeds, plants, gardening clothing, gardening footwear, gardening headwear, garden storage boxes, paints and varnishes, hand tools, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision) and teaching apparatus and instruments, apparatus for recording television programmes, apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content, electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts, televisions, LCD and plasma screens, home cinema systems, amplifiers, speakers, radios, wireless audio and/or audio visual devices, portable wireless audio and/or audio visual devices, remote controls, games controllers, wireless gaming controllers, wireless keypads, television receivers including a decoder, set-top boxes, digital set-top boxes, high definition set- top boxes, personal video recorder, set-top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts, apparatus for decoding encoded signals including set-top boxes for television reception, set-top box apparatus including a decoder and an interactive viewing guide, set-top box apparatus including a decoder and a recorder for recording television and audio programmes, set-top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings, satellite dishes, low noise blocks, satellite meters, computer software to enable searching of data, encoded programs for computers and for data processing and telecommunications, telephones, mobile telephones, PDAs, telephone and radio modems, television receivers including a decoder, set-top boxes for use in decoding and reception of satellite, terrestrial cable and digital subscriber line (DSL), Internet or other electronic broadcasts, apparatus for decoding encoded signals, recorded television and radio programmes, recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs, video recordings, multimedia apparatus and instruments, portable or hand-held computers, DVD players, computers, computer hardware and peripheral devices, computer hardware, apparatus and instruments all for transmitting, displaying, receiving, storing and searching electronic information, computer programs, electronic computer games, electronic interactive computer games, computer software, computer software and telecommunications apparatus to enable connection to databases and the Internet, computer software supplied from the Internet, network termination equipment, wired and/or wireless computer network routers, modems, firewalls and/or bridges, computer software and computer programs for distribution to, and for use by, viewers of a digital television channel for the viewing and purchase of goods and services, computer games software and computer quiz software, computer video games and/or quizzes adapted for use with television receivers and screens or with video monitors or with computer screens, computer programs for interactive television and for interactive games and/or quizzes, electronic apparatus adapted for use with television receivers in playing games, games consoles, interactive video game devices comprised of computer hardware and software and accessories, namely game consoles, game controllers and software for operating game controllers, portable and/or hand-held electronic devices for interactive computer and video games, portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code, Portable Wireless Audio Devices, virtual reality systems, home entertainment systems, multi-media equipment, audio visual equipment, video and television equipment, electronic publications, computer games, computer video games, video screens, video projectors, tapes, discs and wires, all being magnetic, cassettes and cartridges, all adapted for use with the aforesaid tapes, blank and pre-recorded audio and video cassettes, tapes and cartridges, compact discs, DVD discs, phonographic records, laser readable discs for recording sound or video, ROM cartridges, CD ROMs, cards and discs, integrated circuit cards, memory carriers, recording media, all pre-recorded with computer video games and/or quizzes, encoded cards, radio and television signal antennae, music, sounds, videos, images, text and information provided by a telecommunications network, by on-line delivery and by way of the Internet and/or the world-wide web or other communications network, interactive sound and/or audio recordings, music, video, sound and/or audio recordings (downloadable) provided from MP3 Internet websites, MP3 players, MP3 readers, audio and/or video file recorders and/or players, portable audio and/or video file recorders and/or players, personal video recorders, telephone ring tones (downloadable), apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus and instruments for the reception of radio and television broadcasts including the reception of cable, satellite and digital broadcasts, smart cards, credit cards, loyalty cards, acoustic apparatus or instruments, namely acoustic discs, acoustic meters, acoustic sound alarms, adaptors, aerials, antennae, amplifiers, amusement apparatus and instruments adapted for use with an external display screen or monitor, communication apparatus and instruments, encoded or magnetic banking or credit cards, cinematographic film, cinematographic instruments and apparatus, data carriers, data storage apparatus, equipment and instruments, electrical telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus, electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus, film reproducing instruments and apparatus, hand held electrical telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus, hand held electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus, interactive educational or entertainment games for use with television receivers and video apparatus, mobile telephones, motion pictures, telephone apparatus and equipment, parts and fittings for all the aforesaid goods, sunglasses, leather cases for holding mobile phones, downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service, cases, containers, protective coverings and parts and fittings therefor, all for use with MP3 players, music storage devices, media storage devices and other audio, visual and computer devices, electrical, electronic and computer equipment for machinery for use in conservation, generation and efficient use of heat, light and water, including thermostatic controls, solar panels for electricity generation, photovoltaic devices, solar cells, turbines and motion detectors, electrical, electronic and computer equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, control and monitoring equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, electronic publications (downloadable), including electronic publications, magazines and newsletters regarding environmental protection, energy conservation and ecology, animal welfare and renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, apparatus and instruments for closed circuit television and surveillance systems, apparatus and instruments for personal security monitoring, apparatus and instruments for home security monitoring and control, home and personal security apparatus, home and personal security devices, home and personal security alarms, electronic protection equipment, including fire detecting and alarm equipment, intruder and burglar alarm equipment and motion detecting equipment, radio, telephonic, television and signalling apparatus and instruments, cameras, sound and video monitoring and recording and sound and video reproducing apparatus and instruments, all for control and telemetry purposes for the home and personal security, closed-circuit television systems (CCTV), monitors, cameras, optical lenses, camera casings, prepackaged cameras, videocassette recorders (VCRs), system controlling software, video monitoring apparatus, detectors, access control apparatus, readers, magnetic or encoded access control cards, monitoring apparatus, electronic panels for alarm management and monitoring, alarm panels, glass breakage detectors, smoke detectors, carbon monoxide detectors, digital audio recorders, digital video recorders, digital audio servers, digital video servers, electrical communication equipment, message programming equipment, radio paging equipment, electronic locking systems, life-saving apparatus and equipment, electric alarms, electronic devices for opening doors, electronic devices for protection, intruder alarms and anti-theft equipment, intruder detection apparatus, motion detecting equipment, electronic control apparatus, electronic apparatus for controlling operation of machines, remote apparatus for controlling operation of machines, computer apparatus for controlling operation of machines, electronic network equipment, electronic communication equipment, message programming devices, electronic locking apparatus, computer software, operating system software, devices, and hardware for transmitting, receiving, synchronizing, displaying, backing-up, monitoring, controlling, sharing, coding, decoding, encrypting, accessing, remotely accessing, creating, collecting, storing, securing, removing, transferring, disseminating, locating, organizing or otherwise utilizing data, voice, multimedia, audio, visual, music, photographs, drawings, images, audiovisual, video, text, graphics or other data, including over a global communications network, computer software, operating system software, devices, and hardware for synchronizing data, files, e-mails, contacts, calendars, task lists, text messages, photos, music, audio, visual, audio visual, video, text, graphics, programs and other information between computers and hand-held or other devices, and vice versa, communications platforms for enabling instantaneous, continuous, scheduled and perpetual synchronization of data between computers and hand-held or other devices, and vice versa, multimedia cards, memory cards, flash memory cards, memory chips, data storage media devices, plugs, plug-in cards, magnetic cards, SIM cards, telephone calling cards, headphones, headsets, portable and/or hand held electronic devices for receiving, storing, playing and transmitting data, voice, multimedia, audio, visual, music, photographs, drawings, images, audiovisual, video, text, graphics or other data, online dictionaries, encyclopaedias, and reference texts (downloadable), online publications, including newspapers, magazines (periodicals), comics, journals (publications), books, user manuals, instructional and teaching materials (downloadable), online posters, photographs, pictures, articles, tickets (downloadable), online electronic dictionaries, encyclopaedias and reference texts, (downloadable) computer software for processing electronic payments and transferring funds to and from others, online and downloadable authentication software, online conversion software and databases, including currency conversion and measurement conversion, computer software for the purpose of monitoring online communications and chat room conversations and alerting third parties to the contents, computer software for monitoring the use of computers and the Internet by children, computer software relating to online protection and online security, spectacles, contact lenses, musical instruments, medical equipment, domestic electrical and electronic equipment, washing machines, tumble dryers, washer dryers, fridges, freezers, dishwashers, cookers, ovens, hobs, microwaves, jewellery, clocks, watches, stationery, apparatus for controlling temperature including remote and computer apparatus and instruments, apparatus for controlling water supply, apparatus for controlling lighting including remote and computer apparatus and instruments, apparatus for energy efficient lighting, heating and water supply purposes, in particular, light bulbs, apparatus for water conservation and water use minimization, automated control apparatus for local management of lighting, heating and water supplies, vehicles, apparatus for locomotion by land, air or water, vehicles adapted for use with renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, paper, cardboard, paper and cardboard articles namely albums, boxes, archive boxes, tubes, mailing tubes, office paper stationery, pads, notemakers, note pads, jotter, journal, refill pads, notebooks, business book, message pads, graph pad, tracing pads, flipchart pads, business card books, telephone/address books, files, folders, suspension files, pocket files, flap wallets, portfolio wallets, slip file, gusset files, box files, lever arch files, magazine file, ring binders, dividers, paper sorter, repositionable note, page markers, envelopes, labels, string tags, CD/DVD sleeves, raffle tickets, business cards, filing modules, desktop collection tray, recycling bin, year planners, bookmark, cardboard packaging, advertisement boards of paper or cardboard, advertising signs of paper or cardboard, banners of paper or cardboard, placards of paper or cardboard, signboards of paper or cardboard, packaging bags of paper or cardboard, packaging boxes of paper or cardboard, packaging container of paper or cardboard, paper bags, disposable paper products, paper napkins, paper hand towels, drying towels of paper, tissues, handkerchiefs of paper, paper cups, paper plates, dinner mats of paper, coasters, paper place mats, cocktail mats, coffee filters, paper table covers, paper table runners, containers for ice made of paper or cardboard, bibs of paper, fly catching paper, portable / standing paper lanterns, decorative paper centrepieces, adhesive wall decoration of paper, wrapping paper, gift paper, paper party decorations, paper party bags, cake decorations, drawer liners, dust bags of paper for cleaning apparatus, flags of paper or cardboard, flower-pot covers of paper or cardboard, lining paper,make-up pads of paper, paper badges, name badges, picture mounts, paper shopping bags, paper tissues, works of art and figurines of paper or cardboard, architects models, paper party hats, paper party favours, paper trumpets, paper face masks, wall paper, artificial flowers of paper, paper hats (clothing), paper clothing, bed linen of paper, bed covers of paper, paper toys, absorbent paper, account books, cheque book holders, adhesive paper, almanacs, baking paper, baking parchment, dressmaking patterns, hat boxes of cardboard, lithographs, maps, menus, name cards, paper doilies, paper toilet seat covers, toilet tissue, postage stamps, scented paper, sandwich bags, stencils, printed matter, publications, newspapers, magazines (periodicals), comics, journals (publications) and books, publications including strategy guides, user manuals, books and magazines all in the field of computer games, science fiction, games and entertainment, quiz books, shopping guides listing products for purchase, promotional literature relating to the promotion of goods for sale via digital television, the Internet or other telecommunication channels, photographs, instructional and teaching materials (other than apparatus), posters, postcards and greeting cards, calendars, diaries, cards and stickers for collecting and collating in albums, writing requisites, rulers, erasers, writing paper, writing sets, catalogues, adhesive stickers, advertising material, advertisements, bags, credit cards, instructional manuals, newsletters, pens, pencils, writing instruments, pen and pencil holders, programme guides, stationery, user guides or manuals, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, plastic materials for packaging, publications, magazines, including all the aforesaid made from recycled and/or unbleached materials and/or from organic matter, insulation materials, in particular, for the conservation of heat within residential and commercial buildings, leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (leatherwear) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts, net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrella covers, and wallets, clothing, footwear, headgear, underclothing, clothing for men, women, children and infants, jeans, slacks, trousers, skirts, shorts, wraps, jerseys, sweaters, waistcoats, dresses, jumpers, sleepwear, robes, warm-up suits, rainwear, sweaters, scarves, hats, caps, mittens, snow suits, belts, smocks, swimwear, playsuits, bibs, stockings, socks, waterproof clothing, underwear, footwear for men, women, children, and infants shoes, sneakers, sandals, slippers, boots, headgear for men, women, children, and infants hats, headbands, earmuffs, caps, sweaters, dress shirts, blouses, jackets, ties, suits, bathing suits, belts, skirts, dresses, coats, hats, caps, tuxedos, pants, vests, hosiery, scarves, pyjamas, underwear, kilts, mufflers, shawls, footwear, shoes, boots, slippers, and athletic shoes, blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear, hair bands, ribbons for hair, hair slides, hair scrunchies, headbands, headwraps, hair elastics, hair combs, lighting, kitchenware, glassware, china, porcelain, ornaments, furniture, kitchens, sanitary ware, art, paintings, posters, postcards, prints, photographs, household containers and utensils, crockery, cutlery, furnishings, carpets, textiles, table linen, bed linen, haberdashery, sewing machines and equipment, toys, games and playthings, electronic games, hand-held devices for playing electronic, computer or video games, video games apparatus, playing cards, card games, sporting articles, games involving gambling, amusement machines, amusement apparatus and instruments, interactive educational or entertainment games, playing cards, sports equipment, fitness equipment, camping equipment, pets goods, namely pet cleaning products, hygienic and beauty implements for animals, pet shampoos and conditioners, pet towels, pet brushes, pet clothing, blankets for animals, pet cushions, rugs for pets, pet collars, ID tags for pets, leads/leashes for pets, beds for pets, nesting boxes, pet carriers, pet feeding dishes, food containers for pets, pet automatic feeders, toys, games and playthings for pets, ropes for use on pet toys, pet scratching furniture, food and drink, massage apparatus, massage chairs and massage cushions, foot spas, deck chairs, aromatherapy apparatus, saunas, hammocks, yoga equipment, pilates equipment, meditation equipment, water features, heat therapy, light therapy, sound therapy software and recordings, motor vehicles and their parts, protective clothing for cycling, locks for bicycles, lights for bicycles, cycling shoes, cycling clothing, cycling headwear including helmets, protective clothing for cycling, cycling products, namely, bike bags, wheel bags, bike box, cycle cameras, bicycles dynamos, bicycle reflectors, bicycle saddle covers, forks, stands for bicycles, bicycle mirrors, bike mounts for phones, gear and brake cables, cassettes, derailleurs, lubricants and cleaners, frame protection kits, chainstay protector, map holders, protective gloves, visors, protective body and limb pads for cycling, face masks, cases and/or bags adapted for carrying bicycles, stationary exercise bicycles, nutritional supplements in the form of bars, gels, beverages and preparations for making beverages, vitamin and mineral supplements in the form of bars, gels, beverages and preparations for making beverages, food products for use during exercise, proteinaceous preparations in the form of bars, gels, beverages and preparations for making beverages, bicycles, bicycle parts, helmets and water bottles, mudguards, bicycle seats, repair kits for cycling, including puncture repair kits, Satellite navigational system for bicycles, global positioning systems for use with bicycles, computers for use with bicycles, ergometers, computer apparatus for remote meter reading, bicycle meters, distance meters, power meters, speed meters, eyewear, sports eyewear, sun visors, protective eyewear, sunglasses, cases for eyewear, cases for sunglasses, frames for eyewear, lenses for eyewear, straps for sunglasses and eyewear, helmets, cyclists helmets, crash helmets, protective sports helmets, sports bags for protective helmets, sporting articles for protective purposes, visors, radios, communicators, aerials for radios, parts for radios, carrying cases for radios, electronic radio apparatus, mobile radios, mounting fittings for radios, radio receivers and transmitters, radio transceivers, radios for vehicles, solar powered radios, parts and fittings for all of the above, heart monitors, heart monitors to be worn during exercise, parts and fittings for all of the above, bicycle lights, parts and fittings therefor, bicycles, track bicycles, velodrome bicycles, mountain bicycles, racing bicycles, cross country bicycles, cyclo-cross bicycles, bmx bicycles, indoor bicycles, all terrain bicycles, parts and fittings for all the aforementioned goods, bicycle frames, handlebars and handlebar stems for bicycles, handlebar tape, handlebar grips, saddles, saddle posts, bicycle seat posts, bicycle rims, bicycle gears, group sets of gears, chains for bicycles, bicycle bells, baskets for bicycles, brakes for bicycles, spokes for bicycles, dress guards for bicycles, pedals for bicycles, bicycle pumps, wheels and tyres for bicycles, inner tubes for bicycles, mudguards for bicycles, bicycle stands (supports), bicycle bags, bicycle stabilisers, luggage bags for bicycles, panniers for bicycles, bicycle carriers and racks, auxiliary child seats for bicycles and parts and fittings therefor, covers for bicycles and bicycle saddles, direction indicators and signals for bicycles, fittings for bicycles for carrying beverages and food, bidons, bottle cages for bicycles, fittings for bicycles for carrying luggage and panniers, puncture repair outfits and kits for bicycle tyres, toe straps and toe clips for use on bicycles, twist grips for bicycles, trailers for use with bicycles, roof racks, roof racks for vehicles, roof rack and storage containers for land vehicles, cranks for bicycles, power meters for bicycles, parts and fittings for all of the above, horological and chronometric instruments, watches, clocks, bands for watches, bracelets for watches, straps for watches of any material, cases for watches and clocks, watch chains, clock and watch hands, dials for watches, faces for watches, electric watches, mechanical and automatic watches, movements for watches and clocks, parts for clocks and watches, pendant watches, sports watches, watch and clock springs, watch clasps, watches for outdoor use, watches for sporting use, watches incorporating a memory function, time keeping devices, stop watches parts and fittings for all of the above, sportswear, sports clothing, sports footwear, sports headwear, caps, hats, sports uniforms, sun visors, parts and fittings for all of the above, rollers for bicycles, trainers for bicycles, turbo trainers for bicycles, rollers for stationary bicycles, computer controlled exercise apparatus, parts and fittings for all of the above, meat, fish, poultry and game, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and edible fats, dairy products, butter, margarine and other butter substitutes, preserves, pickles, edible nuts and seeds and products prepared there from, shellfish, snacks, prepared meals and prepared dishes, soups, gravy and preparations for making gravy or soup, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals of from flour, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, pepper, vinegar, sauces (condiments), ice, spices, biscuits (other than biscuits for animals), cakes, pasta, pasta products and pastry products, chocolate, chocolates non-medicated confectionery, ice-cream, water ices and frozen confections, coffee substitutes, coffee essences and coffee extracts, beverages and preparations therefor, puddings, desserts, prepared meals and prepared snacks and fillings, fresh fruit and fresh vegetables, shellfish, beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages other than beer, energy drinks, wireless boosters, wireless transmitters, wireless communication apparatus, two way wireless communication systems, digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files, computer software for use in organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio, and video files, computer hardware and computer software for the reproduction, processing and streaming of audio, video and multimedia content, computer hardware and software for controlling the operation of audio and video devices and for viewing, searching and/or playing audio, video, television, movies, photographs and other digital images, and other multimedia content; computer software for creating and editing music and sounds, computer hardware, peripherals and devices for portable media storage and digital media streaming; computer hardware for upload, storage, retrieval, download, transmission and delivery of digital content, virtual reality systems, virtual reality glasses or goggle, data gloves, head mounted displays, datasuits, virtual reality clothing, headphones, speakers, joysticks, equipment and apparatus for virtual reality rooms, virtual reality software, Virtual reality headsets, helmets and viewers, Virtual Reality (VR) and Augmented Reality (AR) products namely goggles, gloves, 3D glasses for smartphones, headsets and head mounted displays adapted for use in watching videos and movies, headphones, head trackers, motion trackers, data gloves, 3D controllers, haptic devices, stereoscopic 3D displays, 2D monoscopic, monocular, Virtual Reality and Augmented Reality headsets, helmets, display screens, and sound systems comprised primarily of speakers, all adapted for use in playing video games, viewing motion pictures, and participating in Virtual Reality and Augmented Reality environments in which users can interact for recreational, leisure, or entertainment purposes, Electronic and optical communications instruments and components, namely, display screens for virtual reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files, Personal video display devices in the nature of wearable displays for viewing digital content including Virtual Reality, Augmented Reality, and mixed reality content, virtual reality motion platforms, Cameras for use in virtual reality products (headsets, head mounted displays adapted for use in watching videos and movies, headphones, head trackers, stereoscopic 3D displays), Motion tracking sensors, Hologram apparatus, Holographic apparatus, Virtual Reality immersion and integration of geographic information in interaction with on-line member communities, other applications and the data itself, Smart phones, Portable virtual reality systems, Wearable computers, Vision processing unit, Holographic Processing Unit, inertial measurement unit, virtual reality games software, virtual reality hardware and peripheral devices, Virtual reality software, Augmented reality software, Software in the field of virtual reality, motion tracking, location, position, and orientation sensing, Software for developing and interfacing with virtual reality/augmented reality software, Software, namely, mobile application for setting up, configuring, viewing and running virtual reality/augmented reality software, Hardware and software for use in enabling computers, handheld consoles, tablet computers, mobile devices, and smart phones to provide virtual world experiences, Virtual Reality software for creating, sharing, and viewing Virtual Reality content over the Internet, Virtual reality computer platform, Earphones for mobile computer terminals, microphones, earphones, smart phones, webcams, head-mounted video displays, micro-displays, namely, head mounted video displays and near eye video displays, parts and accessories for micro-display, video processors, software and firmware for video drivers and video processing; personal video display screens, personal video display devices in the nature of wearable displays for viewing digital content including virtual reality, augmented reality, and mixed reality content, downloadable computer game programs for cellular phones, mobile computer terminals, set-top boxes, DVD players connected to network and television sets connected to network, downloadable computer game programs, downloadable video game programs, game programs for home video game machines, game programs for hand-held games with liquid crystal displays, downloadable or installable computer and video game programs for home video game machines, downloadable or installable additional image data for home video game machines, downloadable or installable computer and video game programs for hand-held games with liquid crystal displays, downloadable or installable additional image data for hand-held games with liquid crystal displays, downloadable image file containing artwork, text, audio, video, games and Internet Web links relating to sporting and cultural activities, downloadable images for cellular phones and mobile computer terminals, downloadable stand by image for cellular phones, downloadable ring tones for mobile phones, downloadable electronic publications in the nature of books, manuals, magazines, newspapers in the field of video games, game software, music and video movies, earphones for home video game machines, headphones for home video game machines, microphones for home video game machines, keyboards for home video game machines, mouse for home video game machines, webcams exclusively for use with home video game machines, earphones exclusively for use with hand-held games with liquid crystal displays, headphones exclusively for use with hand-held games with liquid crystal displays, microphones exclusively for use with hand-held games with liquid crystal displays, keyboards exclusively for use with hand-held games with liquid crystal displays, mouse exclusively for use with hand-held games with liquid crystal displays, promotional literature, programmes, leaflets, tickets and passes, banners and wall hangings made of paper or cardboard, stickers, temporary tattoos, beer mats and coasters, all made of paper or card, virtual reality games, home video game machines, handset cradles for home video game machines, game controllers for home video game machines, joysticks exclusively for use with home video game machines, parts and accessories for home video game machines, protective carrying cases specially adapted for handheld video games, hand-held games with liquid crystal displays, support stands exclusively for use with hand-held games with liquid crystal displays, mounts exclusively for hand-held games with liquid crystal displays, dolls, game cards included in this class, trading card games, computer software for creating and editing music and sounds, computer hardware, peripherals and devices for portable media storage and digital media streaming, computer hardware for upload, storage, retrieval, download, transmission and delivery of digital content, programmes, leaflets, tickets and passes, banners and wall hangings made of paper or cardboard, stickers, temporary tattoos, beer mats and coasters, all made of paper or card, 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; business customer information and consultancy services for promotional, advertising and marketing purposes in relation to broadcast reception apparatus and instruments and parts and fittings therefor including cable, satellite and terrestrial, analogue or digital reception; advertising and promotional services in relation to lifestyle, ecological and environmental issues; business management and conducting of renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels and projects in connection with other renewable energy sources; collection and processing of operational data in connection with renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, including compilation of statistics relating to operation and production; The bringing together, for the benefit of others, of a variety of advertising agency services, advertising services, aerial photography services, alarm monitoring services, alternative energy products installation, maintenance and repair services, anti-spamming services, archive library services, arranging and conducting of seminars, conferences, arranging and conducting workshops, audio and video recording services, audio, film, video and television recording facilities, banking services, bar services, beauty salon services, beauty therapy services, betting services and electronic betting services, bicycle rental services, booking of seats for entertainment, sporting and cultural events, bookmaking services, box office services in relation to booking of tickets for entertainment, educational, sporting and cultural activities, box office information services in relation to booking of tickets for entertainment, educational, sporting and cultural activities, brand creation services, brand design services, broadband services, broadcasting services, business consultancy services, business data analysis services, business management advisory services, business management services, cable and satellite broadcasting and transmission services, call recording services, card services, career advisory services, casino services, catering services, charitable fundraising services, mentoring (personal) services, education and training services, education, training and entertainment services in the form of skills studios for children and young people in the field of media, television and news reporting, education, training, entertainment and sporting activities involving athletes and celebrities in the form of initiatives to promote confidence, sports skills and life skills in children and young people, education, training and entertainment services related to the promotion of creative skills in children and young people, including creative studios, financial services relating to scholarships and bursary schemes for children and young people in the fields of sport, the arts, media and television, promotional services relating to work experience and employment opportunities for young people, promotional services relating to apprenticeships and graduate employment, education, training and entertainment services in the field of initiatives to inspire young people and to provide them with life skills, business skills, opportunities for development and self-confidence, administration services relating to the organising and conducting of volunteer programmes and community service projects, chat room services, cholesterol testing services, cinema services, cloud computing/storage services, coaching services, coffee shops, communication services, computer advisory services, computer and information technology consultancy services, computer firewall services, computer installation, maintenance, repair and updating services, computer programming services, computer services, computer software advisory services, computer support services, computer system analysis services, concert ticket booking services, conference services, consumer advisory services, consumer market information services, educational course services, correspondence course services, sports coaching services, training course services, professional workshop and training course services, commercial, trade and business workshops and training course services, problem solving, think-tank and brainstorming workshops, seminars and training courses services, technical studies course services, credit betting services, credit card services, cycling event services, cycling training services, data broadcasting services, data communication services, data encryption services, data recovery services, data security services, data storage services, data streaming services, data transmission services, database services, debit card services, delicatessen restaurant services, retail delicatessen services connected with the sale of food and drink, design services, scientific development services, technical development services, development services of new products for others, development services in the field of environmental protection, energy conservation and alternative energy sources, and ecology, development services in relation to computer hardware and software, technology development services, diet advisory services, dietary education services, television programme directing services, radio programme directing services, film, music, plays, theatrical production, musical shows, concerts, exhibitions, sporting events and road show directing services, directory enquiry services, discussion group and chat room services, distance learning services, distribution services, domain name services, editing services, education services, electricity distribution services, electricity generating services, electricity supply services, electronic bulletin board services, electronic conferencing services, e-mail services, employment agency/bureau services, entertainment agency services, entertainment services, environmental conservation services, environmental consultancy services, online market place services in relation to streamable and downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast, exercise class services, fan club services, fast food/takeaway services, financial services, fitness club services, fitness testing services, fixed and mobile telephone services, flower delivery services, food development services, food nutrition services, gambling services, gaming services, gas services, gift selection/delivery services, greeting cards custom manufacture service, delivery services relating to greeting cards, gym services, hairdressing salon services, health advice and information services, health club services, health farm/spa services, hiring, leasing or rental services in relation to radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, dvds or pre-recorded video discs, hiring, rental and leasing service in relation to entertainment, holiday accommodation services, horoscope services, website hosting services, computer hosting services, hotel reservation services, hotel services, instant messaging services, instruction services, insurance services, intellectual property advisory and consultancy services, interactive entertainment services, interactive games services, interactive news services, interactive services, interactive sport services, interactive television services, internet access services, internet portal services, ISP services, IT services, leisure services, lottery services, loyalty, incentive and bonus program services, magazine and newspaper subscription services, maintenance services, gaming apparatus, equipment and instrument installation and repair services, broadcasting apparatus, equipment and instrument installation and repair services, telecommunication and/or communications apparatus equipment and instrument installation and repair services, domestic electronic equipment installation and repair services, electronic business equipment installation and repair services, alarm, lock and safe installation and repair services, computer software installation and repair services, electric and/or electrical appliance installation and repair services, market analysis studies, market assessment services, market forecasting services, marketing advisory services, marketing agency services, marketing information services, marketing research services, marketing services, music broadcasting services, on demand entertainment services, streaming, downloading and transmission services relating to entertainment, educational, sporting and cultural activities, night club services, nutrition services, online auction services, online distance learning services, online fraud protection services, online gaming services, online internet security services, online magazine and book services, online reward and incentive program services, online security services, pay to play games services, peer to peer interactive gaming services, personal training services, photographic services, photography services, podcasting services, price comparison services, product information services, product launch services, audio, visual and video production services relating to entertainment, education, training, sport and/or culture, business management services relating to cyclists, cycling teams and/or cycling events, sports promotional services, sports financial sponsorship services, administration services relating to the arranging, organising and running and/or conducting of cyclists, cycling teams and/or cycling events, rental services relating to telecommunication facilities and equipment, pub services, real estate services, recreation services, recycling services, scientific research services, technical research services, research services of new products for others, research services in the field of environmental protection, energy conservation and alternative energy sources, ecology, business research services, research services in relation to computer hardware and software, technology research services, reservation services, restaurant reservation services, restaurant services, sales promotion services, satellite services, security services, server hosting services, short message services (sms), slimming club services, social networking services, special events planning services, sponsorship services, sporting services, sporting tuition course services, storage services, taxi services, teaching services, team building services, telecommunication services, telephone marketing services, therapy services, ticket agency services (entertainment), ticket booking services, ticket reservation services, tour reservation services, tourist information services, training services, transport services, travel agency services, travel guide services, travel services, tuition services, university services, utility distribution services, utility services, utility supply services, video messaging services, video on demand services, video-conferencing services, videotext services, voicemail services, WAP services, warranty services, web portal services, webcasting services, website design/maintenance services enabling customers to conveniently view and purchase those services, including over a global computer network; electronic and online retrieval of data, files, e-mails, contacts, calendars, task lists, text messages, photos, music, audio, visual, audio visual, video, text, graphics, programs and other data or information; online auction services; provision of an online database of advertisements including personal advertisements, employment and placement opportunities advertisements and real estate advertisements; provision of online financial services comparisons; provision of online price comparison services; advertising agency services; brand creation services; business consultancy services; business data analysis services; business management advisory services; business management services; career advisory services (other than education and training advice); consumer market information services; online market place services in relation to streamable and downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast; database management services; magazine and newspaper subscription services; market analysis studies; market assessment services; market forecasting services; marketing advisory services; marketing agency services; marketing information services; marketing research services, marketing services; product launch services; business management services relating to cyclists, cycling teams and/or cycling events; sports promotional services; administration services relating to the arranging, organising and running and/or conducting of cyclists, cycling teams and/or cycling events; sales promotion services; telephone marketing services; provision of online word processing, spreadsheet, calendar, presentation and database management services; arranging, organisation and running of individual cyclist and or cycling teams; provision of virtual online office support staff services; on-line ordering/purchase of gift items; online posting of loyalty rewards information; loyalty, incentive and bonus program services; provision of online reward and incentive programs; provision of business information and advice; management of amusement parks and theme parks; insurance quotation comparisons; promotional sponsorship of individual cyclists and/or cycling teams and/or cycling events; provision of interactive business calendars from a computer database or over the Internet; provision of online reward and incentive programs relating to fitness tracking, health tracking, personal tracking, lifestyle tracking and emotional tracking; advertising, marketing and promotion consultancy; advertising services; advertising services for the promotion of radio programmes, television programmes, films and motion pictures; advertising services relating to radio programmes, television programmes, films and motion pictures; advertising services for the promotion of radio programmes, television programmes, films and motion pictures based on the customers viewing habits/preferences; promotion of radio programmes, television programmes, films and motion pictures; promotion of radio programmes, television programmes, films and motion pictures based on the customers viewing habits/preferences; market research for compiling information on viewers of television; advertising and commercial information services via audio, video, digital, and online media; promotional sponsorship; organization and conducting of exhibitions and special shows for commercial or advertising purposes; business management, particularly in respect of organizing and conducting exhibitions and special shows; arranging of entertainment, sporting or cultural events, concerts, festivals, gigs and live band events for business, commercial and advertising purposes; promoting live entertainment events and ticket sales; promoting musical artists; promotion of venues; accounting and office functions in connection with the reservation, issuing and sales of admission tickets; radio advertising; television advertising; arranging subscriptions to telecommunication services for others; online advertising; online business services for connecting social network users with businesses; providing online music subscription services; providing ad funded music subscription services; rental of advertising time on communication media; commercial administration of the licensing of the goods and services of others; provision of business information and advice; advertising by transmission of on-line publicity for third parties through electronic communications networks; advertising, including promotion relating to the sale of articles and services for third parties by the transmission of advertising material and the dissemination of advertising messages on computer networks; electronic commerce services, namely, providing information about products and services via audio, video, digital, and online media for advertising and sales purposes; advertising services in the nature of matching and connecting advertisers and video content publishers for the purpose of advertising, marketing and promotional services; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through audio, video, digital, and online media; provision of business information and advice; consultancy, information and advisory services relating to all the aforesaid services; professional consultancy, information and advisory services relating to all the aforesaid services; consultancy, information and advisory services relating to all the aforesaid services provided on-line from a computer database or via a helpline or the Internet.

The contested services are the following:

Class 35: Account auditing; accountancy services; accounting services; advertisement via mobile phone networks; advertisement for others on the internet; advertising copywriting; advice and information concerning commercial business management; advice in the field of business management and marketing; advisory services relating to business management and business operations; appointment scheduling services [office functions]; brand evaluation services; business administration consultancy; business administration services; business consultation services; business organization and management consultancy including personnel management; career placement; career placement consulting services; data processing services; employment agency services; import-export agency services; information in business matters.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 services in Class 35

Accountancy services; accounting services; business administration services; employment agency services; import-export agency services are identically contained in both lists of services (including synonyms).

The contested account auditing is included in the broad category of, or overlaps with, the opponent’s business auditing. Therefore, they are identical.

The contested advertisement via mobile phone networks; advertisement for others on the internet; advertising copywriting are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested advice and information concerning commercial business management; advice in the field of business management; advisory services relating to business management and business operations; business administration consultancy; business consultation services; business organization and management consultancy including personnel management; information in business matters are included in the broad categories of, or overlap with, the opponent’s provision of business information and advice; business consultancy services. Therefore, they are identical.

The contested advice in the field of marketing is included in the broad category of the opponent’s marketing. Therefore, they are identical.

The contested brand evaluation services are marketing services that examine the price/value relationship of a brand. As such, these contested services are also included in the broad category of the opponent’s marketing. Therefore, they are identical.

The contested appointment scheduling services [office functions]; data processing services are included in the broad category of the opponent’s office functions. Therefore, they are identical.

The contested career placement; career placement consulting services are included in the broad categories of, or overlap with, the opponent’s employment agencies; career advisory services (other than education and training advice). 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 at business customers with specific professional knowledge or expertise, such as companies seeking assistance in how to be successful, take advantage of business opportunities or promote the launch or the sale of their goods and services.

The degree of attention may vary from average to higher than average, depending on the degree of sophistication and the cost of some of the services, the frequency of their purchase and the impact they may have on the purchaser’s business.

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).

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 ‘SKYLAWFIRM’ 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 ‘LAW FIRM’.

The word ‘SKY’, which forms the earlier mark in its entirety and the beginning of the contested sign’s verbal element, will be perceived as, inter alia, ‘the region of the atmosphere and outer space seen from the earth’, ‘heaven; heavenly power’ (information extracted from Oxford Dictionaries on 03/12/2018 at https://en.oxforddictionaries.com/definition/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 word combination ‘LAW FIRM’ will be perceived as referring to ‘a business that is engaged in the practice of law’ (information extracted from Oxford Dictionaries on 03/12/2018 at https://en.oxforddictionaries.com/definition/law_firm). The primary service rendered by a law firm is to advise clients (individuals or corporations) about their legal rights and responsibilities, and to represent clients in civil or criminal cases, business transactions, and other matters in which legal advice and other assistance are sought. This verbal element is not particularly distinctive in relation to the relevant services, as it merely refers to their provider (such as a “full service” law company which offers a variety of services to their clients, including some business and advisory services). Consequently, consumers will not perceive this expression as acting as a badge of origin and its impact in the perception of the mark is limited.

The marks have no elements that could be considered clearly more dominant (visually more eye-catching) than other elements.

Visually, the signs coincide in the word ‘SKY’, which constitutes the earlier mark in its entirety 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 ‘LAW FIRM’ placed at the end of the verbal element of the contested sign, which is, however, of limited distinctiveness and impact. They also differ in the stylisation of the verbal elements in the contested sign, which is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal elements to the attention of the public.

Therefore, considering that 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 a high degree.

Aurally, the pronunciation of the signs coincides in the syllable ‘SKY’, constituting the earlier mark and present at the beginning of the contested sign’s verbal element, which is the part that first catches the attention of the consumer. The pronunciation differs in the two syllables ‘LAW-FIRM’ in the contested sign, which have no counterpart in the earlier mark but constitute an element of limited distinctiveness and impact.

Therefore, the signs are aurally similar to a high 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 through the coinciding word ‘SKY’. The marks differ in the additional concept conveyed by the contested sign, namely that of the words ‘LAW FIRM’.

Therefore, bearing in mind that the word ‘SKY’ is inherently distinctive in relation to the services at issue, whereas the differing element ‘LAW FIRM’ is of very limited distinctiveness, the coinciding element ‘SKY’ generates a high 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 has an average degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to a high degree for the relevant public on account of the coinciding verbal element ‘SKY’, constituting the earlier mark and fully included, yet clearly perceptible, in the beginning of the contested sign. The marks differ in the additional words, ‘LAW FIRM’, of the contested sign, which will be perceived as an essentially informational indication, as explained above.

Consequently, 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 than average 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. 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 3 230 041. 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

Begoña URIARTE VALIENTE

Boyana NAYDENOVA

Gueorgui IVANOV

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.