OPPOSITION No B 3 055 457

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

a g a i n s t

Skyworks Solutions, Inc., 20 Sylvan Road, 01801 Woburn, United States of America (applicant), represented by Reddie & Grose LLP, The White Chapel Building 10 Whitechapel High Street, E1 8QS London, United Kingdom (professional representative).

On 28/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 457 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 837 221 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 837 221. The opposition is based on, inter alia, United Kingdom trade mark registration No 3 188 183 for the figurative mark (series) , 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-known trade mark in the sense of Article 8(2)(c) EUTMR, the opponent invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR.

PRELIMINARY REMARKS

The applicant alleges that the opponent acted in bad faith when filing several of its earlier marks as it is re-registering its ‘SKY’ trade marks and has no legitimate commercial interest in the wide range of goods and services covered by its trade marks. It considers that the opponent’s behaviour amounts to an abuse of process.

In the present case, the Opposition Division considers that the aforementioned claim of the applicant is not the subject matter of these proceedings and could only be taken into account in a cancellation procedure.

Indeed, the sole fact that the opponent might have repeatedly filed identical applications is irrelevant to the proceedings at hand.

This view is supported also by the General Court in 19/10/2017, T-736/15, SKYLITE (fig.) / SKY et al., EU:T:2017:729, § 23-32.

‘…A finding that a person acted with bad faith when filing the application for an EU mark is an absolute ground for invalidity within the meaning of Article 52(1)(b) of Regulation No 207/2009.

By contrast with the invalidity procedure, which allows the applicant for an EU mark to contest the validity of an earlier mark, and as follows unambiguously from Article 41(1) of Regulation No 207/2009, the aim of the opposition procedure is to give proprietors of rights the possibility of contesting an application for an EU mark on the basis of earlier rights which conflict with it. More specifically, according to the case-law, in the context of an opposition procedure, EUIPO is even required to presume that the earlier mark is valid (judgment of 8 May 2012, Mizuno v OHIM — Golfino (G), T-101/11, not published, EU:T:2012:223, paragraph 22). In particular, according to that case-law, in the context of an opposition procedure, EUIPO cannot examine whether a mark fulfils the criteria that constitute an absolute ground for refusal, such as those laid down in Article 7(1) of Regulation No 207/2009 and referred to in Article 52(1)(a) of the regulation.

Similarly, in the opposition procedure, EUIPO also cannot examine whether the criteria that constitute a ground of invalidity, such as those referred to in Article 52(1)(b) of Regulation No 207/2009 are fulfilled, as regards the mark relied on in support of the opposition. Neither Article 41 nor Article 42 of Regulation No 207/2009, provide a procedural mechanism that allows the validity of an earlier mark to be contested having regard to the bad faith of the opponent’ (19/10/2017, T-736/15, SKYLITE (fig.) / SKY et al., EU:T:2017:729, § 25-27).

Therefore, this argument of the applicant cannot be a basis for the defence against an opposition.

REPUTATION — ARTICLE 8(5) EUTMR

According to the opponent, earlier United Kingdom trade mark registration No 3 188 183 for the figurative mark (series) has a reputation in the United Kingdom.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to the opponent’s earlier United Kingdom trade mark mentioned above.

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

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

 The signs must be either identical or similar.

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

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

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

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

a) Reputation of the earlier trade mark

As seen above, according to the opponent, earlier United Kingdom trade mark registration No 3 188 183 for the figurative mark (series) has a reputation in the United Kingdom.

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

In the present case, the contested trade mark was filed on 20/02/2018. However, it has a priority date of 22/08/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely the following:

Class 9: Television, sound recording, sound reproducing, telecommunications 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; remote controls; games controllers; 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; satellite dishes; computer software to enable searching of data; encoded programs for computers and for data processing and telecommunications; electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; 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 programmes; recorded programmes for broadcasting or other transmission on television, mobile telephones, PDAs and on PCs; computer hardware; computer hardware, apparatus and Instruments ail for transmitting, displaying, receiving, storing and searching electronic information; electronic computer games; electronic interactive computer games; computer software and telecommunications apparatus to enable connection to databases and the Internet; 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; computer programs for interactive television and for interactive games; electronic publications; computer games; computer video games; encoded cards; apparatus end instruments for the reception of television broadcasts including the reception of cable, satellite and digital broadcasts; communication apparatus 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.

Class 16: Printed matter, magazines.

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

Class 35: Advertising services; airtime advertising sales; media solutions for advertising; producing advertising and promotional campaigns; interactive television advertising; interactive television programme sponsorship; television programme sponsorship services, online advertising; digital text advertising; print advertising; market research services; market research for compiling information on viewers of television; market research services rotating to broadcast media; market research for advertising; research services relating to advertising and marketing; interpretation, analysis and provision of market research data.

Class 38: Telecommunications services; mobile and fixed telecommunications services; communications services; satellite communication services; television broadcasting; transmission and communication services; broadcasting and/or transmission of television programmes and/or films; satellite, DTT, cable, DSL and broadband broadcasting and/or transmission of audio and/or audio visual programming; transmission of audio, video and/or audio visual programming (by any means); broadcasting and transmission of television programmes and films to personal computers; broadcasting and communications by means of or aided by computer; transmission of audio, video and/or audio visual programming by Internet protocol (IPTV); provision of access and/or connectivity to broadband networks; transmission of sound and/or pictures; provision of audio visual content by means of telecommunications and/or communications and/or broadcasting and/or delivery and/or transmission; communication of information (including web pages), data by telecommunications and by satellite; computer aided transmission of messages and images; communications services by satellite and/or television; provision of access to news, current affairs and sports information; telecommunication services relating to the Internet telecommunication of information (including web pages); provision of telecommunications links to computer databases and websites on the Internet; telecommunications services dedicated to retailing goods and services through interactive communications with customers; interactive television services being broadcasting and/or telecommunications and/or communications and/or delivery and/or transmission services; interactive services for television viewers being broadcasting and/or telecommunications and/or communications and/or delivery and/or transmission services; television broadcasting services incorporating Interactive services for viewing guides and intelligent automated selection for programme recorded; interactive services for television viewers facilitating the records of programmes automatically initiated on the basis of customer viewing habits/preferences being broadcasting and/or telecommunications and/or communications and/or deliver/ and/or transmission services; providing interactive television viewers with access to information, data, graphics, audio and/or audio-visual content from a restricted group of Internet websites or portals; broadcasting and transmission of interactive television, interactive games, interactive news. interactive sport, interactive entertainment and interactive competitions; providing access to video on demand and near on demand services; providing access to movies, videos and television programmes to viewers on demand and near on demand; providing access to a database storing information relating to a variety of goods and services; enabling access to the Internet; prevision of a connection between websites and television viewers via an interactive television portal; Internet portal services; web portal services; provision of broadband services; factual information services naming to television broadcasting; audio visual communication services; data communication services; data broadcasting services; transmission of television programmes, films, motion pictures, audio and/or visual material.

Class 41: Entertainment services; provision of audio visual content relating to entertainment, education, training, sport and culture; entertainment services by means of toleration; providing on-line electronic publications (not downloadable); box office services; production and presentation of programmes transmitted by television, the Internet or other telecommunication channels for the conduct of the interactive viewing, selection and purchase of goods; ticket reservation services relating to entertainment production presentation and distribution of television programmes, interactive television, interactive games, interactive entertainment and interactive competitions; interactive television programme selection services for viewers; provision of interactive entertainment, news and sport for television viewers; viewing guide services; television programme recording services automatically initiated on the basis of customer viewing habits/preferences; video on demand and near video on demand services; providing movies, videos and television programmes to viewers on demand and near video on demand; belting, gaming and gambling services; news, current affairs and educational information services; distribution of television programmes, production of television programmes; entertainment; provision of news, current affairs and sports information.

Class 42: Design and development of computer hardware; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; home computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services, internet walled garden services.

Some of the abovementioned goods and services are not explicitly listed in the specification of the earlier mark or differ at least partially from the goods and services in the specification. The Opposition Division will not engage into an analysis of whether all of the abovementioned goods and services for which the opponent has claimed reputation are mentioned in the specification of goods and services for which the earlier mark is registered or are covered by categories in that specification. The Opposition Division will first analyse the evidence submitted and then determine the goods and services for which reputation is both claimed and proven and for which the earlier mark is registered.

The opposition is directed against the following goods and services:

Class 9: Computer hardware and semiconductor devices for use in radio frequency and baseband wireless communication equipment and instruction manuals provided therewith; computer software for use in operating wireless communications equipment and instruction manuals provided therewith.

Class 40: Custom manufacture and assembly of radio frequency and baseband wireless communications equipment.

Class 42: Custom design, engineering, development and consulting services in the fields of radio frequency and baseband wireless communications and manufacturing.

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

On 02/11/2018 the opponent submitted, inter alia, the following evidence:

 Annex 1, containing the following documents:

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

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

 Annex 2: a witness statement dated 08/10/2018 by Mrs E. C., the Head Counsel of IP and Operations of the Sky Group. The document contains an overview of the activities and history of the Sky Group (referred to as Sky) up until 2017. It states that Sky operates the leading pay television service in the United Kingdom and the Republic of Ireland and broadcasts a wide range of TV channels. It is stated that the ‘SKY’ brand is also well known in the UK for broadband and telephony goods and services. According to the document, by the end of 2007, Sky had achieved 70% network coverage with its ‘SKY BROADBAND’ service (p. 64 of the statement). By the end of 2014, Sky had served around 20 million customers across Austria, Germany, Italy, Ireland and the UK. The witness statement includes tables containing revenue figures for Sky for 2000-2014 (p.13-14), subscriber figures for the UK and Ireland for ‘SKY TV’ for 2008-2014 (p.16) and subscriber figures for ‘SKY BROADBAND’ internet services for 2006-2015 (p.65) and for ‘SKY TALK’ telephone services for 2006-2014 (p.66-67). The document contains snapshots from Sky’s Annual Report and Accounts 2017. The witness statement makes reference to the following exhibits:

o Exhibit 1: press releases and network summaries dated 1985-1988, some of which report on the first use of the ‘SKY’ brand in relation to television channels, including a report on SKY’s history, advertising model, technologies and containing ‘PETAR (Pan European Television Audience Research) Survey 1987’, according to which in that year ‘SKY has confirmed its position as the largest satellite TV station in Europe, reaching 92% of the cable homes surveyed across 12 countries’. The first ‘SKY’-branded channel began broadcasting in 1984.

o Exhibit 2: press cuttings dated 1983-1998 published in various online and print media outlets in the United Kingdom. The articles relate to the opponent’s business and contain some direct or indirect references to the well-known character of the opponent’s signs. For example, a publication dated 26/08/1988 states that the Sky channel is the most popular satellite TV station in Europe according to the Pan European Television Audience Research. A publication dated 15/02/1989 and entitled ‘Survey shows increasing awareness of Sky TV (News International)’ reports that a survey by McCann-Erickson revealed an 87% awareness level for satellite TV, with 84% of people having heard of Sky. An article dated 07/09/1990 announces that the opponent was about to spend more than 50 million pounds on advertising and marketing its satellite TV service between September and December.

o Exhibit 3: a table prepared by Sky’s marketing department containing versions of ‘SKY’, ‘SKY SPORTS’, ‘SKY ONE’, ‘SKY NEWS’ and ‘SKY MOVIES’ logos used according to the opponent since 1989 up to 2011.

o Exhibit 4: copies of pages from Sky’s audited annual accounts indicating the turnover and operating profit figures for 2000-2014.

o Exhibit 5: images dated by the opponent 2008-2010 showing Sky retail outlets and kiosks located according to the opponent in the UK, Ireland and Italy.

o Exhibit 6: this exhibit contains the following documents:

- a website extract obtained in 2004 from http://web.archive.org showing how the opponent’s website www.sky.co.uk looked in 1996 and showing the following image at its top: ;

- a table listing the opponent’s live websites as at June 2004 and the years in which each of them went live, as well as a table listing the opponent’s websites as of March 2015.

o Exhibit 7: this exhibit contains the following documents:

- an extract from the website of ABC Electronic (ABCE) at www.abce.org.uk, obtained in 2007, providing information about the company and its activities. It is clear from this extract that this is a company that prepares website activity audits and database user demographic audits;

- an ABCE audit report showing the number of page impressions for ‘SKY’ websites, audited for June 2004. The report shows that the websites had 5.9 million unique users for the month audited;

- an extract obtained in 2016 from the website of UKOM, a UK online audience measurement company, working in partnership with comScore;

- a document dated 30/12/2013 from comScore showing media trends in the audience for ‘Sky Portal’ between December 2010 and November 2013 with between 41 000 and 45 000 total unique visitors.

o Exhibit 8: extracts from the Broadcasters’ Audience Research Board (BARB) website, with a copyright stamp for 2014, providing information about the organisation, which provides official viewing figures for UK television audiences and the methods of obtaining the data. The extracts provide information about television ownership and viewing in the UK until 2014. There is also a document containing a table compiled using data from BARB, concerning the viewing figures for various ‘SKY’ channels for March 2004-March 2014.

o Exhibit 9: a compilation dated 2016 of images and promotional brochures showing ‘SKY’-branded devices and accessories, including set-top boxes, TV boxes and recorders, sound boxes, remote controls, gamepads, Wi-Fi hub devices, portable music devices, as well as an article dated October 2017 published on https://www.independent.co.uk entitled ‘Sky Soundbox Hands-On Review: An Irresistible Soundbar for TV Lovers’.

o Exhibit 12: materials referring to the opponent’s business services, namely:

- extracts from the opponent’s website https://business.sky.com obtained in 2016, with offers for businesses providing access to the opponent’s services ‘SKY SPORTS’ and ‘SKY TV & WiFi’;

- undated advertising leaflets and leaflets dated 2016 concerning service packages for businesses concerning the opponent’s ‘SKY SPORTS’ services. It becomes clear that the subscription to these service packages gives access to sports TV channels and exclusive live sports content to establishments to which the public is admitted such as public houses and hotels.

o Exhibit 13: materials referring to the opponent’s gaming and betting services, namely:

- extracts from the opponent’s websites www.skybet.com, www.skyvegas.com, www.skypoker.com and www.skybingo.com obtained in 2014 and 2016, showing that those websites provide online betting platforms;

- press cuttings published on the opponent’s website https://corporate.sky.com dated 2013-2015 concerning the opponent’s ‘SKY BET’ brand, the sale of stakes in Sky Bet to a private equity firm and sponsoring activities in 2013 of The Football League by Sky Bet;

- extracts from independent media showing publications mentioning ‘SKY BET’.

o Exhibit 15: materials referring to the opponent’s interactive services:

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

- a press release entitled ‘Sky Launches UK’s First Digital TV Games Controller’ dated December 2002 concerning the launch of ‘SKY GAMEPAD’ – an interactive games controller;

- screenshots from the ‘SKY SPORTS ACTIVE’, ‘SKY NEWS ACTIVE’ and ‘SKY MOVIES ACTIVE’ interactive services as broadcast;

- a press release dated 04/07/2003 regarding the launch of the ‘SKY NEWS’ broadband interactive content service.

o Exhibit 16: materials referring to the opponent’s ‘SKY BROADBAND’ and ‘SKY TALK’ services:

- extracts from the opponent’s website www.sky.com obtained in 2016, showing offers for ‘SKY BROADBAND’ and ‘SKY TALK’ internet and phone services and showing ‘SKY’ broadband equipment installed as part of the ‘SKY BROADBAND’ packages;

- publications from the opponent’s website dated 2013-2015 concerning the opponent’s ‘SKY FIBRE’, ‘SKY BROADBAND’ and ‘SKY TALK’ services, mentioning awards received by ‘SKY’ in 2014 in relation to its broadband and TV services;

- press cuttings dated 2010-2016 published in various media referring to the opponent’s ‘SKY BROADBAND’ services. It is mentioned, for example, that in 2013 ‘SKY BROADBAND’ passed the 5 million customer mark or that in 2010 the opponent’s company ‘reached a target of 10 million customers, including 3.15 million Sky+ HD customers, 2.80 million Sky Broadband and 2.55 million Sky Talk customers’.

o Exhibit 17: samples of advertising materials relating to various advertising campaigns for ‘SKY’ products (e.g. ‘SKY NEWS’, ‘SKY SPORTS’, ‘SKY MOVIES’, ‘SKY+ HD’ boxes offered with ‘SKY’ HD packages and TV subscriptions, ‘SKY’ TV, broadband and calls packages, ‘SKY ATLANTIC’ TV channel, ‘SKY mobile TV’ and ‘SKY Go’ mobile services) between 2009 and 2013 (some containing indications of the date and others dated by the opponent or undated). For some of the materials, it is indicated that they were published in UK or Irish media (e.g. the Irish Times, the Daily Mail and the Evening Standard), while others were intended to be distributed by post or there is no information on how and where they were made available.

o Exhibit 18: a DVD with a selection of advertisements used, according to the opponent, in the periods 1992-2009 and 2010-2015 for some of the opponent’s ‘SKY’-branded products, some of them featuring famous celebrities such as Dustin Hoffman, Al Pacino and David Beckham.

o Exhibit 19: this exhibit contains the following documents:

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

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

o Exhibit 21: materials referring to the opponent’s ‘TEAM SKY’ activities:

- extracts from the opponent’s website www.teamsky.com obtained in 2016, showing publications and photographs in relation to the opponent’s professional cycling team ‘TEAM SKY’ created in 2009 and of several pages from the opponent’s website and related sites offering for sale cycling equipment and accessories. A page mentions different sponsors of the team;

- press cuttings dated 2010-2015 published in various media referring to the opponent’s ‘TEAM SKY’ activities, the participation of its members in the Tour de France and their success;

- screenshots from the opponent’s mobile application ‘TEAM SKY’ showing, for example, sports news articles and races information and a screenshot showing that the app ‘Team Sky Cycling’ with the image is available for download;

- two items of promotional material in relation to the opponent’s ‘Team Sky’;

- an extract from the website www.rapha.cc, showing a ‘TEAM SKY’ T-shirt available for purchase online.

o Exhibit 22: materials referring to the opponent’s ‘corporate social responsibilities’ initiatives:

- a publication entitled ‘Seeing the bigger picture – Summary Report 2014’, showing the sign on its cover, containing some highlights of the opponent’s activities in 2013-2014, such as the launch of ‘Sky Academy’ Skills Studios in 2013, the participation of 95 000 young people in ‘Sky Sports Living for Sports’ in 2014, the launch of new electronic program guides, Sky’s commitment to environmental initiatives, etc. The report mentions that the opponent is supporting 117 000 jobs in the United Kingdom, has made an investment of 2.6 billion pounds in media content and has spent 600 million pounds on UK-produced programming by the end of 2014. It is stated that ‘SKY’ has a presence in over 11.5 million homes across the United Kingdom and Ireland;

- a report entitled ‘SKY ACADEMY’, explaining that ‘SKY ACADEMY’ is ‘a set of initiatives that use the power of TV, creativity and sport to help young people build practical skills and experience’. It was launched in 2013.

o Exhibit 23: a document prepared by the opponent containing a table of the awards won between 1992 and 2015 by the ‘SKY NEWS’ and ‘SKY SPORTS’ television channels, as well as awards won for TV and subscription services, ‘SKY+’ and ‘SKY SPORTS’ mobile apps, ‘SKY+’ and ‘SKY NOW’ TV boxes, brand PR campaigns, ‘SKY MEDIA’ awards.

o Exhibit 24: this exhibit contains the following documents:

- a brochure and a website extract, both dated 2005, with information about Factiva, a Dow Jones & Reuters Company, which provides business information and research services;

- search results obtained in 2005 and 2006 for publications dated 04/04/1998-04/04/2000 (2253 results) and 14/05/2003-14/05/2005 (4794 results) containing the words ‘SKY DIGITAL’, ‘SKY MOVIES’, ‘SKY NEWS’, ‘SKY ONE’ and/or ‘SKY SPORTS’;

- search results obtained in 2016 for publications dated 01/02/2010-31/01/2012 (59 333 results), 01/02/2012-31/01/2014 (91 656 results) and 01/02/2014-31/01/2016 (120 537 results) containing the words ‘SKY SPORTS’, ‘SKY MOVIES’, ‘SKY ATLANTIC’, ‘SKY 1’, ‘SKY ACADEMY’, ‘SKY NEWS’, ‘SKY BROADBAND’, ‘SKY+’ or ‘SKY Q’.

 Exhibit 26: a witness statement dated 16/09/2005 by Mr N. W., Managing Director of Decipher Consultancy Limited, an expert consultancy firm in the area of digital media strategy in the United Kingdom. According to the statement, ‘SKY’ is one of the best-known brands in the UK in the television field. The witness statement refers to three exhibits.



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

o Exhibit 27: a website extract from the website www.managementtoday.co.uk containing a publication dated 01/12/2009 entitled ‘Starry Sky outshines the rest’ reporting that BskyB, the opponent’s predecessor, was appointed United Kingdom’s Most Admired Company 2009. The document also comments on the success of the opponent’s TV services, with 9.5 million subscribers towards 2010.

o Exhibit 29: a document prepared by the opponent in the form of a table containing a list of decisions with positive outcomes for the opponent taken as at July 2016 in relation to ‘SKY’ marks globally, including in the European Union. The list gives the contested trade mark, the date of the decision and the relevant classes of the Nice Classification for each case.

o Exhibit 30: decisions of the EUIPO and the UK Intellectual Property Office concerning successful oppositions by the opponent against various trade marks containing the element ‘SKY’ (e.g. word and figurative marks ‘SKYSTORM’, ‘SKY MEETING’, ‘RUN2SKY’, ‘SKYBUBB AR’, ‘SKYPE’).

 Annex 3: a document prepared by the opponent in the form of a table containing a list of decisions with positive outcomes for the opponent taken up until April 2017 in relation to ‘SKY’ marks globally, including in the European Union. The list gives the contested trade mark, the date of the decision and the relevant classes of the Nice Classification for each case.

 Annex 4: a witness statement dated 31/10/2018 by Mr J. A. B., a partner at the representative of the opponent and head of the company’s intellectual property department. According to the witness statement, the mark ‘SKY’ has a very substantial reputation and significant goodwill attached to it in the fields of advertising, retail, telecommunications, broadcasting, entertainment and converging communications technology. Consequently, anyone using the ‘SKY’ mark as part of their mark for goods and services in these fields would be assumed by the UK public to be in some way connected or associated with the opponent. In addition, it is stated that any use of the ‘SKY’ mark by the applicant in relation to its services would be detrimental to the distinctiveness of the ‘SKY’ mark. The witness statement is accompanied by the following exhibits:

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

o Exhibits JAB-2 and JAB-3: extracts from English dictionaries giving the meanings of the word ‘SKY’ and the numeral ‘5’ of the marks.

o Exhibit JAB-4: website extracts of search results and information about the use of ‘5’ and ‘five’ in company and product names, including in TV channels’ names.

 Annexes 5-18, 20-21 and 24: decisions dated between 2005-2013 of the EUIPO, the UK Trade Mark Registry and other institutions in several countries of the EU concerning successful oppositions by the opponent against various trade marks containing the element ‘SKY’ (e.g. word and figurative marks ‘SKYSTORM’, ‘SKYCAPITAL’, ‘SKYVENTURE’, ‘SKYWORTH’, ‘GOODSKY’, ‘SKYMEETING’, ‘SKYPE’, ‘RUN2SKY’).

 Annex 19: extracts from Sky’s Annual Reports and Accounts for 2007-2014 and an article entitled ‘SKY PLC – Results for the twelve months ended 30 June 2015’.

 Annex 22: extracts from the website of Eurostat (the European Union’s statistical office), dated 2018, concerning the size of the UK population.

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

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

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

The information in this document is supported by the exhibits accompanying it. In particular, the press releases and advertising materials published online and in printed media or broadcasted mostly in the United Kingdom (exhibits 1-2, part of exhibit 16, exhibits 17-18, exhibit 27) give various direct and indirect information on the opponent’s investments and its promotional, communication and marketing strategies and the perception of its trade mark among consumers.

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

The witness statement of Mrs E. C. provides more recent information about the opponent’s activities, including turnover and subscriber figures for UK and Ireland and this information is supported by various exhibits. It is clear that a significant number of private households (amounting to several million households for each of the years mentioned) in the UK received the opponent’s television channels before the relevant date. Exhibit 8 provides supporting information to the claims made in the witness statement as it gives viewing figures of different ‘SKY’ channels and also shows substantial numbers of viewers.

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

The revenue figures of the ‘SKY’ group under the ‘SKY’ trade marks, for UK and Ireland, confirmed by the audited annual reports (exhibit 4 and annex 19), refer to several thousand millions GBP per year (numbers given until 2014).

The witness statement of Mrs E. C. describes the opponent’s ‘SKY’-branded telecommunication services, including regular telephony services, Internet and portal services and e-mail services. The ‘SKY TALK’ telephony service had 4.982 million subscribers in the UK in 2014 (p. 66 of the witness statement). SKY launched HD (high definition) television services in 2006, and the ‘SKY HD’ TV channels have evolved from 292 000 subscribers in 2007 to 5.242 million subscribers in 2014 (p. 56-57 of the witness statement of Mrs E. C.). The ‘SKY BROADBAND’ internet access service was launched by SKY in 2006 and had 5.750 million subscribers in June 2015 (p. 65 of the witness statement).

The information in relation to the opponent’s services is completed by some of the press releases in independent media (exhibits 15 and 16) giving information about the release of interactive telecommunication services and the number of customers of the opponent’s ‘SKY BROADBAND’, ‘SKY TALK’ and ‘SKY+ HD’ services. A publication dated 2016 mentions awards received by ‘SKY’ in 2014 in relation to its broadband and TV services.

The documents submitted (exhibits 9, 15-17) refer also to some ‘SKY’-branded goods: ‘SKY’ and ‘SKY+’ set-top TV boxes and recorders offered as part of some of the opponent’s service packages, ‘SKY’ remote controls offered with some of the opponent’s interactive services, the ‘Sky Gamepad’ – a TV game controller, ‘Sky Wireless Booster’ and ‘Sky Hub wireless router’. The documents show that the ‘SKY’ and ‘SKY+’ TV boxes and video recorders have been advertised in different publications, numerous promotional brochures and the opponent’s website. In addition, the witness statement of Mrs E. C. contains extracts from reviews of the opponent’s personal video recorders published in independent publications: ‘You cannot put a price on this level of obedience and intelligence… The difference between Sky+ and TiVo is indicative of why Sky works in every other field. There is a functional brilliance about everything it touches…’ (GQ, June 2003); ‘Still the best hard-drive video recorder thanks to the tight integration of Sky’s on screen programme guide – pick a show and Sky+ will record it for you in top digital quality…’ (Stuff, November 2003); ‘By some considerable distance, the best digital video recorded is the… Sky+ box. An essential addition to any home entertainment system’ (Guardian, December 2003), etc. The witness statement also contains reviews of the opponent’s SKY+ HD set top boxes: ‘Sky’s Sky HD set top box, it has to be said is one of our favourite gadgets of the last decade,…’ (www.pocket-lint.com, March 2010); ‘The Sky+ HD 1TB satellite box is a peach of a PVR. A huge hard drive means you no longer have to ration your recordings and the interface is slick and easy to use. With 3D compatibility and Sky’s Anytime+ video-on-demand service just around the corner, it’s a must-have upgrade for any self-respecting hi-def obsessive.’ (www.cnet.co.uk, September 2010), etc. In addition, the article published in 2017 by The Independent (exhibit 9) contains an independent review of the about to be released ‘SKY’ sound bar, qualifying it as ‘an exciting and highly promising machine…’.

The witness statement of Mrs E. C. provides an overview (p. 111-112) of the opponent’s own global expenditure on marketing and promoting its business, primarily under the ‘SKY’ trade marks, derived from its audited Annual Reports, referring to several hundred millions of GBP. The opponent has provided information by Nielsen Media Research and Universal McCann (p. 112-115 of the witness statement of Mrs E. C.), supported by the publications in Exhibit 19 in the magazines Campaign and Marketing, according to which it has been consistently ranked as the top advertising spender in the entertainment and media sector.

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

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

Even though the word ‘SKY’ is, in many occasions, used with additional terms (e.g. ‘BROADBAND’, ‘TALK’, ‘MOBILE’, ‘MEDIA’), these indications are used to distinguish between the different types and lines of services of the opponent. Moreover, these words relate to the nature of the services at issue. Consequently, the indication ‘SKY’ will be perceived as the main sign indicating the commercial origin of the goods and services at issue.

Earlier United Kingdom trade mark registration No 3 188 183 is a figurative sign (series), . Some of the documents show the same figurative sign in different colour variations, while other documents use ‘SKY’ only as a verbal indication. In any case, the stylisation of the figurative mark as registered is not particularly elaborated and is simply a graphical means of drawing attention to the verbal element ‘SKY’. Consequently, the use of the mark as a word mark or in colour in some cases does not affect its distinctiveness.

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

On the basis of the documents listed above the Opposition Division concludes that the abovementioned earlier UK trade mark has acquired a reputation in the United Kingdom at least for the following relevant goods and services for which reputation is claimed and for which the earlier mark is registered:

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

Class 38: Telecommunications.

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

The Opposition Division notes that the abovementioned goods and services are either explicitly covered by the specification of goods and services for which the earlier mark is registered, or are included in broader categories of the specification (e.g. entertainment by means of television, telephony and the Internet is included in entertainment in Class 41).

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

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

For reasons of procedural economy, the Opposition Division will not examine at this stage the remaining evidence and whether or not it succeeds in establishing that the earlier trade mark has a reputation for any of the remaining goods and services not covered by the above categories.

b) The signs

	Sky5
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 registered in the United Kingdom as a series of marks. A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark. Therefore, the two signs covered by the series of marks are independent and the comparison below will take into account one of them.

The contested sign is the word mark ‘Sky5’. 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 word, ‘SKY’, present in both marks under comparison, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon that is characteristically blue or grey during the day, red in the evening, and black at night’, ‘outer space, as seen from the earth’ (information extracted from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/sky on 21/11/2019). This word has no connection to any of the goods or services at issue and is of normal distinctiveness.

The numeral ‘5’ following the word ‘SKY’ in the contested sign has the concept of the cardinal number it represents. The Opposition Division notes that it constitutes a common practice in many sectors that certain products are marked with additional symbols, such as numbers, to indicate a different model or version. For this reason the indication ‘5’ in the contested sign is likely to be perceived as allusive in relation to the relevant goods and services, as it will inform the relevant consumers about characteristics of the goods and services at issue, such as version, model number or sequel. This numerical element is, therefore, of somewhat limited distinctiveness for the goods and services it issue.

Visually, the signs coincide in the word ‘SKY’, which is the sole verbal element of the earlier mark and is included as an identifiable element at the beginning of the contested sign.

The marks differ only in the additional number, ‘5’, of the contested sign, which is less distinctive for the relevant goods and services. The marks differ also in the stylisation of the verbal element of the earlier mark, which is decorative and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.

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

Aurally, the pronunciation of the signs coincides in the sound of the word ‘SKY’, which constitutes the earlier mark’s only verbal element and is present at the beginning of the contested sign, and which will be pronounced in one syllable. The pronunciation differs in the sound of the less distinctive numeral ‘5’ in the contested sign, which has no counterpart in the earlier mark and will also be pronounced in a single syllable.

Therefore, considering the normal distinctiveness of the coinciding component ‘SKY’, which is present at the beginning of the contested sign, it is considered that the marks are aurally similar to a higher than average degree.

Conceptually, there is a link between the signs due to the coinciding distinctive word ‘SKY’. The marks differ in the additional concept conveyed by the contested sign, that of the number ‘5’, which is less distinctive than the coinciding component. Therefore, the marks are conceptually similar to a higher than average degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

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

According to the Court of Justice of the European Union,

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

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

The Court of Justice has also noted,

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

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

The goods and services for which the earlier mark has reputation are the following:

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

Class 38: Telecommunications.

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

The contested goods and services are the following:

Class 9: Computer hardware and semiconductor devices for use in radio frequency and baseband wireless communication equipment and instruction manuals provided therewith; computer software for use in operating wireless communications equipment and instruction manuals provided therewith.

Class 40: Custom manufacture and assembly of radio frequency and baseband wireless communications equipment.

Class 42: Custom design, engineering, development and consulting services in the fields of radio frequency and baseband wireless communications and manufacturing.

The signs are similar on account of the common element, ‘SKY’, which constitutes the earlier mark’s only verbal element and is present as an identifiable and distinctive element at the beginning of the contested sign, accompanied only by the less distinctive element ‘5’. The earlier mark is inherently distinctive for the relevant goods and services and, moreover, enjoys a high degree of recognition and substantial reputation for those goods and services, as specified above.

There is a connection between the opponent’s goods and services in Classes 9, 38 and 41 (essentially telecommunication apparatus and services and entertainment by means of television, telephony and the Internet) for which the earlier mark has a reputation, and the contested goods and services in Classes 9, 40 and 42 (essentially hardware, devices and software used with telecommunications apparatus, custom manufacture of radio telecommunications equipment and design and development in the field of radio telecommunications).

All of these goods and services are related to the telecommunication field. The telecommunications industry, within the sector of information and communications technology, is made up of telecommunication companies and, as it is evident from the opponent’s submissions (in particular the witness statement of Mrs E. C. dated 08/10/2018), the opponent is one of these companies with a leading position in the United Kingdom. This witness statement traces the opponent’s development and demonstrates that, over the years, it has expanded its activities and its portfolio of goods and services to cover various needs in the telecommunications sector by providing broadcasting, telephony and internet services, as well as video receivers and recorders, game controllers, online interactive apps, games and platforms. The telecommunications sector is one of the fastest growing and most innovative industries and telecommunications operating companies often provide a very wide portfolio of goods and services in this field and related fields. Considering all of the above, it is reasonable to conclude that the relevant public is likely to make a connection between the opponent’s goods and services in Classes 9, 38 and 41 under the reputed earlier mark and the contested goods and services in Classes 9, 40 and 42 when encountering the contested mark ‘Sky5’.

Taking into account and weighing up all the relevant factors, which include the degree of similarity between the signs, the connection between the goods and services and the strength of the earlier mark’s reputation, it is likely that the contested sign will bring the earlier mark to the mind of the relevant public in relation to the abovementioned contested goods and services.

Therefore, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that because of the fame of its trade mark the use of a similar mark for related goods and services will inevitably free-ride on, or take advantage of, the opponent’s reputation because consumers will be likely to associate the mark applied for with the opponent’s famous brand. It also considers that use of the applicant’s mark will cause detriment through tarnishing to the repute of the opponent’s mark, since the opponent will not be able to control the manner in which the applicant uses its sign. It states that use of the applicant’s mark will cause detriment to the distinctive character of the earlier mark, which will reduce the capacity of the opponent’s ‘SKY’ mark to distinguish its goods and services from those of other providers and will reduce its power of attraction.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and would be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent claims that its mark has a substantial reputation in the United Kingdom, which has been acquired over more than 30 years in relation to goods and services in the fields of telecommunications, broadcasting, entertainment and converging communications technology. According to the opponent, each year ‘SKY’ further enhances its position as a company renowned for its innovation in the fields of entertainment and communications, with enormous expenditure on brand recognition and significant marketing efforts.

The opponent is of the opinion that, as a result, any use of the ‘SKY’ mark as part of another mark, in particular when the additional elements are not particularly distinctive (in the opponent’s opinion, the element ‘5’ of the contested sign is non-distinctive), will ride on the coat-tails of the opponent’s reputation for the ‘SKY’ mark, which is associated by the relevant public with quality service and technological innovation. The opponent considers that the distinctive character of the earlier mark will be taken advantage of and put at risk, and that the reputation of the earlier mark will be traded off. Consequently, the opponent considers that the contested mark ‘Sky5’ will take unfair advantage of the earlier mark as a consequence of an association between the marks (in relation to these claims see, for example, point 3.1 and point 9 of Mr J. A. B.’s witness statement and the submissions of Mrs E. C. with references to figures to support her statements).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

As seen above, there is a link between the signs since the marks are visually, aurally and conceptually similar to an above average to high degree, the earlier trade mark has a substantial reputation and there is a clear relationship between the opponent’s goods and services in Classes 9, 38 and 41, for which the earlier mark is reputed, and the contested goods and services in Classes 9, 40 and 42, which are also related to the field of telecommunications. Considering the strong similarity between the signs, the distinctiveness and the reputation of the earlier mark, and the clear relationship between the goods and services at issue, there is a high probability that the use of the mark applied for, for the goods and services concerned, may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark and the investments undertaken by the opponent to achieve that reputation.

For example, the goods and services for which protection is sought could be more attractive to consumers than they otherwise would be due to the reputation of the earlier mark and therefore the opponent’s reputation could facilitate the marketing of the abovementioned contested goods and services or the applicant may unfairly benefit from the reputation of the opponent’s mark. It seems inevitable that the earlier mark’s image in the United Kingdom — namely being associated with innovation and convergent technologies in the telecommunications field — and its reputation for telecommunication apparatus and services in Classes 9 and 38 and entertainment by means of telecommunication instruments in Class 41, as shown in the evidence submitted, will be transferred to the aforementioned contested goods and services if they are marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s mark in the minds of consumers.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining evidence for reputation under Article 8(5) EUTMR or the remaining grounds and earlier rights on which the opposition was based.

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

Catherine MEDINA

Boyana NAYDENOVA

Angela DI BLASIO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.