OPPOSITION No B 3 086 869

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

The Upper Deck Company, 2251 Rutherford Road, 92008 Carlsbad, United States of America (applicant), represented by A2 Estudio Legal, Calle Javier Ferrero, 10, 28002 Madrid, Spain (professional representative).

On 30/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 869 is upheld for all the contested goods.

2. European Union trade mark application No 18 013 116 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 of European Union trade mark application No 18 013 116 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 13 470 745 for the word mark ‘SKY BOX’, in relation to which the opponent invoked Article 8(1)(a) and (b) EUTMR. In relation to its other earlier rights, which include other registered trade marks as well as a non-registered mark used in the course of trade, 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 European Union trade mark registration No 13 470 745.

a) The goods

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

Class 9: Computer software; computer games.

Class 16: Printed matter; cards and stickers for collecting and collating in albums.

The contested goods are the following:

Class 9: Software; digital trading cards.

Class 16: Sports trading cards; trading cards.

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.

The applicant argues that the opponent is a telecommunications company operating in a field different from the one of the applicant’s goods and that the companies’ goods and services are offered through different distribution channels to different consumers and so there is no similarity between the goods at issue.

In this regard it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58). Therefore, when considering whether or not the contested EUTM falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered that are relevant.

Contested goods in Class 9

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

The contested digital trading cards are a digital counterpart of a physical trading card and are normally offered as parts of digital collectable card games. Consequently, these contested goods are at least highly similar to the opponent’s computer games as they have very similar nature and purposes (being digital content used for entertainment) and usually coincide in their producers, distribution channels and relevant public.

Contested goods in Class 16

The contested sports trading cards; trading cards refer to any of various small, illustrated collectable cards issued in sets, such a card displaying the statistics and photograph of a professional athlete. These contested goods at least overlap with the opponent’s cards and stickers for collecting and collating in albums. Therefore, they are identical.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical or highly similar are directed partly at the public at large and partly at business customers with specific knowledge or expertise (e.g. in the case of some specialised business software).

The degree of attention may vary from average to above average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

SKY BOX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a word mark, consisting of the words ‘SKY BOX’. The protection of a word mark concerns the word as such as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation), as in the case of the earlier mark.

The contested sign is a figurative mark consisting of the conjoined words ‘SKY’ and ‘BOX’ depicted in slightly stylised lower-case grey letters in a diagonal direction. The contested sign has no dominant (visually more eye-catching) elements.

All the words present in the marks under comparison are English words.

The contested sign’s verbal element, ‘SKYBOX’, as a whole, is an invented word. However, 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; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

Taking into account the aforementioned principle, it is considered that the relevant English-speaking public will perceive the contested sign’s verbal element ‘SKYBOX’ as a combination of the meaningful in English elements ‘SKY’ and ‘BOX’.

The word ‘SKY’, present at the beginning of both marks will be perceived by the English-speaking part of the public as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (information extracted from Collins English Dictionary on 28/09/2020 at https://www.collinsdictionary.com/dictionary/english/sky), whereas it will be perceived as meaningless by the non-English-speaking consumers in the relevant territory. In any event, the inherent distinctiveness of this term is average in relation to the relevant goods, as the word ‘SKY’ has no connection to any of their essential characteristics.

The second word of the marks, ‘BOX’, will be perceived by parts of the public in the relevant territory, such as the English-speaking part or by the consumers in other territories where this term has become part of common expressions, as, inter alia, ‘a receptacle or container made of wood, cardboard, etc, usually rectangular and having a removable or hinged lid’, ‘any of various containers for a specific purpose’ (information extracted from Collins English Dictionary on 28/09/2020 at https://www.collinsdictionary.com/dictionary/english/box), and will be seen as meaningless by those consumers in the relevant territory with no knowledge of English and where this term is not used. The word ‘BOX’ is also in both cases normally distinctive in relation to the goods at issue as it has no relevant connection to any of their essential characteristics.

As a whole, for the English-speaking consumers who understand both of these words, the word combination ‘SKY( )BOX’ may refer to ‘skybox’ - ‘a luxurious suite high up in the stand of a sports stadium, which is rented out to groups of spectators, corporations, etc.’ (information extracted from Collins English Dictionary on 28/09/2020 at https://www.collinsdictionary.com/dictionary/english/skybox) or, considering that the relevant goods have no connection to sport stadiums and arenas, may be perceived with an abstract and unclear notion such as ‘a box in the sky’. In any case, this word combination is distinctive for the relevant goods at issue. Moreover, given that these concepts are identically present in both marks and the marks contain no other conceptually meaningful elements, the marks are on equal footing as far as their distinctiveness is concerned.

The marks differ only in the graphical depiction (positioning and stylisation) of the verbal element of the contested sign, as well as in the fact that the verbal elements ‘SKY’ and ‘BOX’ are depicted as two words in the earlier mark and as a conjoined element in the contested sign. These differences are rather limited as they affect elements of a mostly decorative nature.

Consequently, the marks under comparison are visually similar to a high degree, aurally identical and conceptually either identical, if a meaning would be assigned to the common verbal elements, or, if not, the conceptual similarity would not influence this assessment.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its ‘SKY BOX’ mark is particularly distinctive by virtue of intensive use or reputation. Admittedly, in the opponent’s observations a reference to the reputation of the ‘SKY’ family of marks is made, which may include also the ‘SKY BOX’ mark. In any event, irrespective of whether or not this reference should be considered a claim of enhanced distinctiveness of the earlier mark, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case the goods under comparison are identical or highly similar and target the public at large or business customers whose degree of attention may vary from average to above average. The earlier mark enjoys a normal degree of distinctiveness per se in relation to the relevant goods. The signs are visually similar to a high degree, aurally identical and, for a part of the public, conceptually identical while for the other part of the public the conceptual aspect does not influence the comparison of the signs.

Consequently, it is considered that the similarities between the signs are sufficient to lead to a likelihood of confusion between them for the contested goods for the relevant the public, even considering that the degree of attention in relation to some of the goods may be above average. Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In its observations, the applicant argues that the common word ‘SKY’ has low distinctive character given that it is a common English word and that many trade marks include that element. In support of its argument the applicant refers to some trade mark registrations in the European Union containing the word ‘SKY’ registered for goods in Classes 9 and 16.

The Opposition Division notes that the existence of some trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘SKY’. Additionally, the Opposition Division notes that the fact that the word ‘SKY’ exists in the English language is not in itself a reason to consider this word as weak, as claimed by the applicant, since the meaning of the word ‘SKY’ does not provide any information about characteristics of the goods at issue. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 470 745, ‘SKY BOX’.

It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation even in case the reference to the reputation of the Sky family of marks were considered a claim of enhanced distinctiveness of the earlier mark, ‘SKY BOX’. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

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(1)(a), Article 8(4) and Article (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, 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

Angela DI BLASIO

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

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.