OPPOSITION Nо B 3 097 489

 

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

 

Junchao Zhou, 5d, Ruiheyuan Ruixinge, Yitian Road, Futian District, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by Zeller & Seyfert Partg Mbb, Friedrich-Ebert-Anlage 35-37 (tower 185), 60327 Frankfurt Am Main, Germany (professional representative).

On 19/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

  1. Opposition No B 3 097 489 is upheld for all the contested goods.

2.	European Union trade mark application No 18 093 314 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 18 093 314 ‘FLYSKY’ (word mark). The opposition is based on, inter alia, United Kingdom trade mark registration No 3 188 183, , 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.

 

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 3 188 183.

 

a) The goods and services

 

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

 

Class 35: The bringing together, for the benefit of others of a variety of goods namely, clothing, footwear, trousers, sweaters, waistcoats, hats, caps, stockings, socks, sandals, jackets, ties, suits, bathing suits, pants, hosiery, pyjamas, shawls, footwear, shoes, overalls, cycling clothing; aprons; bathing trunks; scarves; t-shirts 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.

The contested goods are the following:

Class 25: Footwear; stockings; overalls; caps being headwear; hosiery; pyjamas; shoes; Tee-shirts; jackets [clothing]; shawls; sandals; sweaters; socks; underpants; shirts; clothing; hats; tights; brassieres; suits; ready-made clothing; babies' pants [underwear]; trousers; cyclists' clothing; outerclothing; scarves; veils [clothing]; girdles; waistcoats; bathing suits; bathing trunks; layettes [clothing]; sports jerseys; aprons [clothing]; uniforms.

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 opponent’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).

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T‑390/16, DONTORO dog friendship (fig.) /TORO et al., EU:T:2018:156, § 33; 07/10/2015, T‑365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, in that they are complementary, and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they target the same public.

The opponent’s services in Class 35 are, inter alia, retail services of various goods in Class 25. The contested goods in Class 25, listed above, are identical to the goods covered by the opponent’s retail services. This is because they are either identically contained in both lists, despite slightly different wordings (e.g. footwear; stockings; overalls; caps being headwear; aprons; hosiery) or because some of the contested goods are included in the broader category of clothing which is the object of the opponent’s retail services.

The contested goods in Class 25 are, therefore, considered similar to the opponent’s the bringing together, for the benefit of others of a variety of goods namely, clothing, footwear, trousers, sweaters, waistcoats, hats, caps, stockings, socks, sandals, jackets, ties, suits, bathing suits, pants, hosiery, pyjamas, shawls, footwear, shoes, overalls, cycling clothing; aprons; bathing trunks; scarves; t-shirts enabling customers to conveniently view and purchase those goods including via an Internet website, an interactive television shopping channel, a digital television shopping channel, an Internet walled garden or by means of interactive television and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media in Class 35. For the reasons above, they are complementary, are generally offered in the same places and target the same public.

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 and services found to be similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

 

	FLYSKY
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, for procedural economy the Opposition Division will focus the comparison of the signs on earlier mark 2) in the series of two. The earlier mark consists of the word ‘SKY’ in stylised lower-case letters in different shades of grey.

The earlier mark’s verbal element ‘SKY’, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon that is characteristically blue or grey during the day, red in the evening, and black at night’, ‘outer space, as seen from the earth’ (information extracted from Collins English Dictionary on 12/11/2020 at https://www.collinsdictionary.com/dictionary/english/sky). This word has no connection with any of the services at issue and is therefore of normal distinctiveness.

The contested sign is the word mark ‘FLYSKY’.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Taking into account the aforementioned principle, it is reasonable to assume that the relevant public will perceive the contested sign’s verbal element as a combination of ‘FLY’ and ‘SKY’ as they are both words known them.

The word ‘SKY’ of the contested sign has been already defined above and will be perceived with the same meaning. It is of average distinctiveness also for the relevant goods of the contested sign.

The initial element of the contested sign ‘FLY’ is a verb referring to something that ‘moves through the air’ such as an aircraft (information extracted from Collins English Dictionary on 12/11/2020 at https://www.collinsdictionary.com/dictionary/english/fly). Therefore, it is distinctive in relation to the contested goods since it does not describe or even allude to any of the essential characteristics of these goods.

The word sequence ‘FLYSKY’ of the contested sign makes no sense as a whole, as it is not grammatically correct and sounds quite unclear. Consequently, the public in the relevant territory will instantly register and comprehend the meaning of the separate terms that compose this expression, since they do not form a different unit, as a whole, that might be interpreted as something more than the simple sum of its parts.

The signs have no elements which could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘SKY’, which is the only verbal element of the earlier mark and plays an independent and distinctive role in the contested sign. The signs differ in the additional word element ‘FLY’ of the contested sign that, as explained above, is distinctive in relation to the goods at issue. It is true that ‘FLY’ of the contested sign is the first element in the word sequence ‘FLYSKY’ and that in general consumers tend to focus on the initial parts of the signs. However, this principle of perception of signs is not absolute and different factors may influence its relevance. In this case, the word ‘FLY’ has the same length as the second shared element ‘SKY’, which is a distinctive word and plays an independent role in the contested sign.

Therefore, taking into account the shared element ‘SKY’ and the abovementioned facts regarding the distinctiveness of the marks’ elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SKY’, which constitute the only verbal element of the earlier mark and are present identically as the second syllable of the contested sign. The pronunciation differs in the sound of the initial letters ‘FLY’ of the contested sign, also constituting one syllable, which have no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept of the word ‘SKY’, which is inherently distinctive in relation to the goods and services at issue. The verbal element ‘FLY’ at the beginning of the contested sign will introduce an additional concept in the contested sign. Therefore the signs are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier mark

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

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

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

The goods and services under comparison are similar and are directed at the public at large whose degree of attention is average. The earlier mark has an average degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to an average degree on account of the coinciding verbal element ‘SKY’, which constitutes the earlier mark’s only verbal element and is fully included as the second verbal element of the contested sign. The marks differ in the additional conjoined element, ‘FLY’, at the beginning of the contested sign, in the marks’ lengths and stylisation of the earlier mark which is however not particularly striking and will not be afforded much trade mark significance by the public.

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

In the present case, the relevant consumers may legitimately believe that the contested trade mark is a new extension/continuation or a new brand line of goods, provided under the opponent’s mark. In other words, consumers may confuse the origins of the goods and services at issue, assuming that they come from the same undertaking or from economically linked undertakings.

Considering all the above, 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 3 188 183. 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 aforementioned 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 aforementioned 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).

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.

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

 

 

Boyana NAYDENOVA

Angela DI BLASIO

Kieran HENEGHAN

 

 

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.