OPPOSITION No B 3 101 419

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

Guangzhou Skydance Co., Ltd, 3F, No.56, Huancundong Road, Zhongcun Street, Panyu District, Guangzhou, People’s Republic of China (applicant), represented by Tellavas S.L.U., Rambla Cataluña 38 8ª, 08007 Barcelona, Spain (professional representative).

On 24/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 101 419 is upheld for all the contested goods.

2. European Union trade mark application No 18 093 701 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 093 701 for the figurative mark . The opposition is based on, inter alia, United Kingdom trade mark registration No 3 188 183 for the figurative mark 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 marks 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 goods and services on which the opposition is based are, inter alia, the following:

Class 9: Control panels [electricity]; Data processing apparatus; Light dimmers [regulators], electric; Light-emitting diodes [LED]; Lighting ballasts; Measuring instruments; sockets and other contacts [electric connections]; Regulating apparatus, electric; Relays, electric; Remote control apparatus; Stage lighting regulators; Step-up transformers; Switches, electric.

Class 35: The bringing together, for the benefit of others of a variety of goods namely lighting 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 9: Switches, electric; relays, electric; light dimmers [regulators], electric; lighting ballasts; piezoelectric sensors; light-emitting diodes [LED]; remote control apparatus; data processing apparatus; step-up transformers; regulating apparatus, electric; control panels [electricity]; stage lighting regulators; electric sockets.

Class 11: Light bulbs, electric; lamps; lanterns for lighting; lighting apparatus and installations; ceiling lights; luminous tubes for lighting; street lamps; light-emitting diodes [LED] lighting apparatus; fairy lights for festive decoration; electric lamps.

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).

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 9

Switches, electric; relays, electric; light dimmers [regulators], electric; lighting ballasts; light-emitting diodes [LED]; remote control apparatus; data processing apparatus; step-up transformers; regulating apparatus, electric; control panels [electricity]; stage lighting regulators; electric sockets are identically contained in both lists of goods.

The contested piezoelectric sensors are included in the broad category of the opponent’s measuring instruments. Therefore, they are identical.

Contested goods in Class 11

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 retail services of ‘lighting’ in Class 11. The contested goods in Class 11, listed above, are different kinds of lighting apparatus. Therefore, they are identical to the goods of the opponent’s retail services as they are either identically contained in both lists, despite slightly different wordings (e.g. the contested lighting apparatus and installations and lighting , being the object of the opponent’s retail services) or because they are included in the broader category of ‘lighting’ which is the object of the opponent’s retail services (e.g. light bulbs, electric; lamps; lanterns for lighting are included in the broader category of lighting of the opponent’s retail services).

The contested goods in Class 11 are, therefore, considered similar to the opponent’s the bringing together, for the benefit of others of a variety of goods namely lighting 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 identical or similar are directed at the public at large and at business customers with specific knowledge or expertise.

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

c) The signs

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 part of a family of marks. A family/series of trade marks means a number of trade marks that resemble each other due 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 is the verbal element ‘SKY’ depicted in a stylised font in graduated shades of grey.

The contested sign is a figurative mark consisting of the verbal element ‘SKYDANCE’, depicted in bold and slightly slanted upper case letters.

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 18/09/2020 at https://www.collinsdictionary.com/dictionary/english/sky). This word has nothing relevant in common with any of the goods and services at issue and, therefore, is of normal distinctiveness.

Regarding the contested sign’s verbal element ‘SKYDANCE’, 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).

Consequently, the relevant consumers taken under consideration will perceive ‘SKYDANCE’ as a combination of the words ‘SKY’ and ‘DANCE’ because these are both words known to them.

The first word, ‘SKY’, has been already defined above. The distinctiveness of this word is average also in relation to the relevant contested goods.

The second part of the contested sign, ‘DANCE’, will be perceived by the relevant public under analysis as ‘a particular series of graceful movements of your body and feet, which you usually do in time to music’ (information extracted from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/dance on 18/09/2020). It is of normal distinctiveness in relation to the relevant goods as it bears no direct reference to them.

As a whole, the word combination ‘SKYDANCE’ may be associated by a part of the relevant public with the abstract notion of ‘a dance in the sky’ or may be perceived at least by a part of the public as the mere combination of the meaningful elements ‘SKY’ and ‘DANCE’. In any event, the element ‘SKYDANCE’ as a whole is of average distinctiveness in relation to the relevant goods.

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. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The marks differ in the additional conjoined word ‘DANCE’, placed at the end of the contested sign’s verbal element, ‘SKYDANCE’. They also differ in the slight stylisation of their verbal elements. However, this will be perceived as merely decorative, as consumers are accustomed to the stylisation of verbal elements in marks.

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 an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘SKY’, which is pronounced as a single syllable. The pronunciation differs in the sound of the word ‘DANCE’ (which is also one syllable) at the end of the contested sign, which has no counterpart in the earlier mark.

Therefore, considering the normal distinctiveness of the coinciding component ‘SKY’ and the fact that it is placed in the part with most impact of the contested sign - its beginning - the marks are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

There is a conceptual link between the signs due to the coinciding word ‘SKY’. The marks differ in the additional concept conveyed by the contested sign, that of the word ‘DANCE’.

As indicated above, the word combination ‘SKYDANCE’ may be perceived as a conceptual unit consisting of two meaningful words or as the simple sum of the meaningful elements of which it is composed. In any case, regardless of how this expression is perceived and interpreted, the public will be aware of the semantic content of the word ‘SKY’ at the beginning of the contested sign. This word is inherently distinctive in relation to all the goods and services at issue and, therefore, this coincidence generates an average degree of conceptual similarity between the marks.

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

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods are identical or similar to the opponent’s goods and services. 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’, constituting the only verbal element of the earlier mark and fully included as an identifiable and distinctive element at the beginning of the contested sign. The marks differ in the additional conjoined word ‘DANCE’ of the contested sign, which will not go unnoticed by consumers, and in the stylisation of the verbal elements of the marks.

Nevertheless, given the reproduction of the whole verbal element of the earlier mark as the distinctive and initial element ‘SKY’ in the contested sign, there may be at least a risk of association between the signs at issue.

In fact, 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/services covered are from the same or economically linked undertakings.

In the present case, the relevant consumers may legitimately believe that the contested sign is a new extension/continuation or new brand line of goods provided under the opponent’s mark, because the addition of sub-brands attached to a main/ house brand is a common market practice. In other words, consumers may confuse the commercial 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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and 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 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. The same applies as regards the opponent’s claim that it has a family of marks.

As the abovementioned earlier mark 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.