OPPOSITION Nо B 3 102 495

Sky Limited, Grant Way, TW7 5QD Isleworth, 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

AJ Hackett International Pte. Ltd, 30 Siloso Beach Walk, 099011 Singapore, Singapore (applicant), represented by Clarke, Modet y Cía., S.L., Rambla De Méndez Núñez, Nº 21-23, 5º A-b, 03002 Alicante, Spain (professional representative).

On 28/07/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 102 495 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

 

On 07/11/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 094 424 for the word mark ‘SKYPARK’ namely against all the goods and services in Classes 25, 41 and 43. The opposition is based on European Union trade mark registrations No 14 893 176 for the word mark ‘SKY’, No 14 897 789 for the figurative mark , and No 14 903 173 for the figurative mark , and on United Kingdom trade mark registrations No3 188 183, for the series and (figurative mark) and No 3 188 194, for the figurative mark . In relation to the above mentioned trade marks the opponent invoked Article 8(1)(b) and 8(5) EUTMR.

 

The opposition is also based on the non-registered trade mark ‘SKY’, used in the course of trade in the United Kingdom, in relation to which the opponent invoked Article 8(4) EUTMR. In the documents submitted together with the notice of opposition, the opponent also claims to be the owner of the trade mark ‘SKY’, well-known in the UK and protected under Article 6bis of the Paris Convention.

EARLIER UK RIGHTS

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union (EU) subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1), (4) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registrations No 3 188 183 for the for the series and (figurative mark) and No 3 188 194 for the figurative mark , the United Kingdom non-registered trade mark ‘SKY’ and the mark ‘SKY’, well-known in the UK, no longer constitute valid basis of the opposition.

The opposition must therefore be rejected insofar as based on these earlier rights.

SUBSTANTIATION

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

On 02/12/2019, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 07/04/2020.

The evidence filed by the opponent on 31/03/2020 (i.e. within the time limit set by the Office expiring on 07/04/2020), which includes, inter alia, a document showing the change of name of the opponent from the initial BRITISH SKY BROADCASTING GROUP PLC to Sky PLC and later from the latter to Sky Limited, and a licence agreement between, on the one hand, the initial licensee BRITISH SKY BROADCASTING GROUP PLC (subsequently changed into Sky Limited -the opponent- as indicated above) and, on the other hand, the owner of the earlier trade marks at issue, Sky International AG, is not sufficient to substantiate the opponent’s earlier European Union trade mark registrations No 14 893 176, No 14 897 789 and No 14 903 173 for the following reasons.

In the present case Sky Limited, with an address in the United Kingdom, filed the opposition indicating in the notice that it is the authorised licensee and that the owner of earlier EUTMs 14 893 176, No 14 897 789 and No 14 903 173 is the company Sky International AG (also owner at the time of filing the opposition), with an address in Switzerland. This ownership is also corroborated in the data on file.

According to Articles 25, 26 and 29 EUTMR, the Office registers and publishes licenses in respect of European Union trade mark. If the earlier mark is an EUTM, the registration of the license constitutes sufficient proof of the opponent’s licensee status. However, when filing an opposition, a licensee acting as the opponent will still have to submit evidence of its authorization to file the opposition. Yet, if the licensee’s authorisation to file the opposition can be proved on the basis of a document previously submitted to the Office, pursuant to Article 25(5) EUTMR, the opponent is not required to submit the same document in oppositions it subsequently files; but in such case, the opponent must clearly rely on and identify the document and the provision that proves its authorisation to file the opposition (registration number of the licence, date and title of the document, number of the relevant clause, etc.). Once identified, that document will be included in the file of the case and forwarded to the applicant for observations.

In the present case, as already indicated above, within the time limit given by the Office, the opponent submitted a licence agreement between the licensee (the opponent) Sky Limited (formerly BRITISH SKY BROADCASTING GROUP PLC) and the owner of the earlier marks in question, SKY INTERNATIONAL AG. Although this agreement shows an express authorisation issued to the licensee (the opponent) to file oppositions to EUTM applications, this agreement does not actually prove the licensee’s (the opponent’s) authorisation to file the present opposition based on the earlier marks at issue. Indeed, the licence agreement does not refer to these earlier EUTMs given that the list of trade marks attached to the license agreement does not actually contain any indications allowing to identify these earlier trade marks, such as their registration or application numbers, the registration territories and/or trademark representations. Moreover, in the licence agreement, the relevant paragraph reads as follows: ‘Trade marks means the registered, applied for or unregistered word Community trademarks related to the trade marks set out in Schedule 2 hereto and any device marks relating thereto which are current as set at the Commencement date, subject to any additions or deletions made to those trade marks pursuant to Clause 4.2 of this Agreement’. Therefore, contrary to the opponent’s opinion, taking into account that the agreement is dated 30/11/2012 and that earlier EUTMs No 14 893 176, No 14 897 789 and No 14 903 173 were filed only in 2015, it can be inferred that these EUTMs cannot be object of this licence agreement since they were neither registered nor applied at the time when the agreement was signed by the parties. Moreover, there is no evidence that such marks have been added to the trade marks covered by the licence agreement at a later date.

It is true that on 03/06/2020, after the time limit for the opponent to substantiate its earlier rights, as requested, the Office recorded a license between the EUTMs owner, SKY International AG, and its licensee (the opponent), Sky Limited. Although no licence agreement was actually attached to the request, this request included a list of EUTMs which were covered under this license, among which also the earlier EUTMs here at issue. However, regardless of the fact that this recordal was only requested after the time limit for the opponent to substantiate its earlier rights in the present opposition, such recordal of the licence would in any event still not be sufficient to prove the opponent’s authorisation to file the opposition. Indeed, as indicated above, while the recordal of a license is sufficient proof of the opponent’s status as the licensee, it is not sufficient per se to also prove the actual authorisation to file the opposition. As indicated above, in order to prove such authorisation, the opponent must also submit specific evidence in this regard or it can refer to documents previously submitted to the Office. It is up to the opponent to prove not only that it is a licensee but also that it is authorised by the trade mark owner to file an opposition. This authorisation cannot be presumed from the licensee status (16/05/2019, T-354/18, SKYFi /SKY et al., EU:T:2019:33, § 21-26).

In the present case, apart from the abovementioned licence agreement, dated 2012, which, as explained above, is not sufficient to prove the opponent’s authorisation to file the opposition, the opponent did not submit any further evidence in this regard.

In its observations of 12/03/2021, the opponent stated that it submitted ‘Licence extracts as well as extracts from the Deed of Amendment dated 24 March 2016’. However, it is not apparent from the documents on file that the opponent submitted any licence agreement or any other evidence dated 2016 to prove its authorisation to file the opposition. As already stated above, the only evidence on file is the above mentioned licence agreement dated 2012 which is insufficient for the reasons given above.

The opponent also claimed that the Opposition Division should take into account circumstantial factors which corroborate the opponent’s entitlement to oppose and, in particular, that

- the EUTM proprietor and the Opponent are members of the same group,

- both are represented by CMS LLP,

- the Opponent has been filing oppositions before the EUIPO on the basis of SKY and SKY-formative marks for well over a decade, formerly as owner of those rights,

- the licence of EUTMs by the EUTM proprietor/licensor to the Opponent was recorded at the EUIPO against SKY and SKY-formative marks then as licensee.

Regarding the last point, as explained above, the recordal by the Office of a license is not sufficient per se to prove the actual authorisation to file an opposition. Along the same lines of reasoning, regardless of the fact that both the opponent and the owner of the earlier EUTMs are represented by the same representative (CMS LLP) and that the opponent has been filing oppositions before the EUIPO on the basis of ‘SKY’ and ‘SKY’-formative marks for over a decade, it remains that in the present proceedings, there is no proof whatsoever on file of the opponent’s authorisation to file the present opposition.

Finally, contrary to the opponent’s view, the fact that the owner of the earlier trade marks and the licensee belong to the same group does not entail that there is an authorization, whether implicit or explicit, from the owner of the EUTMs to the licensee given that these companies are still legally autonomous entities in terms of organisation and capital asset.

The Opposition Division cannot resort to probabilities, speculations or presumptions to establish the entitlement of the opponent. Therefore, even if there are circumstances that suggest some kind of relationship between the opponent and the owner of the earlier EUTMs at issue, in absence of further evidence, it cannot be established that the opponent was authorised by Sky International AG (the owner) to file the present opposition on the basis of earlier EUTMs No 14893176, No 14 897 789 and No 14 903 173.

The opposition must therefore be rejected as unfounded.

 

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Opposition Division

 

 

Martina GALLE

Angela DI BLASIO

Chiara BORACE

 

 

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.