OPPOSITION Nо B 3 105 309

 

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

 

Shenzhen Xianghaikui Technology Co., Ltd., Room 603, No.5, Lane 8, Yongxiang Rd., Wuhe Community, Bantian St., Longgang Dist., Shenzhen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 Rue Ramey, 75018 Paris, France (professional representative).

 

On 10/06/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 105 309 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 109 721 is rejected in its entirety.

 

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

 

REASONS

 

On 06/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 109 721 (figurative mark). The opposition is based on, inter alia, EUTM registration No 14 897 789, . The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR for this earlier trade mark. 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 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 EUTM registration No 14 897 789.

 

a) The goods

 

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

 

Class 9: Computers; batteries, electric; cabinets for loudspeakers; capacitors; cell phone straps; computer peripheral devices; data processing apparatus; Global Positioning System [GPS] apparatus; mouse [data processing equipment]; notebook computers; mobile telephones; computers; computer hardware; 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; leather cases for holding mobile phones; earphones; holders adapted for mobile phones

Class 25: Boots for sports; sleep masks; sports shoes; footwear.

Following a partial rejection of the contested application in opposition No B 3 105 708 dated 28/10/2020 (which was not appealed and thus has become final), the contested goods are the following:

 

Class 9: Computers; data processing apparatus; computer peripheral devices; computer hardware; condensers [capacitors]; global positioning system [GPS] apparatus; cell phone straps; cellular phones; wearable activity trackers; covers for smartphones; cases for smartphones; protective films adapted for smartphones; telecommunication apparatus in the form of jewellery; selfie sticks [hand-held monopods]; cabinets for loudspeakers; computer mouse; rechargeable batteries; notebook computers; tablet computers; earphones.

Class 25: Footwear; sports shoes; boots for sports; sleep masks.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

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

Computers; cabinets for loudspeakers; cell phone straps; computer peripheral devices; data processing apparatus; Global Positioning System [GPS] apparatus; notebook computers; computer hardware; earphones are identically contained in both lists of goods (including synonyms).

The contested rechargeable batteries overlap with the opponent's batteries, electric. Therefore, they are identical.

The contested computer mouse is included in the opponent's broad category of mouse [data processing equipment]. Therefore, they are identical.

The contested cellular phones are included in the opponent's broad category of mobile telephones. Therefore, they are identical.

The contested tablet computers are included in the opponent's broad category of computers. Therefore, they are identical.

The contested condensers [capacitors] are included in the opponent's broad category of capacitors. Therefore, they are identical.

The contested telecommunication apparatus in the form of jewellery overlap with the opponent's 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. Therefore, they are identical.

The contested wearable activity trackers are similar to a high degree with the opponent's computers. They usually coincide in producer, relevant public, distribution channels and method of use.

The contested covers for smartphones; cases for smartphones; protective films adapted for smartphones; selfie sticks [hand-held monopods] are (at least) similar to the opponent's leather cases for holding mobile phones and holders adapted for mobile phones because, as being accessories for smart phones, they coincide in distribution channels, producer and end user.

Contested goods in Class 25

Sleep masks; footwear; sports shoes; boots for sports are identically contained in both lists of goods (including synonyms).

 

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 (at least) similar are directed at the public at large and at business customers with specific professional knowledge or expertise as it could be the case of condensers [capacitors] which are only directed at the professional public.

 

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

 

c) The signs

 

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

The marks under comparison are composed of English words which are meaningful for the English-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking consumers as this may have an impact on the level of conceptual similarity between the signs.

The contested figurative sign contains the verbal element ‘Skyeagle’ depicted in slightly stylised black italic letters below a curved line and a figure of a landing eagle. Although the sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the contested sign will be broken down into ‘SKY’ and ‘EAGLE’. The figurative element reinforces the meaning of the element ‘EAGLE’.

The coinciding 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 online at https://www.collinsdictionary.com/dictionary/english/sky on 10/06/2021). This word has no connection to any of the goods at issue and is of normal distinctiveness, since it is neither descriptive nor allusive for the relevant goods. 

 

The verbal element ‘EAGLE’ of the contested sign will be perceived as ‘any of various birds of prey of the genera Aquila, Harpia, etc, having large broad wings and strong soaring flight: family Accipitridae (hawks, etc)’ (information extracted from Collins Dictionary on 10/06/2021 at https://www.collinsdictionary.com/dictionary/english/eagle). The figurative element of the contested sign will be perceived as a landing eagle. The verbal element ‘EAGLE’ and the figurative element of the contested sign are of normal distinctiveness, since they are neither descriptive nor allusive for the relevant goods. 

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The stylisation of the verbal elements in both signs will merely be perceived as a graphical means of bringing the verbal elements to the attention of the public. Therefore, their impact on the comparison of the signs will be limited.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

 

Visually, the signs coincide in the verbal element ‘SKY’, the sole verbal element of the earlier mark and the first element 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. However, they differ in the additional element ‘EAGLE’ and the figurative element of the contested sign as well as in their stylisations and the colours of the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SKY’, present identically in both signs. The pronunciation differs in the sound of the letters ‛EAGLE’ of the contested mark, which have no counterparts in the earlier sign.

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 to the relevant public under analysis. The verbal elements will be associated with a similar meaning due to the common element ‘SKY’. 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

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical and (at least) similar and target the general public and the specialised public, who will display a degree of attention that may vary from average to high. 

The distinctiveness of the earlier mark must be seen as normal.

The signs are visually, aurally and conceptually similar to an average degree due to the coinciding element ‘SKY’, being the sole verbal element in the earlier mark which is reproduced at the beginning of the contested sign, where the consumer tends to pay more attention.

They differ in the additional element ‘EAGLE’ and the figurative element of the contested sign and their stylisations and the colours of the earlier mark. However, these elements have less impact on consumers than the verbal element itself and cannot outweigh the similarities between the signs.

Therefore, given the reproduction of the distinctive and initial element ‘SKY’ in the contested sign, it is likely that, even if the relevant public displays a higher level of attention in relation to some of the goods, it will at least associate the contested sign with the earlier mark.

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.

It is common today for companies to make small variations of their brands, for example, by altering their font or color, or by adding terms or elements, to name new product lines or create a modernized version of the brand. Indeed, in the present case it is very likely that consumers perceive the contested sign as a new version of the previous brand, denoting special line of goods, given the fact that both signs contain the distinctive element 'SKY'. (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 14 897 789. 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 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 earlier EUTM registration No 14 897 789 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, namely Article 8(4) and (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

 

 

Rosario GURRIERI

Francesca DRAGOSTIN

Cynthia DEN DEKKER

 

 

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.