OPPOSITION No B 2 320 078

Sky plc, Grant Way Isleworth, Middlesex TW7 5QD United Kingdom (opponent), represented by Olswang LLP, 90 High Holborn, London WC1V 6XX United Kingdom (professional representative)

a g a i n s t

KID-Systeme GmbH, Lüneburger Schanze 30, D-21614 Buxtehude Germany (applicant), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).

On 16/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 320 078 is upheld for all the contested goods and services.

2. European Union trade mark application No 12 189 502 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 189 502. The opposition is based inter alia on European Union trade mark registration No 8 178 436. The opponent invoked Article 8(1)(b), 8(5) and 8(4) 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 8 178 436. 

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision) and teaching apparatus and instruments; apparatus for recording television programmes; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content; electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; televisions; LCD and plasma screens; home cinema systems; amplifiers; speakers; radios; wireless audio and/or audio visual devices; portable wireless audio and/or audio visual devices; remote controls; games controllers; wireless gaming controllers; wireless keypads; television receivers including a decoder; set-top boxes; digital set-top boxes; high definition set top boxes; personal video recorder; set-top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts; apparatus for decoding encoded signals including set top boxes for television reception; set top box apparatus including a decoder and an interactive viewing guide; set top box apparatus including a decoder and a recorder for recording television and audio programmes; set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings; satellite dishes; low noise blocks; satellite meters; computer software to enable searching of data; encoded programs for computers and for data processing and telecommunications; telephones; mobile telephones; PDAs; telephone and radio modems; television receivers including a decoder; set top boxes for use in decoding and reception of satellite, terrestrial cable and digital subscriber line (DSL), Internet or other electronic broadcasts; apparatus for decoding encoded signals; recorded television and radio programmes; recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs; video recordings; multimedia apparatus and instruments; portable or hand-held computers; DVD players; computers; computer hardware; computer hardware, apparatus and instruments all for transmitting, displaying, receiving, storing and searching electronic information; computer programs; electronic computer games; electronic interactive computer games; computer software; computer software and telecommunications apparatus to enable connection to databases and the Internet; computer software supplied from the Internet; network termination equipment; wired and/or wireless computer network routers, modems, firewalls and/or bridges; computer software and computer programs for distribution to, and for use by, viewers of a digital television channel for the viewing and purchase of goods and services; computer games software and computer quiz software; computer video games and/or quizzes adapted for use with television receivers and screens or with video monitors or with computer screens; computer programs for interactive television and for interactive games and/or quizzes; electronic apparatus adapted for use with television receivers in playing games; games consoles; interactive video game devices comprised of computer hardware and software and accessories, namely game consoles, game controllers and software for operating game controllers; portable and/or hand-held electronic devices for interactive computer and video games; portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code; electronic publications; computer games; computer video games; video screens; video projectors; tapes, discs and wires, all being magnetic; cassettes and cartridges, all adapted for use with the aforesaid tapes; blank and pre-recorded audio and video cassettes, tapes and cartridges; compact discs; DVD discs; phonographic records; laser readable discs for recording sound or video; Rom cartridges, CD Roms, cards and discs, integrated circuit cards, memory carriers, recording media, all pre-recorded with computer video games and/or quizzes; encoded cards; radio and television signal antennae; music, sounds, videos, images, text and information provided by a telecommunications network, by on-line delivery and by way of the Internet and/or the world-wide web or other communications network; interactive sound and/or audio recordings; music, video, sound and/or audio recordings (downloadable) provided from MP3 Internet websites; MP3 players, MP3 readers; audio and/or video file recorders and/or players; portable audio and/or video file recorders and/or players; telephone ring tones (downloadable); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus and instruments for the reception of radio and television broadcasts including the reception of cable, satellite and digital broadcasts; smart cards; credit cards; loyalty cards; acoustic apparatus or instruments; adaptors; aerials; antennae; amplifiers; amusement apparatus and instruments adapted for use with an external display screen or monitor; communication apparatus and instruments; encoded or magnetic banking or credit cards; cinematographic film; cinematographic instruments and apparatus; data carriers; data storage; 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; electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; film reproducing instruments and apparatus; hand held 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; hand held electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; interactive educational or entertainment games for use with television receivers and video apparatus; mobile telephones; motion pictures; telephone apparatus and equipment; parts and fittings for all the aforesaid goods; sunglasses, leather cases for holding mobile phones; e-sell through products, namely downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by Internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service; cases, containers, protective coverings and parts and fittings therefore, all for use with MP3 players, music storage devices, media storage devices and other consumer electronic devices; electrical, electronic and computer equipment for machinery for use in conservation, generation and efficient use of heat, light and water, including thermostatic controls, solar panels for electricity generation, photovoltaic devices, solar cells, turbines and motion detectors; electrical, electronic and computer equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; control and monitoring equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; electronic publications (downloadable), including electronic publications, magazines and newsletters regarding environmental protection, energy conservation and ecology, animal welfare and renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; apparatus and instruments for closed circuit television and surveillance systems; apparatus and instruments for personal security monitoring; apparatus and instruments for home security monitoring and control; home and personal security apparatus; home and personal security devices; home and personal security alarms; electronic protection equipment, including fire detecting and alarm equipment, intruder and burglar alarm equipment and motion detecting equipment; radio, telephonic, television and signalling apparatus and instruments, cameras, sound and video monitoring and recording and sound and video reproducing apparatus and instruments, all for control and telemetry purposes for the home and personal security; closed-circuit television systems (CCTV); monitors; cameras; optical lenses; camera casings; prepackaged cameras; infrared illuminators; videocassette recorders (VCRs); system controlling software; video monitoring apparatus; detectors; access control apparatus; readers; magnetic or encoded access control cards; monitoring apparatus; electronic panels for alarm management and monitoring; alarm panels; glass breakage detectors; smoke detectors; carbon monoxide detectors; digital audio recorders; digital video recorders; digital audio servers; digital video servers; electrical communication equipment; message programming equipment; radio paging equipment; electronic locking systems; life-saving apparatus and equipment; electric alarms; electronic devices for opening doors; electronic devices for protection; intruder alarms and anti-theft equipment; intruder detection apparatus; motion detecting equipment; electronic control apparatus; electronic apparatus for controlling operation of machines; remote apparatus for controlling operation of machines; computer apparatus for controlling operation of machines; electronic network equipment; electronic communication equipment; message programming devices; electronic locking apparatus; computer software, operating system software, devices, and hardware for transmitting, receiving, synchronizing, displaying, backing-up, monitoring, controlling, sharing, coding, decoding, encrypting, accessing, remotely accessing, creating, collecting, storing, securing, removing, transferring, disseminating, locating, organizing or otherwise utilizing data, voice, multimedia, audio, visual, music, photographs, drawings, images, audiovisual, video, text, graphics or other data, including over a global communications network; computer software, operating system software, devices, and hardware for synchronizing data, files, e-mails, contacts, calendars, task lists, text messages, photos, music, audio, visual, audio visual, video, text, graphics, programs and other information between computers and hand-held or other devices, and vice versa; communications platforms for enabling instantaneous, continuous, scheduled and perpetual synchronization of data between computers and hand-held or other devices, and vice versa; multimedia cards, memory cards, flash memory cards, memory chips, memory sticks, plugs, plug-in cards, magnetic cards, SIM cards, telephone calling cards, headphones, headsets, portable and/or hand held electronic devices for receiving, storing, playing and transmitting data, voice, multimedia, audio, visual, music, photographs, drawings, images, audiovisual, video, text, graphics or other data; online dictionaries, encyclopaedias, and reference texts (downloadable); online publications, including newspapers, magazines (periodicals), comics, journals (publications), books, user manuals, instructional and teaching materials (downloadable); online posters, photographs, pictures, articles, vouchers and tickets (downloadable), online electronic dictionaries, encyclopaedias and reference texts; computer software for processing electronic payments and transferring funds to and from others; online and downloadable authentication software; online conversion software and databases, including currency conversion and measurement conversion; computer software for the purpose of monitoring online communications and chat room conversations and alerting third parties to the contents; computer software for monitoring the use of computers and the Internet by children; computer software relating to online protection and online security; apparatus for controlling temperature; apparatus for controlling water supply; apparatus for controlling lighting; automated control apparatus for local management of lighting, heating and water supplies; parts and fittings for all the aforesaid goods.

Class 37: Maintenance services; repair services; installation services; maintenance, repair and installation services in relation to broadcast and/or telecommunications and/or communications reception apparatus and instruments and parts and fittings therefor including cable, satellite, terrestrial, analogue or digital reception equipment; maintenance, repair and installation of telecommunications and/or communications and/or broadcasting apparatus and equipment including broadband apparatus and equipment; maintenance, repair and installation of apparatus for recording television programmes; maintenance, repair and installation of apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content; maintenance, repair and installation of electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; maintenance and repair of televisions; maintenance and repair of LCD and plasma screens; maintenance, repair and installation of home cinema systems; maintenance, repair and installation of amplifiers; maintenance, repair and installation of speakers; maintenance, repair and installation of radios; maintenance, repair and installation of wireless audio and/or audio visual devices; maintenance, repair and installation of portable wireless audio and/or audio visual devices; maintenance and repair of remote controls; maintenance and repair of games controllers; maintenance and repair of wireless gaming controllers; maintenance and repair of wireless keypads; maintenance, repair and installation of television receivers including a decoder; maintenance, repair and installation of set-top boxes; maintenance, repair and installation of digital set-top boxes; maintenance, repair and installation of high definition set top boxes; maintenance, repair and installation of personal video recorders; maintenance, repair and installation of set-top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts; maintenance, repair and installation of apparatus for decoding encoded signals including set top boxes for television reception; maintenance, repair and installation of set top box apparatus including a decoder and an interactive viewing guide; maintenance, repair and installation of set top box apparatus including a decoder and a recorder for recording television and audio programmes; maintenance, repair and installation of set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings; maintenance, repair and installation of satellite dishes; maintenance, repair and installation of low noise blocks; maintenance, repair and installation of satellite meters; maintenance, repair and installation of telephones; maintenance and repair of PDAs; maintenance, repair and installation of telephone and radio modems; maintenance, repair and installation of set top boxes for use in decoding and reception of satellite, terrestrial cable and digital subscriber line (DSL), Internet or other electronic broadcasts; maintenance, repair and installation of apparatus for decoding encoded signals; maintenance and repair of recorded television and radio programmes; maintenance and repair of recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs; maintenance and repair of video recordings; maintenance, repair and installation of multimedia apparatus and instruments; maintenance and repair of portable or hand-held computers; maintenance, repair and installations of computers; maintenance, repair and installation of computer hardware; maintenance, repair and installation of computer hardware, apparatus and instruments all for transmitting, displaying, receiving, storing and searching electronic information; maintenance and repair of electronic computer games [hardware]; maintenance and repair of electronic interactive computer games [hardware]; maintenance, repair and installation of telecommunications apparatus to enable connection to databases and the Internet; maintenance, repair and installation of network termination equipment; maintenance, repair and installation of wired and/or wireless computer network routers, modems, firewalls and/or bridges; maintenance and repair of computer video games and/or quizzes adapted for use with television receivers and screens or with video monitors or with computer screens; maintenance, repair and installation of electronic apparatus adapted for use with television receivers in playing games; maintenance and repair of games consoles; maintenance and repair of interactive video game devices comprised of computer hardware and accessories, namely game consoles and game controllers; maintenance and repair of portable and/or hand-held electronic devices for interactive computer and video games; maintenance and repair of portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code; maintenance, repair and installation of amusement machines; maintenance and repair of video screens; maintenance, repair and installation of video projectors; maintenance and repair of radio and television signal antennae; maintenance and repair of MP3 players and MP3 readers; maintenance and repair of audio and/or video file recorders and/or players; maintenance and repair of portable audio and/or video file recorders and/or players; maintenance, repair and installation of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; maintenance, repair and installation of apparatus and instruments for the reception, of radio and television broadcasts including the reception of cable, satellite and digital broadcasts; installation, inspection, maintenance and emergency call services for home and personal monitoring and control and security management; installation, inspection, demonstration, repair and maintenance of apparatus for electronic home and personal security systems; installation, inspection, demonstration, maintenance and repair of apparatus and instruments for controlling and rescue, of automatic discharge systems for fire protection, of electronic protection equipment, of fire alarm and detection equipment, of alarm central stations, of monitoring central stations, equipment for monitoring anti-theft and break-in alarm equipment, motion sensing equipment, electronic network equipment, electronic communication equipment, message programming equipment, electronic locking systems; service call services for building management (upkeep and maintenance services); construction, installation, maintenance and repair of power plants, turbines, thermostatic controls, solar panels for electricity generation, photovoltaic devices, solar cells and motion detectors and other machinery for use in connection with generating and processing renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; maintenance, repair and installation of parts and fittings for all the aforesaid goods; information and advisory services relating to maintenance repair and installation, provided on-line from a computer database or the Internet; information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via a helpline or the Internet.

Class 28: Toys, games and playthings; electronic games; hand-held devices for playing electronic, computer or video games; video games apparatus; parts and fittings for all the aforesaid goods; playing cards; card games, sporting articles; games involving gambling; amusement machines; amusement apparatus and instruments; interactive educational or entertainment games, including educational or entertainment games played online.

The contested goods and services are the following:

Class 9 Scientific, photographic, cinematographic, optical, signalling and checking (supervision) apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; calculating machines, data processing equipment, computers; Computer software.

Class 37 Repair of vehicles and apparatus for locomotion by land, air or water, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital data carriers, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers and fire-extinguishing apparatus; Installation 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

The contested scientific, photographic, cinematographic, optical, signalling, checking (supervision) apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; compact discs, computer software are identically contained in both lists.

The contested DVDs are identical to the earlier DVD discs.

The contested magnetic data carriers, recording discs; digital recording media; are covered by the earlier broader term data carriers. These goods are therefore identical.

The contested computers are contained identically in the earlier goods.

The contested calculating machines; data processing equipment are included in the broad category of the computers. Therefore, they are considered identical.

The contested mechanisms for coin-operated apparatus are similar to a low degree to the opponent’s amusement apparatus and instruments since the contested goods are parts of the opponent’s goods and they could be produced and sold by the same undertaking. They also target the same public and they are complementary.

Contested services in class 37

The contested Installation services are contained identically in the earlier services.

The contested repair of vehicles and apparatus for locomotion by land, air or water, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital data carriers, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers and fire-extinguishing apparatus are included in the broad category of the opponent’s repair services. Therefore they are identical.

2. 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 professional knowledge or expertise. The relevant public’s level of attention will vary from average to high, depending on the price and frequency of purchase of these goods and services. Some of the goods at issue in Class 9 can be inexpensive goods purchased on a daily basis (for example cheap, simple data carriers). The habitual buying behaviour associated with those goods can result in a lower degree of attention. On the other hand, some of the goods and services at issue are specialised, purchased rarely and imply a high degree of sophistication on the part of consumers (for instance expensive science laboratory equipment, advanced information technology and telecommunication devices). To that extent, the degree of the public’s attention may be high for a part of the goods and services in question.

3. The signs

SKY	SKYFi
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

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).

In the present case, the earlier mark is a word mark formed by the sequence of letters SKY.

The contested word mark is formed by the sequence of letters SKYFi. The contested mark will be mentally dissected, and will be perceived as being formed by the elements SKY and Fi. This is because the relevant public will recognise the word SKY and ‘Fi’ as having concepts.

The word SKY (contained in both signs) means "the region of the atmosphere and outer space seen from the earth" and has a normal degree of distinctiveness.

The abbreviation ‘Fi’ contained in the contested sign will be associated with expressions such as ‘WiFi’ and ‘HiFi’ and will be perceived as standing for ‘fidelity’. Since the abbreviation has no concrete meaning in connection with the goods and services at issue, it is deemed to have a normal degree of distinctiveness.

The earlier mark consists of one word and has no element which could be deemed more distinctive or dominant.

The contested sign has no elements that could be considered clearly more distinctive or dominant than any other elements.

Visually, the word SKY, which constitutes the earlier sign, is present entirely in the contested sign. The signs differ only in the letters ‘Fi’ presented at the end of the contested sign. Therefore the beginning of the contested sign is entirely identical with the earlier mark.

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the word ‛SKY’, which constitutes the earlier sign and is present identically in the contested sign. The pronunciation differs in the sound of the letters ‛Fi’ of the contested mark, which has no counterpart in the earlier sign. Considering the coincidence in the independent and distinctive element ‘SKY’, the signs are aurally similar to an average degree.

Conceptually, the word SKY which exists in both signs means "the region of the atmosphere and outer space seen from the earth". The letters ‘Fi’ in the contested sign will be perceived as standing for ‘fidelity’, as described above. Therefore, the marks are conceptually similar to an average degree, as they share the concept of ‘sky’, which is inherently distinctive in relation to the goods and services at issue and plays an independent role in the contested sign.

The marks 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.

4. 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 in relation to any of the goods and services at hand from the perspective

of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark

must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

Account is taken of the fact that 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 contested goods and services are partly identical and partly similar to various degrees. The goods and services are directed at the public at large and specialised customers and the level of attention will vary from average to high. The signs are visually, phonetically and conceptually similar to the extent that they coincide in the word ‘SKY’ which constitutes the entirety of the earlier sign and the first part of the contested sign.

The earlier sign is fully reproduced in the first part of the contested sign. The fact that the similarity lies in the first element of the verbal elements of the contested sign is particularly relevant when assessing the likelihood of confusion between the marks since consumers generally tend to focus on the first element of the signs when being confronted with a trade mark. Furthermore, the public will immediately perceive the word ‘SKY’, which is distinctive to an average degree in relation to all the relevant goods and services, as an independent element in the contested sign. Therefore, the common element, ‘SKY’, will also establish a conceptual link between the signs, thus further contributing to the finding of similarity between the marks under comparison.

Considering all the above, the Opposition Division finds that the differences between

the signs are not capable of counteracting the similarity resulting from their coinciding

element, ‘SKY’, and that, for identical and similar goods and services, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

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 European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods and services.

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.

As the earlier European Union trade mark registration No 8 178 436 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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 8(5) EUTMR.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Richard THEWLIS

Liina PUU

Lucinda CARNEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.