OPPOSITION No B 2 590 381

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

Türk Hava Yollari Teknik Anonim Sirketi, Atatürk Havalimani B Kapisi, Yesilköy - Bakirköy – Istanbul, Turkey (applicant), represented by Silex IP, Calle Velázquez, 109, 2º D, 28006 Madrid, Spain (professional representative).

On 15/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 590 381 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 001 218 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 14 001 218. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604. In relation to this earlier right, the opponent invoked Article 8(1)(b) and 8(5) EUTMR. In addition, in relation to other earlier rights, the opponent invoked Article 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 2 500 604.

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, transmission, reproduction or reception of sound, images or audio visual content; apparatus for recording television programmes; multimedia apparatus and instruments; 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; apparatus for 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; monitoring apparatus; electronic control apparatus; electronic 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; parts and fittings for all the aforesaid goods.

Class 12: Vehicles; apparatus for locomotion by land, air or water; vehicles adapted for use with renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; parts and fittings for all the aforesaid goods.

Class 37: Maintenance services; repair services.

Class 38: Telecommunications services; advisory, information and consultancy services relating to all the aforementioned; hire, leasing or rental of apparatus, instruments, installations or components for use in the provision of the aforementioned services.

The contested goods and services are the following:

Class 9: Multi-media entertainment systems for use in airplanes, comprising multiple-display display screens, wired and wireless remote controls, user touch screens, fiber-optic and electric cables and connectors, media converters, data switches, electronic and video game controllers, and central processing units; electronic equipment in the field of aviation including aircraft cabin service systems, namely, video modulators, video tape recorders, media file servers, ethernet hubs, passenger entertainment system controllers; seat display units, video distribution controllers; communications systems namely, receivers, audio distribution units, uhf, vhf and hf transceivers, jammers, power amplifiers, antenna couplers, radio/telephone interface units, satellite communication units; heads up displays; magnetic compass systems, namely, gyroscopes, magnetic flux detectors, remote compensators and controllers; integrated systems-namely, engine indication and crew alerting devices; radio altimeters, distance measuring equipment, global position sensors, navigation receivers, multi mode receivers.

Class 12: Air vehicles and parts, namely, airplanes, helicopters.

Class 37: Aircraft repair and maintenance; maintenance of multi-media entertainment systems used in airplanes.

Class 38: Radio and television broadcasting services, arrangement of the broadcasting flow of radio, television and other communication devices; communication services; communication services by cellular telephones, communication via satellite, communication services, namely, electronic transmission of data and documents among users of computers, communication via telegraph, communication via telephone, transmission of images and messages via computer, e-mail services, fax-sending services, telegraph services, telephone services, telex services; consultancy services related to communication, providing access for users to global computer network (Internet) services; rental of communication instruments and devices; services for broadband connectivity aboard commercial aircraft, namely, providing electronic telecommunication connections; leasing of wireless broadcast and communications towers and sites.

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

The term ‘including’, used in the applicant’s and in the opponent’s list of goods and services, indicates that the specific goods and 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

Contested goods in Class 9

The contested multi-media entertainment systems for use in airplanes, comprising multiple-display display screens, wired and wireless remote controls, user touch screens, fiber-optic and electric cables and connectors, media converters, data switches, electronic and video game controllers, and central processing units are included in the broad category of the opponent’s multimedia apparatus and instruments. Therefore, they are identical.

The contested electronic equipment in the field of aviation including aircraft cabin service systems, namely, video modulators, video tape recorders, media file servers, ethernet hubs, passenger entertainment system controllers are included in the broad category of the opponent’s 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. Therefore, they are identical.

The contested video distribution controllers cannot be clearly separated from the opponent’s electronic apparatus for controlling operation of machines; computer apparatus for controlling operation of machines. These sets of controllers overlap and are, therefore, considered identical.

The contested communications systems namely, receivers, audio distribution units, uhf, vhf and hf transceivers, jammers, power amplifiers, antenna couplers, radio/telephone interface units, satellite communication units are included in the broad categories of the opponent’s telecommunications, radio, television, sound recording and sound reproducing apparatus and instruments; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content. Therefore, they are identical.

The contested seat display units; heads up displays; integrated systems-namely, engine indication and crew alerting devices are included in the broad category of the opponent’s apparatus for transmission, reproduction or reception of sound, images or audio visual content. Therefore, they are identical.

The contested magnetic compass systems, namely, gyroscopes, magnetic flux detectors, remote compensators and controllers; global position sensors, navigation receivers, multi mode receivers cannot be clearly separated from the broad categories of the opponent’s nautical, surveying, measuring and signalling apparatus and instruments; monitoring apparatus. Indeed, these contested goods are either included, or overlap to a considerable extent, with the aforementioned broad categories of goods covered by the earlier mark. Therefore, they are considered identical.

The contested radio altimeters; distance measuring equipment are included in the broad category of the opponent’s radio and measuring apparatus and instruments. Therefore, they are identical.

Contested goods in Class 12

The contested air vehicles and parts, namely, airplanes, helicopters are included in the broad category of the opponent’s vehicles; parts and fittings for all the aforesaid goods. Therefore, they are identical.

Contested services in Class 37

The contested aircraft repair and maintenance; maintenance of multi-media entertainment systems used in airplanes are included in the broad category of the opponent’s maintenance services; repair services. Therefore, they are identical.

Contested services in Class 38

The contested radio and television broadcasting services, arrangement of the broadcasting flow of radio, television and other communication devices; communication services; communication services by cellular telephones, communication via satellite, communication services, namely, electronic transmission of data and documents among users of computers, communication via telegraph, communication via telephone, transmission of images and messages via computer, e-mail services, fax-sending services, telegraph services, telephone services, telex services; providing access for users to global computer network (Internet) services; services for broadband connectivity aboard commercial aircraft, namely, providing electronic telecommunication connections are included in the broad category of the opponent’s telecommunications services. Therefore, they are identical.

The contested consultancy services related to communication are included in the broad category of the opponent’s telecommunications services; consultancy services relating to all the aforementioned. Therefore, they are identical.

The contested rental of communication instruments and devices; leasing of wireless broadcast and communications towers and sites are included in the broad category of the opponent’s hire, leasing or rental of apparatus, instruments, installations or components for use in the provision of the aforementioned services (telecommunications 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 in Classes 9, 12 and 37 are directed essentially at business customers with specific professional knowledge or expertise. The relevant public’s level of attention in relation to these goods and services will tend to be higher than average, or even high, due to their specialised technological nature and, usually, high price.

The services found to be identical in Class 38 are directed both 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 services.

3. The signs

SKY
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 sign is a word mark, consisting of the verbal element ‘SKY’. In the case of word marks it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters.

The contested sign is a figurative mark which contains the verbal elements ‘SKY’ and ‘Flight Entertainment’. The word ‘SKY’ is written in large and standard blue upper case letters; above it, the expression ‘Flight Entertainment’ is depicted in standard, but considerably smaller, grey title case letters. To the right of these two elements appears a blue horizontal line followed by a drawing of an airplane. The line is depicted across two large red upper case letters, obscuring them partially. Nonetheless, due to the expression ‘Flight Entertainment’, portrayed in title case (i.e., with capital ‘F’ and ‘E’ letters), it is highly likely that the public will recognize the two red letters at issue as ‘FE’ and perceive them as the abbreviation corresponding to the above-mentioned expression.

The word ‘SKY’, contained in both signs, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (Collins English Dictionary online, at http://www.collinsdictionary.com/). This word is neither descriptive nor lacking distinctiveness for any of the relevant goods and services in Classes 9, 12, 37 and 38. It does not describe or even allude to any of their essential characteristics.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

As for the contested sign, the expression ‘Flight Entertainment’ will be understood by the English-speaking public at issue as ‘entertainment provided on board of an aircraft’. The remaining elements of the sign will be associated, in essence, with the same concept, due to the drawing of an airplane and the fact that the public will perceive the red letters ‘FE’ as the abbreviation for ‘Flight Entertainment’. It follows that all these elements of the contested sign have a weaker than average distinctive character in relation to the relevant goods and services in Classes 9, 12, 37 and 38, as they will be perceived as an informative and suggestive indication as regards their ultimate purpose (i.e., multi-media systems and electronic equipment related to the provision of on-board entertainment, air vehicles adapted or suitable for the provision of such entertainment, as well as maintenance, repair and telecommunication services rendered in relation to entertainment facilities in aircrafts). Therefore, the word ‘SKY’ is the more distinctive element of the contested mark, because its distinctiveness is normal is relation to all the goods and services at issue.

The earlier mark has no elements which could be considered more dominant (visually eye‑catching) than other elements.

The expression ‘Flight Entertainment’ in the contested sign is, owing to its small size, visually overshadowed by the remaining elements of the mark and, therefore, is less eye-catching than those elements.

Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced and plays an independent and distinctive role in the contested sign. The signs differ in the figurative component, colours and overall stylisation of the contested sign, and in the additional words ‘Flight Entertainment’ and the abbreviation ‘FE’ present therein.

It must be noted that 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Consequently, the public will pay less attention to the stylisation, colours and the figurative element of the contested sign and will focus more on the verbal elements of the sign, as it will instantly perceive them as the badge of origin of the respective goods and services. Furthermore, the expression ‘Flight Entertainment’, the abbreviation ‘FE’, which will be perceived in combination with it, and the aircraft device are inherently weaker than average in relation to the relevant goods and services, as already explained.

Therefore, considering all the above and the coincidence in the normally distinctive and independent element ‘SKY’, the marks are visually similar to an average degree.

Aurally, the first word of the contested sign, ‘SKY’, is aurally identical to the earlier sign as a whole. The signs differ in the sound of the letters ‘FE’ of the contested sign, which the public will perceive and pronounce as an abbreviation (corresponding to the expression ‘Flight Entertainment’). As regards the expression ‘Flight Entertainment’, due to its size and positioning in the sign, it is not likely to be pronounced; nonetheless, in the event that it is, it will establish an additional aural difference between the marks.

Overall, considering the above-mentioned principles, the average distinctiveness of the word ‘SKY’ and the importance of the impact of the initial element of a mark, as well as the allusive and informational content conveyed by the remaining elements of the contested sign in relation to the goods and services at issue, it is concluded that there is a medium degree of aural similarity between the marks.

Conceptually, the public in the relevant territory will perceive the word ‘SKY’ contained in both signs, and the expression ‘Flight Entertainment’ of the contested sign, in accordance with the meanings referred to above. The letters ‘FE’ in the contested sign will be instantly associated with an abbreviation for the expression ‘Flight Entertainment’. The figurative element of the contested sign will be perceived as a slightly stylised depiction of an airplane.

As explained above, the airplane figure and the abbreviation ‘FE’ of the contested sign will be perceived in combination with the expression ‘Flight Entertainment’, as all these elements refer to the idea of entertainment provided on board of an aircraft. This semantic content is suggestive of relevant characteristics of the contested goods and services and, as a consequence, the public will attribute more trade mark significance to the element ‘SKY’ than to the aforementioned additional elements of the contested sign.

Therefore, the marks are conceptually similar to an average degree, as they share the concept of ‘sky’, which is inherently distinctive in relation to all the goods and services at issue and plays an independent role in both signs.

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 in question 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

The contested goods and services are identical to the goods and services covered by earlier United Kingdom trade mark No 2 500 604.

The signs under comparison are visually, aurally and conceptually similar to an average degree on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included and clearly perceptible in the contested sign. The signs differ in the additional expression ‘Flight Entertainment’, in the abbreviation ‘FE’ and in the colours, stylisation and figurative element of the contested sign.

As mentioned above in section c), where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. This is justified by the fact that consumers will more easily retain in their memory and refer to the sign in question by its name, rather than by describing the figurative elements of the trade mark in question.

Therefore, the overall arrangement of the contested sign, its colours and its figurative element will be perceived as graphic means which perform an essentially ornamental function vis-à-vis the verbal elements of the 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, whereas the expression ‘Flight Entertainment’ and the abbreviation ‘FE’ which refers to it are weaker than average, because they allude to the ultimate purpose of these goods and services. 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.

The applicant claims that the word ‘SKY’ is lowly distinctive in relation to the relevant goods and services. It alleges, inter alia, that the relevant consumers will establish a link between the semantic content of the word ‘SKY’ and ‘radio waves broadcasting’ and/or ‘signal transmission in the atmosphere’ in general. The Opposition Division considers that these findings are immaterial; it is noted that, although the word ‘SKY’ is a relatively basic English word, it has no informative or even suggestive meaning in relation to the nature, purpose, quality or any other essential characteristic of the relevant goods and services. Therefore, it has a normal inherent distinctive capacity to distinguish the goods and services of one trader/establishment from those of another, in relation to the relevant goods and services in Classes 9, 12, 37 and 38.

Consequently, consumers will pay more attention to the element ‘SKY’ of the contested sign, as they will attach more trade mark significance to it.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Indeed, in the present case, considering all the above-mentioned principles, the overall impression conveyed by the contested sign is such that even the highly attentive consumers at issue may legitimately believe that the contested sign is a new version or a new stylised brand line of goods and services, originating from the same undertaking as the opponent’s ‘SKY’ mark, such as ‘SKY’ goods and services related to the provision of entertainment in the airlines market sector.

Account must also be taken of the principle that a likelihood of confusion implies some interdependence among the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, it must be noted that the contested goods and services are all identical to the goods and services covered by the earlier mark.

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 goods and services, 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. 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 United Kingdom trade mark registration No 2 500 604 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

Gueorgui Ivanov IVANOV	Gueorgui IVANOV	Vita VORONECKAITE

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.