OPPOSITION No B 2 605 783

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

Globalia Corporacion Empresarial, S.A., Ctra. El Arenal a Llucmajor, km. 21,5 - Pol. Son Noguera, 07620 Llucmajor (Baleares), Spain (applicant), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 605 783 is upheld for all the contested services.

2. European Union trade mark application No 14 434 104 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 434 104. During the proceedings, the specification of services of the EU trade mark application in question was limited by the applicant, on 15/06/2016. On 02/09/2016, the opponent confirmed that it maintains the opposition against the remaining services. The opposition is based on, inter alia, European Union trade mark registration No 13 124 052. In relation to this earlier right, the opponent invoked Article 8(1)(b) 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 European Union trade mark registration No 13 124 052.

1. The services

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

Class 41: Education; providing of training; entertainment; sporting and cultural activities; academies [education]; amusement parks; amusements; animal training; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of workshops [training]; arranging of beauty contests; boarding schools; booking of seats for shows; bookmobile services; calligraphy services; cinema presentations; circuses; club services [entertainment or education]; coaching [training]; conducting fitness classes; correspondence courses; disc jockey services; discotheque services; dubbing; education information; educational examination; electronic desktop publishing; entertainer services; entertainment information; film production, other than advertising films; gambling; game services provided on-line from a computer network; games equipment rental; gymnastic instruction; health club services [health and fitness training]; holiday camp services [entertainment]; language interpreter services; layout services, other than for advertising purposes; lending libraries; microfilming; modelling for artists; movie studios; music composition services; music-halls; news reporters services; night clubs; nursery schools; operating lotteries; orchestra services; organization of balls; organization of competitions [education or entertainment]; organization of exhibitions for cultural or educational purposes; organization of fashion shows for entertainment purposes; organization of shows [impresario services]; organization of sports competitions; party planning [entertainment]; personal trainer services [fitness training]; photographic reporting; photography; physical education; practical training [demonstration]; presentation of live performances; production of music; production of radio and television programmes; production of shows; providing amusement arcade services; providing casino facilities [gambling]; providing golf facilities; providing karaoke services; providing museum facilities [presentation, exhibitions]; providing on-line electronic publications, not downloadable; providing recreation facilities; providing sports facilities; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; radio entertainment; recording studio services; recreation information; religious education; rental of audio equipment; rental of camcorders; rental of cine-films; rental of lighting apparatus for theatrical sets or television studios; rental of movie projectors and accessories; rental of radio and television sets; rental of show scenery; rental of skin diving equipment; rental of sound recordings; rental of sports equipment, except vehicles; rental of sports grounds; rental of stadium facilities; rental of stage scenery; rental of tennis courts; rental of video cassette recorders; rental of videotapes; scriptwriting services; services of schools [education]; sign language interpretation; sport camp services; subtitling; television entertainment; theatre productions; ticket agency services [entertainment]; timing of sports events; toy rental; translation; tuition; videotape editing; videotape film production; videotaping; vocational guidance [education or training advice]; vocational retraining; writing of texts, other than publicity texts; zoological garden services; provision and production of audio visual content relating to entertainment, education, training, sport and culture; education and entertainment services by means of radio, television, telephony, the internet and on-line databases; hiring, rental and leasing of cine-films, videos, dvds, sound recordings, sound recording apparatus, sports apparatus, television sets and video recorders, dvd recorders and radio recorders; production of films for television and cinema; providing on-line electronic publications (not downloadable); publication of magazines, books, texts and printed matter; publication of electronic books or journals on-line; provision of electronic publications; provision of online dictionaries, encyclopaedias, and reference texts; provision of online publications, including newspapers, magazines (periodicals), comics, journals (publications), books, user manuals, instructional and teaching materials; provision of online posters, photographs, pictures, articles, tickets; provision of recording studio facilities; hire of recording studios; live show production services; organising of sporting activities and competitions; box office services; production and presentation of programmes transmitted by television, the internet or other telecommunication channels for the conduct of the interactive viewing, selection and purchase of goods; ticket reservation services relating to entertainment; production, presentation and distribution of radio and television programmes, interactive television, interactive games, interactive entertainment and interactive competitions; production, presentation and provision of competitions, contests, games, quizzes, studio entertainment and audience participation events; interactive television programme selection services for viewers; provision and production of interactive entertainment, news, cultural activities and sport for television viewers; interactive entertainment, educational, sporting and cultural services for television viewers; viewing guide services; viewing guide services facilitating the recordal and fixed term rental of programmes and movies; television programme recording services automatically initiated on the basis of customer viewing habits/preferences; video on demand and near video on demand entertainment, educational, sporting and cultural services; providing movies, videos and television programmes to viewers on demand and near video on demand; betting, gaming and gambling services; credit betting, gaming, gambling, lottery or bookmaking services; credit card betting, gaming, gambling, lottery or bookmaking services; organising and conducting lotteries; electronic betting, gaming, gambling, lottery or bookmaking services provided by means of the internet, or via a global computer network, or on-line from a computer network database, or via telephony including to mobile telephones, or via a television channel including a television channel distributed by satellite, terrestrial or cable television broadcast; arranging and conducting competitions for video game players and computer game players; pay to play games services; peer to peer interactive games and gaming services; interactive poker games and gaming including single and multi player gaming formats; presentation and production of poker competitions, tournaments, games and gaming; educational or entertainment games played online; electronic publishing services; video taping and filming services; provision of news, current affairs and sports information; news, current affairs and educational information services; information and advisory services relating to television and radio programmes, to education, recreation, entertainment, music and to sport; information and advisory services relating to television and radio programmes, to education, recreation, entertainment, music and to sport, provided on-line from a computer database or the internet or to mobile telephones; factual information services relating to television and radio programmes, news and sport; instruction services; training services; leisure services; advisory services relating to entertainment; arranging conferences, seminars, symposiums or workshops; arranging exhibitions or festivals; booking agency services; cinema services; cinema studio services; distribution of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, dvds or pre-recorded video discs; production of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, dvds or pre-recorded video discs; editing of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, dvds or pre-recorded video discs; hire, leasing or rental of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, dvds or pre-recorded video discs; exhibition of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, dvds or pre-recorded video discs for entertainment, educational, sporting or cultural purposes; amusement park services with a theme of films, radio or television productions; organisation and management of amusement parks and theme parks; organisation of entertainment; preparation and production of radio programmes, television programmes, films, pre-recorded video tapes, dvds, audio and/or visual material, pre-recorded video cassettes, pre-recorded video discs or motion pictures for distribution for transmission or broadcast by any means; provision of radio programmes, television programmes, films, audio and/or visual material or motion pictures online (not downloadable); publication of printed media and recordings; digital imaging services; dubbing; video tape editing; film production; rental of motion pictures; movie studios; providing movie theatres facilities; production of shows; video film tape production; rental of audio equipment; rental of lighting apparatus for theatrical sets or television studios; rental of movie projectors and accessories; rental of radio equipment; rental of televisions and television equipment; rental of sports equipment; rental of video cameras; rental of video tapes; rental of video recorders; theatre productions; movie studio services; organising or hosting awards ceremonies; presentation of films; production of special effects for films; reservation services (included in this class) for sporting, scientific, political and cultural events; production of artwork for animated films; recording studio services; provision of video and audio content by sale and rental, whereby the consumer is entitled to single or multiple viewings of the media content via any form of playback device, all relating to entertainment, education, sports and culture; education and providing of training in connection with environmental protection, energy conservation and ecology and animal welfare; education and providing of training in connection with alternative energy sources, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; publication of instructional material relating to environmental protection, energy conservation and ecology and animal welfare; arranging and conducting of seminars and workshops (training); establishing training programmes and training manuals; organising and conducting safety courses and educational courses; online news reporting services; online provision of information and general encyclopaedic knowledge relating to entertainment, education, training, sports, culture, news, current affairs, satellite, television and radio programmes, music, films, books and other printed matter, video games, computer games, amusement machines, amusement centres or amusement parks; online translation services; online library services including the lending and exchanging of books and other publications and photographs; provision of online classes, seminars, workshops, exhibitions and displays; leasing, booking and providing of diving equipment; online card games; organization of sports and holiday camps; provision of telephone ring tones; cycling as a sport; provision of professional cycling services; organisation of cycling events;  high-definition studios, edit suites, voice-over studios and audio suites;  provision of online fitness tracking; consultancy services relating to social planning in respect of entertainment, sporting and cultural events; consultancy, information and advisory services relating to all the aforesaid services; professional consultancy, information and advisory services relating to all the aforesaid services; consultancy, information and advisory services relating to all the aforesaid services provided on-line from a computer database or via a helpline or the Internet.

The contested services are the following:

Class 41: Recreational, amusement and entertainment services provided in an airplane, namely providing in-flight movies, TV series, documentaries, music, temporary use of non-downloadable electronic games, non-downloadable electronic publications in the nature of magazines and newspapers.

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

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples.

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

The contested recreational, amusement and entertainment services provided in an airplane, namely providing in-flight movies, TV series, documentaries, music, temporary use of non-downloadable electronic games, non-downloadable electronic publications in the nature of magazines and newspapers are all entertainment services provided in airplanes. Therefore, they are included in the broad categories of, or overlap to a considerable extent with, the opponent’s entertainment services; provision of audio visual content relating to entertainment and providing on-line electronic publications (not downloadable) in Class 41, which may also be provided in the context of the air transportation business sector. Therefore, these services 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 services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g., in the air transport field). 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 EUROPE	AIR EUROPA SKY
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 verbal elements of the signs are understood in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the relevant territory.

Both signs are word marks. The earlier sign consists of the words ‘SKY EUROPE’ and the contested sign of the words ‘AIR EUROPA 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 the signs are presented in upper or lower case characters.

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 services, because it does not describe or even allude to any of their essential characteristics.

The word ‘EUROPE’ of the earlier mark will be understood as the name of the ‘continent of Europe except for the British Isles’ (Collins English Dictionary online, at http://www.collinsdictionary.com/). The word ‘EUROPA’ of the contested sign will be associated with the same concept (‘Europe’), because of its evident proximity to this English word; in addition, part of the relevant consumers may also be aware that this is the name of a Phoenician princess form the Greek mythology, who had three children by Zeus in Crete (Collins English Dictionary online, at http://www.collinsdictionary.com/), from whom the name of the continent Europe is originally taken. These elements (‘EUROPE’ and ‘EUROPA’) are weak for the relevant services, as they may have several informative connotations; for instance, they suggest that the services at issue are provided by a European company, to European consumers, within the territory of Europe, within a European context in general, etc.

Finally, in the context of the relevant services, the word ‘AIR’ of the contested sign is ‘used to refer to travel in aircraft’, such as in ‘air travel will continue to grow at about 6% per year’ (Collins English Dictionary online, at http://www.collinsdictionary.com/). Therefore, this word is non-distinctive in relation to the relevant entertainment services, as it merely indicates that they are provided in aircrafts and/or by an airline company.

Therefore, the word ‘SKY’ is the more distinctive element of the signs under comparison.

The marks under comparison, being word marks, have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

Visually and aurally, the word ‘SKY’, which constitutes the initial element of the earlier mark, is reproduced and plays an independent and distinctive role in the contested sign. The elements ‘EUROPE’ and ‘EUROPA’ (of the earlier and of the contested sign, respectively), also bear a strong resemblance, as they only differ in their final letter/sound. The difference established by the initial word ‘AIR’ of the contested sign has a reduced impact, as this element is non-distinctive for the relevant services.

In contrast, as mentioned above, the coinciding word ‘SKY’ is normally distinctive in relation to all the relevant services and is the most distinctive element in the signs.

Therefore, even bearing in mind the different order in which the elements appear in the signs, considering the coincidences described above, the marks are visually and aurally similar to an average degree.

Conceptually, the English-speaking public in the relevant territory will perceive the words contained in both signs in accordance with the meanings referred to above. As a whole, none of the marks has a clear univocal meaning that would substantially differ from the mere sum of the concepts of which it is composed. The only different concept in the contested sign, ‘AIR’, is non-distinctive for the relevant services. Therefore, considering that both marks will be associated to the concepts of ‘sky’ and ‘Europe’, they are conceptually similar to a high 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 clear meaning for any of the services in question from the perspective of the English-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as explained above in section c).

5. Global assessment, other arguments and conclusion

The contested services are identical to the services covered by earlier European Union trade mark registration No 13 124 052. The earlier mark enjoys a normal degree of distinctiveness.

The signs under comparison are visually and aurally similar to an average degree and conceptually highly similar, on account of the common element ‘SKY’, which is the most distinctive component in both marks, where it plays an independent role. In addition, owing to their high similarity, the elements ‘EUROPE’ of the earlier mark and ‘EUROPA’ of the contested sign, despite being inherently weak, also contribute towards the finding of similarity between the marks.

The signs differ essentially in the additional word, ‘AIR’, of the contested mark. The non-distinctive character of this word in relation to the relevant services determines that the difference established by this element will have a rather reduced impact for the public, even bearing in mind that this is the initial word of the contested sign.

Therefore, despite the inversion of the order of these concepts, given the reproduction of the distinctive element ‘SKY’ in the contested sign and the presence of the elements ‘EUROPE’/’EUROPA’ in the signs, it is likely that the relevant public will, at least, associate the contested sign with the earlier mark, in particular, due to the high conceptual similarity between them.

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, consumers may legitimately believe that the contested sign is a new brand line of services, originating from the same undertaking as the opponent’s ‘SKY EUROPE’ mark, such as a line of services which specifically targets the airlines commercial segment. In other words, consumers may confuse the origins of the services at issue by assuming that they come from the same undertaking or from economically‑linked undertakings.

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 services are identical to the services covered by the earlier mark.

The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim. In particular, it claims that it is one of the leading airline companies in Spain and that, consequently, its denomination ‘AIR EUROPA’ has a highly distinctive character on the relevant market.

Firstly, it must be pointed out that it is settled case law that only the reputation or high distinctiveness of the earlier mark will be taken into account in the assessment of the likelihood of confusion, but the applicant cannot rely on the reputation of its younger mark (inter alia, 19/04/2013, T 537/11, Snickers, EU:T:2013:207, § 55).

Furthermore, the right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

In addition, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, because in those decisions the marks under comparison had significant dissimilarities, whereas in the present case the marks have been found to be visually and aurally similar to an average degree and conceptually similar to a high degree, because they coincide in their most distinctive component, whereas their differences reside mainly in a non-distinctive element.

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 No 13 124 052. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 13 124 052 leads to the success of the opposition and to the rejection of the contested trade mark for all the 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

Liliya YORDANOVA	Gueorgui IVANOV	Monika CISZEWSKA

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.