OPPOSITION No B 2 668 294

Sky plc, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent), represented by CMS Cameron Mckenna Nabarro Olswang, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Arserras 2008 S.L., Calle Ricardo Zamora, 6, 45510 Fuensalida (Toledo), Spain (applicant), represented by Marks & Us Marcas Y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 668 294 is upheld for all the contested goods.

2. European Union trade mark application No 14 860 423 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 of European Union trade mark application No 14 860 423. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604 and the opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to this earlier right. The opponent invoked also Article 8(1)(b), 8(4) and 8(5) EUTMR in relation to other earlier rights.

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 18: Animal skins.

Class 25: Footwear.

The contested goods are the following:

Class 18: Animal skins.

Class 25: Footwear.

Animal skins in Class 18 and footwear in Class 25 are identically contained in both lists of goods.

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 found to be identical are directed at the public at large.

The degree of attention is considered to be average.

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 word ‘SKY’ will be understood in the relevant territory as meaning the apparently dome-shaped expanse extending upwards from the horizon, outer space, as seen from the earth or the source of divine power; heaven. This word is not descriptive, allusive or otherwise weak for any of the relevant goods. The earlier mark has no elements that could be considered more distinctive or dominant.

The contested sign is a figurative mark which contains the stylised word element ‘Little Sky’ written in blue and the shape resembling a cloud around the word ‘Sky’. The word ‘Sky’ will be understood by the relevant public as explained above, and the word ‘Little’ will be understood as meaning small, young, a very small amount of something. As such it is less distinctive for the goods at hand because it alludes to the size/amount of the goods or to the fact that the goods are directed at children. As regards the figurative element, its shape is likely to remind the public of a cloud, all the more so as such concept is close to that of a sky conveyed by the verbal element of the sign. Although the concept of a cloud as such is distinctive in relation to the goods at issue, the figurative element is rather used in the present context as a decorative background for the verbal element. The specific depiction of the words is also, clearly, a decorative feature of the sign. Consequently, the public will pay less attention to the stylisation, colours and the figurative element of the contested sign. Therefore, the word ‘Sky’ is the most distinctive element of the contested sign. The sign has no elements that could be considered dominant.

Visually and aurally, the signs coincide in ‘SKY’ which is the only element of the earlier sign. The signs differ in ‘Little’ of the contested sign which is however considered less distinctive for the goods at hand and has a limited effect on the comparison of the signs. The signs differ also visually in the stylisation and the figurative element of the contested sign. However, 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).

Moreover, while it is true that the beginning of the marks is the part that first catches the consumer’s attention, it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks. Indeed, the aforementioned general rule is not applicable in all cases and depends on the specific characteristics of the signs. In the present case, although the signs have different beginnings, they coincide in the only element of the earlier sign and the most distinctive element of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with a similar meaning due to the presence of the word ‘SKY’ (which is the only element of the earlier sign and the most distinctive element of the contested sign), the signs are conceptually highly similar.

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 for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, it has been established that the contested goods are identical to the opponent’s goods. The signs are visually and aurally similar to an average degree and conceptually highly similar, to the extent that they coincide in the word element ‘SKY’ which is fully distinctive for the goods in question.

The earlier mark is fully reproduced in the contested sign. The differences lie in the additional word ‘Little’ which is considered less distinctive for the goods at hand, and in the colours, stylisation and figurative element of the contested sign.

Consequently, while it is true that the trade marks have certain differences between them, they are confined to weak or secondary elements and aspects. Such differences do not allow the public to safely distinguish between the marks based on the presence in each of them of the distinctive term ‘SKY’. The presence of this element in both marks (as a single element of the earlier mark), will make it likely for the relevant public to believe erroneously that the goods which each of the trade marks cover have the same commercial origin or that there is a commercial or industrial link between the two signs.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 500 604. It follows that the contested trade mark application must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its acquired 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 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

Alexandra APOSTOLAKIS

Anna BAKALARZ

Catherine MEDINA

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.