OPPOSITION No B 2 793 266

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

a g a i n s t

Cheetah Mobile Inc., PO Box 309, Ugland House, Grand Cayman 1 1104, Cayman Islands (applicant), represented by Greenberg Traurig, LLP, Leidseplein 29, 1017 PS Amsterdam, Netherlands (professional representative).

On 03/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 793 266 is upheld for all the contested goods and services.

2. European Union trade mark application No 15 633 324 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 633 324 for the word mark ‘ROLLING SKY’. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604 for the word mark ‘SKY’, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. In relation to its other earlier rights, the opponent invoked also Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(4) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier United Kingdom trade mark registration No 2 500 604, for which the opponent claimed reputation in the United Kingdom.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the United Kingdom.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 12/07/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely the following:

Class 9: Television, sound recording, sound reproducing, telecommunications 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; remote controls; games controllers; 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; satellite dishes; computer software to enable searching of data; encoded programs for computers and for data processing and telecommunications; electrical and electronic apparatus tor use in the reception or satellite, terrestrial or cable broadcasts; 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 programmes; recorded programmes for broadcasting or other transmission on television, mobile telephones, PDAs and on PCs; computer hardware; computer hardware, apparatus and instruments all for transmitting, displaying, receiving, storing and searching electronic information; electronic computer games; electronic interactive computer games; computer software and telecommunications apparatus to enable connection to databases and the Internet; 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; computer programs for interactive television and for interactive games; electronic publications; computer games; computer video games; encoded cards; apparatus and instruments for the reception of television broadcasts including the reception of cable, satellite and digital broadcasts; communication apparatus and instruments; 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 telecommunication and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus.

Class 16: Printed matter; magazines.

Class 28: Games; electronic games apparatus; games controllers.

Class 35: Advertising services; airtime advertising sales; media solutions for advertising; producing advertising and promotional campaigns; interactive television advertising; interactive television programme sponsorship; television programme sponsorship services; online advertising; digital text advertising; print advertising; market research services; market research for compiling information on viewers of television; market research services relating to broadcast media; market research for advertising; research services relating to advertising and marketing; interpretation, analysis and provision of market research data.

Class 36: Credit card services; the provision of warranties and assistance in relation to broadcast reception apparatus and instruments and parts and fittings therefor including cable, satellite and digital reception.

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 far 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.

Class 38: Telecommunications services; mobile and fixed telecommunications services; communications services; satellite communication services; television broadcasting; transmission and communication services; broadcasting and/or transmission of television programmes and/or films; satellite, DTT, cable, DSL and broadband broadcasting and/or transmission of audio and/or audio visual programming; transmission of audio, video and/or audio visual programming (by any means); broadcasting and transmission of television programmes and films to personal computers; broadcasting and communications by means of or aided by computer; transmission of audio, video and/or audio visual programming by Internet protocol (IPTV); provision of access and/or connectivity to broadband networks; transmission of sound and/or pictures; provision of audio visual content by means of telecommunications and/or communications and/or broadcasting and/or delivery and/or transmission; communication of information (including web pages), data by telecommunications and by satellite; computer aided transmission of messages and images; communications services by satellite and/or television; provision of access to news, current affairs and sports information; telecommunication services relating to the Internet; telecommunication of information (including web pages); provision of telecommunications links to computer databases and websites on the Internet; telecommunications services dedicated to retailing goods and services through interactive communications with customers; interactive television services being broadcasting and/or telecommunications and/or communications and/or delivery and/or transmission services; interactive services for television viewers being broadcasting and/or telecommunications and/or communications and/or delivery and/or transmission services; television broadcasting services incorporating Interactive services for viewing guides and intelligent automated selection for programme recordal; interactive services for television viewers facilitating the recordal of programmes automatically initiated on the basis of customer viewing habits/preferences being broadcasting and/or telecommunications and/or communications and/or delivery and/or transmission services; providing interactive television viewers with access to information, data, graphics, audio and/or audio-visual content from a restricted group of Internet websites or portals; broadcasting and transmission of interactive television, interactive games, interactive news, interactive sport, interactive entertainment and interactive competitions; providing access to video on demand and near on demand services; providing access to movies, videos and television programmes to viewers on demand and near on demand; providing access to a database storing information relating to a variety of goods and services; enabling access to the Internet; prevision of a connection between websites and television viewers via an interactive television portal; Internet portal services; web portal services; provision of broadband services; factual information services relating to television broadcasting; audio visual communication services; data communication services; data broadcasting services; transmission of television programmes, films, motion pictures, audio and/or visual material.

Class 41: Entertainment services; provision of audio visual content relating to entertainment, education, training, sport and culture; entertainment services by means of television; providing on-line electronic publications (not downloadable); 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 television programmes, interactive television, interactive games, interactive entertainment and interactive competitions; interactive television programme selection services for viewers; provision of interactive entertainment, news and sport for television viewers; viewing guide services; television programme recording services automatically initiated on the basis of customer viewing habits/preferences; video on demand and near video on demand services; providing movies, videos and television programmes to viewers on demand and near video on demand; betting, gaming and gambling services; news, current affairs and educational information services; distribution of television programmes; production of television programmes; entertainment; provision of news, current affairs and sports information.

Class 42: Design and development of computer hardware; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; home computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services; internet walled garden services.

The opponent filed its opposition against all the goods and services of the contested sign. Following a limitation in the specification, the opposition is directed against the following goods and services:

Class 9: Computer game software; joysticks for use with computers, other than for video games; memory cards for video game machines; video game cartridges; animated cartoons; computer software for creating social networks, building social networking applications and for allowing data retrieval, upload, download, access, display, marking and management.

Class 41: Electronic games services provided by means of the internet; providing a website featuring games and puzzles; game services provided on-line from a computer network; amusement services, online games; providing information related to computer games and electronic games.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 22/03/2017 the opponent submitted the following evidence:

• Annex 1, containing the following documents:

• A document prepared by the opponent in the form of a table and entitled ‘Chronology of Events in Evolution of Sky Business’, identifying key events in the opponent’s history and in that of the ‘SKY’ brand until 2011. According to the document, the earliest predecessor of the opponent, Sky Television, was incorporated in 1980. Over the years, the opponent has launched several ‘SKY’-branded TV channels and has signed various agreements for the provision of television coverage of various events. The document also mentions the provision of broadband, telephony and messaging services, as well as betting over the internet.

• A brochure entitled ‘SKY – 20 years on …’, providing a timeline of events in the opponent’s history from 1989 to 2009 and containing information about the history and the content of the opponent’s TV channels.

• Annex 2: a document prepared by the opponent in the form of a table containing a list of positive decisions taken as of July 2015 in relation to ‘SKY’ marks globally, including in the European Union. The list gives the contested trade mark, the date of the decision and the relevant classes of the Nice Classification for each case.

• Annex 3: a witness statement dated 23/02/2017 by Mrs Emma Campbell, Head Counsel for IP and Operations of the Sky Group. The document contains an overview of the activities and history of the Sky Group (referred to as Sky). It states that Sky operates the leading pay television service in the United Kingdom and the Republic of Ireland and broadcasts a wide range of TV channels. It is stated that the ‘SKY’ brand is also well known in the UK for broadband and telephony goods and services. According to the document, by June 2007, Sky had achieved 70% network coverage with its ‘SKY BROADBAND’ service. By the end of 2014, Sky had served around 20 million customers across Austria, Germany, Italy, Ireland and the UK. The witness statement includes tables containing turnover figures for Sky for 2000-2014, subscriber figures for the UK and Ireland for ‘SKY TV’ for 2008-2014, subscriber figures for ‘SKY+’ services for 2002-2009, and subscriber figures for ‘SKY BROADBAND’ internet services and for ‘SKY TALK’ telephone services for 2006-2014. According to this document, the opponent provided around 28 ‘SKY’-branded TV channels in 2013. The witness statement makes reference to the following exhibits (some exhibit numbers not mentioned as the exhibits do not exist (exhibits 1, 2, 42, 52 and 59), as indicated by the opponent):

• Exhibit 3: press releases and network summaries dated 1985-1988, some of which report on the first use of the ‘SKY’ brand in relation to television channels. The first ‘SKY’-branded channel began broadcasting in 1984.

• Exhibits 4-5, 7-9, 34, 37-38, 40-41, 44-46, 48-50, 55 and 63: press cuttings dated between 1983 and 2010, published in various online and print media outlets in the United Kingdom or on the opponent’s website. The articles relate to the opponent’s business and contain various direct or indirect references to the well-known character of the opponent’s signs (inter alia, ‘SKY’, ‘SKY CHANNEL’, ‘SKY TELEVISION’, ‘SKY ONE’, ‘SKY MOVIES’, ‘SKY SPORTS’, ‘SKY NEWS’, ‘SKY+’, ‘SKY DIAL’, ‘SKY BROADBAND’, ‘SKY MOBILE TV’, ‘SKY BET’, ‘SKY TRAVEL’, ‘SKY MAGAZINE’, ‘SKY GNOME’ and ‘SKY MEDIA’) used in relation to television and telephony services, interactive online platforms, video recorders and set-top boxes, magazines, advertising and sponsorship services.

• Exhibit 6: an extract from the opponent’s website www.sky.com entitled ‘Preparing for your Sky installation’ and copies of sample subscriber contracts dated 2004-2008.

• Exhibit 10: a list of decisions with positive outcomes for the opponent taken in relation to ‘SKY’ marks globally until 2010.

• Exhibit 11: a table prepared by Sky’s marketing department containing versions of ‘SKY’, ‘SKY SPORTS’, ‘SKY ONE’, ‘SKY NEWS’ and ‘SKY MOVIES’ logos used according to the opponent up to 2010.

• Exhibit 12: photographs of ‘SKY’-branded envelopes.

• Exhibit 13: an undated Wikipedia extract referring to the ‘SKY+’ video recorder from a page modified in 2008, a page from the website http://techdigestuk.typepad.com obtained on 03/12/2008 with information about a new interactive recording feature for the SKY+ device, and copies of Currys (a UK retailer) brochures, some of which with indications that they were printed in 2006, promoting ‘SKY+’ boxes and packages.

• Exhibit 14: extracts from the Broadcasters’ Audience Research Board (BARB) website, with a reference to 2014, providing information about the organisation, which provides official viewing figures for UK television audiences. The extracts provide information about television ownership and viewing in the UK until 2013.

• Exhibit 15: a document containing a table, allegedly compiled using data from BARB, concerning the viewing figures for various ‘SKY’ channels for March 2004-March 2014.

• Exhibit 16: a witness statement dated 16/09/2005 by Mr Nigel Walley, Managing Director of Decipher Consultancy Limited, an expert consultancy firm in the area of digital media strategy in the United Kingdom. According to the statement, ‘SKY’ is one of the best-known brands in the UK in the television field. The witness statement refers to the following three exhibits:

• Exhibit NW1: a document entitled ‘Background & Information on Decipher’, dated June 2005, providing information about the consultancy company, its management and its activities.

• Exhibit NW2: a document entitled ‘Interactive Technology Road Map’, prepared by Decipher in January 2000, providing information about the consultancy company and an overview of interactive technology.

• Exhibit NW3: a document entitled ‘Creating Premium Applications and Content for 2½G & 3G Wireless’, prepared by the company ActiveSky, referring to software applications. According to the opponent’s submissions, this company was the applicant for a contested trade mark in other proceedings.

• Exhibit 17: a witness statement dated 20/12/2006 by Mr Nigel Walley of Decipher Consultancy Limited, made in support to the opponent’s opposition to the UK trade mark application No 2 363 401 by Skyworth TV Holdings Limited and confirming the statements he made in his previous witness statement dated 2005, in particular that ‘SKY is now one of the most well-known brands in the UK’.

• Exhibit 18: photographs of product packaging and design models, as well as specifications of satellite receivers and decoders produced by Panasonic, Amstrad, Thomson, etc., and branded additionally as ‘sky digibox’.

• Exhibit 19: examples of the opponent’s retail point-of-sale promotional materials and brochures promoting ‘SKY DIGITAL’ packages, including television and broadband subscriptions and digital receivers and recorders. According to Mrs Emma Campbell’s witness statement, consumers can use the receivers even without subscription contracts.

• Exhibit 20: copies of pages from Sky’s audited annual accounts confirming the turnover and operating profit figures for 2000-2014, as well as a copy of Sky’s Annual Report for 2012.

• Exhibit 21: a document prepared by the opponent containing a graph and a table of data allegedly prepared in 2004 by the bank Credit Suisse First Boston, showing British Sky Broadcasting (BSkyB) Group’s market capitalisation and rankings on the FTSE100 share index between 1996 and 2003.

• Exhibit 22: an extract from the website of Nielsen Media Research www.nielsenmedia.co.uk dated 2007, providing information about the company, which is a leader in multinational media research and analysis, and its products.

• Exhibit 23: a selection of press cuttings published in the magazines Campaign and Marketing between 1999 and 2007, showing the rankings of major advertising spenders in the United Kingdom together with a summary of the methodology used by Nielsen Media Research. The company BSkyB appears among the top ten advertisers from 2004 on and is present in the top 30 advertisers in previous years.

• Exhibits 24, 39, 43 and 73: samples of advertising materials relating to various advertising campaigns for ‘SKY’ goods and services between 2006 and 2013 (some containing indications of the date and other dated by the opponent). For some of the materials, it is indicated that they were published in UK or Irish media (e.g. the Irish Times, the Daily Mail and the Evening Standard), while others were intended to be distributed by post or there is no information on how and where they were made available.

• Exhibit 25: a document containing two tables, allegedly prepared by the Audit Bureau of Circulation Ltd (ABC), containing national press circulation and readership figures for 1998-2005 for various UK newspapers and magazines. ‘SKY’ is not mentioned among the newspapers and magazines listed.

• Exhibit 26: a document prepared by the opponent containing a table of the UK awards that the ‘SKY NEWS’ and ‘SKY SPORTS’ television channels won between 1992 and 2010.

• Exhibit 27: an extract from the website of Factiva, a Dow Jones & Reuters Company, which provides business information and research services, showing search results obtained in 2005 and 2006 for publications dated 04/04/1998-04/04/2000 and 14/05/2003-14/05/2005 containing the words ‘SKY DIGITAL’, ‘SKY MOVIES’, ‘SKY NEWS’, ‘SKY ONE’ and/or ‘SKY SPORTS’.

• Exhibit 28: an extract from the website http://web.archive.org showing a screenshot from the opponent’s website www.sky.co.uk as it looked in 1996, as well as screenshots from www.sky.com, http://news.sky.com and http://stars1.sky.com in 2009.

• Exhibit 29: a document prepared by the opponent containing a map illustrating the links within Sky’s platform of commercial websites as of November 2003 with an indication that they have not changed in June 2004.

• Exhibit 30: a document prepared by the opponent containing a list of its live websites as of June 2004, indicating the month and year in which each went live.

• Exhibit 31: an extract from the website of ABC Electronic (ABCE), obtained in 2007, providing information about the company and its activities. It is clear from this extract that this is a company that prepares website activity audits and database user demographic audits.

• Exhibit 32: an ABCE audit report showing the number of page impressions for ‘SKY’ websites, audited for January 2002, June 2002 and June 2004. The report shows that the websites had between 2.7 million and 5.9 million unique users for each of the months audited.

• Exhibit 33: a document entitled ‘Sky Active Fact Sheet’, dated October 2001, providing information about the opponent’s interactive television service ‘Sky Active’, which gives viewers more control over the way they watch television on the opponent’s channels, with the possibility of using communication (email and text), games, shopping, betting and information services.

• Exhibit 35: a copy of a document entitled ‘Sky News Active – Breaking the mould of Television News’, prepared by the opponent for the Royal Television Society in the UK and containing references to the year 2000. The document provides information about one of the opponent’s service that was launched in 2000, namely a 24-hour interactive television news on demand service, and containing, on the final page, some positive user opinions about the service.

• Exhibit 36: undated screenshots containing information on the ‘SKY SPORTS ACTIVE’ and ‘SKY NEWS ACTIVE’ interactive services.

• Exhibit 47: several documents, namely extracts from a presentation prepared by the company Brainstorm, a press release from the opponent’s website obtained in 2007, extracts from a presentation prepared by the opponent and information from the opponent’s ‘SKY SPORTS’ website obtained in 2005, all relating to ‘SKY WAP’ services, ‘SKY MMS’ services and a ‘SKY MOBILE’ application provided by the opponent.

• Exhibit 51: a selection of destination guides with tourist information about various places, printed from the opponent’s ‘Sky Travel Shop’ website.

• Exhibit 53: copies of the covers of and pages from editions of magazines dated 1994-2006 - the ‘SkyTVguide’, ‘SKY customer magazine’ or ‘SKY the magazine’ – a ‘SKY’-branded TV listing and information magazine. According to Mrs Emma Campbell’s witness statement, the magazine was distributed exclusively to ‘SKY’ television subscribers.

• Exhibit 54: publications produced by the magazines Campaign and MediaWeek, dated between 1998 and 2010, presenting circulation figures, according to which in these years the magazine that is referred to as ‘Sky TV Guide’ (until 2000), ‘Sky Customer Magazine’ (between 2000-2002), ‘Sky the magazine’ (2002-2007) and ‘Skymag’ (2007-2009) had the highest circulation figures in the United Kingdom. It is reported that, in 2010, this magazine, marketed as ‘SKY MAGAZINE’ at that time, had more than 7.4 million readers.

• Exhibits 56 and 57: copies of issues of a ‘SKY MOVIE’ magazine and a ‘SKY SPORTS’ magazine, dated May 2007.

• Exhibit 58: an extract from www.imdb.com, obtained on 09/04/2009, showing company information about BSkyB, listing the company as the ‘Production Company’ or ‘Production Company (with the participation of)’ in relation to 40 films produced between 1993 and 2008.

• Exhibit 60: brochures and marketing materials used in relation to the provision of advertising services. In particular, this exhibit contains a brochure entitled ‘SKY FACTS – The Marketing Guide to Sky Television’, dated 1995, and extracts from ‘Sky Fact Books’ for 2003, 2004, 2005 and 2006, as well as an extract from a MediaWeek publication dated 2007 reporting on an award for Sales Team of the Year won by Sky in 2007.

• Exhibit 61: an extract from the opponent’s website www.skymedia.co.uk obtained on 13/03/2006 of a page entitled ‘Sky Media – Us and You – Channel Offering’ and showing a list of television channels. In Mrs Emma Campbell’s witness statement, it is claimed that these are the channels for which the opponent offered airtime advertising sales and advertising opportunities in March 2006.

• Exhibit 62: a case study of an interactive TV campaign for ‘Virgin Trains’ launched in 2005, which ‘SKY MEDIA’ was involved in preparing.

• Exhibit 64-66: materials referring to the opponent’s brand ‘SKY MEDIA’, namely a copy of a page, allegedly from Sky’s newsletter of February 2006, showing the indication ‘SKY media’ at the bottom of the page; a photograph of a cardboard box bearing the indications ‘SKY media’ and ‘The Ultimate Football Package’; and an undated extract from the ‘SKY MEDIA’ website.

• Exhibit 67: articles dated 1992-1994 and 1999-2000 and website extracts dated 2004, describing TV cards, some of which were developed by the company Hauppauge, which can be used in personal computers to view television programming. The opponent’s trade mark or activities are not mentioned in the documents.

• Exhibit 68: a list of UK and EU trade marks owned by the opponent that include the element ‘SKY’.

• Exhibit 69: a decision taken by the UK Trade Marks Registry dated 15/06/2005 in an opposition involving the application for the trade mark ‘SKYSTORM’ for goods in Classes 9 and 28, which was opposed by the opponent.

• Exhibit 70: a graph and a table prepared by the opponent, the data of which were allegedly provided by Merrill Lynch, referring to May 2010 and showing BSkyB Group’s market capitalisation and FTSE rankings.

• Exhibit 71: extracts from Sky’s Annual Report and Annual Review for 2007 and The Bigger Picture Review for 2007, as well as information prepared by the opponent concerning the company’s results for 2006 and 2007.

• Exhibit 72: a document containing tables and graphs prepared by the opponent, presenting comparative information on the growth of the main UK broadband providers between 2006 and 2010, including Sky.

• Exhibit 74: a document containing tables prepared by the opponent, showing information allegedly obtained by Enders and Company Financials regarding the growth of the ‘SKY TALK’ telephony service between Q4 2008 and Q1 2010.

• Exhibit 75: a document prepared by the opponent containing information about awards won by ‘SKY NEWS’ between 2006 and 2010.

• Exhibit 76: extracts from www.skyinteractive.com, http://waptv.com, www.broadbandbananas.com and www.brandrepublic.com, obtained in 2009. The documents refer to a developers’ programme and product support information for ‘Sky Interactive Technology’ products.

• Exhibit 77: extracts from Wikipedia, www.digitalspy.co.uk and http://skyplayer.sky.com, obtained in 2008 and 2009, containing articles relating to Sky’s ‘SKY ANYTIME’ video on demand service, the ‘SKY’ TV player and ‘Sky Player’ software.

• Exhibit 78: extracts from the magazine ‘SKY Focus Channel Guide’, dated May 2005-March 2008, mentioning some ‘SKY’ goods, such as ‘Sky Gamepad’ and ‘Sky Navigator’ (a remote control and keyboard), and ‘SKY’ services, such as ‘Sky’s Entertainment Packages’ for TV and radio channels, including Sky TV channels.

• Exhibit 79: an article published in The Guardian, dated 21/12/2007, entitled ‘Studios ink Sky on-demand movie deal’, as well as marketing emails sent to customers in 2008 detailing the latest service information and viewing options provided by the opponent.

• Exhibit 80: a DVD of a selection of advertisements used in 1992-2009 for some of the opponent’s ‘SKY’ goods.

• Exhibit 81: a copy of the Office’s decision of 17/12/2008, B 958 100, in relation to an opposition by the opponent against the EUTM application .

• Exhibit 82: internet data reports prepared by comScore concerning visitors to ‘Sky Portal’ between December 2010 and November 2013.

• Annex 4: a witness statement dated 16/09/2005 by Mr Nigel Walley, also submitted as Exhibit 16 (described above), accompanied by Exhibits NW1, NW2 and NW3 (described above) and a witness statement dated 20/12/2006 by Mr Nigel Walley, also submitted as Exhibit 17 (described above).

• Annex 5: a witness statement dated 15/03/2017 by Mr Joel Anthony Barry, a partner at Olswang (the opponent’s representative) and head of Olswang’s intellectual property department. According to the witness statement, the mark ‘SKY’ has a very substantial reputation and significant goodwill attached to it in the fields of advertising, retail, telecommunications, broadcasting, entertainment and converging communications technology. Consequently, anyone using the ‘SKY’ mark as part of their mark for goods and services in these fields would be assumed by the UK public to be in some way connected or associated with the opponent. In addition, it is stated that any use of the ‘SKY’ mark by the applicant in relation to its goods and services would be detrimental to the distinctiveness of the ‘SKY’ mark. It is noted in this witness statement that the opponent has also used its mark with a substantial number of secondary words (paragraph 9.1 of the statement). Therefore, the witness considers that the contested mark, which also incorporates an additional word to the word ‘SKY’, will ride on the coat-tails of the opponent’s reputation and will be detrimental to the distinctiveness of the ‘SKY’ mark, and that it could tarnish the excellent reputation that the opponent has achieved in relation to its quality of service and technological innovation. The witness concludes that it is inconceivable that anyone could use the ‘SKY’ mark with descriptive and/or non-distinctive prefixes or suffixes in the UK in relation to goods and services in the fields of telecommunications, broadcasting, entertainment and converging communications technology without the opponent’s reputation in relation to the mark ‘SKY’ being diluted or taken advantage of (paragraph 9.2 of the statement). The witness statement is accompanied by the following exhibits:

• Exhibit JAB1: an extract from a survey by the European Commission, published in June 2012, noting that the most widely spoken foreign language in the European Union is English.

• Exhibits JAB2 and JAB3: extracts from English dictionaries giving the meanings of the words constituting the earlier marks and the contested sign.

• Exhibit JAB4: website extracts of articles and information about the use of ‘rolling’ in trade in relation to contracts for telecommunication services, as well as showing that other companies also use this word in their names or trade marks (e.g. the companies Patterson Ring Rolling, Rolling Components).

• Exhibit JAB5: extracts from the EUIPO’s eSearch database showing trade marks containing the word ‘ROLLING’ for goods and services in various classes.

• Annexes 6-19, 21, 22 and 25: decisions of the EUIPO, the UK Intellectual Property Office and other institutions in several countries of the EU concerning successful oppositions by the opponent against various trade marks containing the element ‘SKY’.

• Annex 20: extracts from Sky’s Annual Reports for 2007-2014 and an article prepared for publication entitled ‘SKY PLC – Results for the twelve months ended 30 June 2015’.

• Annexes 23 and 24: information concerning the opponent’s claims under Article 8(4) EUTMR, namely extracts from the website of Eurostat (the European Union’s statistical office), dated 2013, concerning the size of the UK population, as well as extracts from Kerly’s Law of Trade Marks and Trade Names concerning the English common law tort of passing-off.

The documents listed above demonstrate that the earlier mark ‘SKY’ has been subject to long-standing and intensive use in the United Kingdom in relation to some of the opponent’s goods and services for which reputation is claimed.

The witness statement of Mr Nigel Walley provides the Opposition Division with the independent opinion of an expert in a consultancy firm in the area of digital media strategy in the United Kingdom, according to which ‘SKY’ is one of the most well-known brands in the UK in the television field.

The witness statement of Mrs Emma Campbell provides extensive and detailed overview of the activities and history of the Sky group of companies and trade marks. It states that the opponent operates the leading pay television service in the United Kingdom and the Republic of Ireland broadcasting a wide range of TV channels, and providing broadband and telephony goods and services.

The information in this document is supported by the exhibits accompanying it. In particular, the press releases and advertising materials published online and in printed media mostly in the United Kingdom (exhibits 3-5, 7-9, 24, 34, 37-41, 43-46, 48-50, 55, 63, 73 and 80) give various direct and indirect information on the opponent’s investments and its promotional, communication and marketing strategies and the perception of its trade mark among consumers.

Some press releases refer to studies conducted in the past reporting on the awareness of the opponent’s mark; for example, a survey conducted in 1988 concerning the Sky Channel’s audience, states that the audience was made up by more than 10 million households across Europe at that time; an article from February 1989 reported on 84% awareness of the ‘SKY’ services.

Mrs Emma Campbell’s witness statement provides more recent information about the opponent’s activities, including turnover and subscribers figures for UK and Ireland and is supported by various exhibits. It becomes clear that a significant number of private households in the UK and Ireland (p. 13 of the witness statement) received the opponent’s television channels before the relevant date, in particular between 2008 and 2012. As regards the opponent’s ‘SKY’ TV channels, in 2008 they were received in 19.92 million households, in 2009 in 23.61 million households, in 2010 in 24.27 million households, in 2011 in 24.66 million households and in 2012 in 24.24 million households. Some of the exhibits accompanying the witness statement provide supporting information to the claims made in it. In particular, exhibit 15 concerns the viewing figures of different ‘SKY’ channels and also shows substantial numbers of viewers.

Although some of the documents with statistical information have been prepared by the opponent itself and have, therefore, less probative value, these documents are sufficiently supported by the opponent’s annual reports and official accounts, which are public and have been audited by independent parties, and by the references to the opponent’s activities in various publications.

The annual turnover (p. 11-12 of the witness statement of Mrs Emma Campbell) of the ‘SKY’ group under the ‘SKY’ trade marks, for the UK and Ireland, confirmed by the audited annual reports (exhibits 20 and 71 and annex 20), includes the following results: GBP 4.048 million for 2005, GBP 4.148 million for 2006, GBP.4 551 million for 2007, GBP 4.952 million for 2008, GBP 5.359 million for 2009, GBP 5.912 million for 2010, GBP 6.597 million for 2011, GBP 6.791 million for 2012, GBP 7.235 million for 2013 and GBP 7.632 million for 2014.

The witness statement of Mrs Emma Campbell describes the opponent’s ‘SKY’-branded telecommunication services, including regular telephony services, Internet and portal services and e-mail services under the names ‘SKY NOW’ (a free Internet service provider (ISP) launched in 1999), ‘SKY DIAL’ (launched in 1997/1998) and ‘SKY TALK’ (launched in 1999). The ‘SKY TALK’ telephony service had 4.9 million subscribers in the UK in 2014.

SKY launched HD (high definition) television services in 2006, and the ‘SKY HD’ TV channels have evolved from 292 000 subscribers in 2007 to 5.242 million subscribers in 2014 (p. 16 and p. 17 of the witness statement of Mrs Emma Campbell). The ‘SKY BROADBAND’ internet access service was launched by SKY on 18/07/2006 and had 5.242 million subscribers in 2014 (p. 19 of the witness statement).

The information in relation to the opponent’s services is completed by some of the press releases giving information about the opponent’s interactive platforms (‘SKY NEWS ACTIVE’, ‘SKY SPORTS ACTIVE’) and services (‘SKY BY BROADBAND’, ‘SKY BY MOBILE’, ‘SKY DIAL’). Exhibits 26 and 75 provide information about awards won by the opponent’s television channels ‘SKY NEWS’ and ‘SKY SPORTS’ in 1992 – 2010. An article dated 2006 and entitled ‘Digital Channel Awards – Best News Channel – Winner: Sky News.’ reports on an award obtained by one of the opponent’s channels and an article dated 2006 reports on an award for the creation of ‘SKY BROADBAND’.

The witness statement of Mrs Emma Campbell also provides information about the history and evolution of ‘SKY’-branded mobile TV services and entertainment services provided through interactive online platforms since 2001 or, in some cases, even earlier, including interactive Internet shopping services through ‘SKY ACTIVE’, interactive entertainment allowing customers to play interactive games through ‘SKY GAMESTAR’, interactive sports coverage through ‘SKY SPORTS ACTIVE’, interactive television news service branded ‘SKY NEWS ACTIVE’ and interactive service for films branded ‘SKY MOVIES ACTIVE’. Supporting information about the provision of these services is contained in exhibits 33-36, which contain informative brochures and press releases in relation to these services.

The opponent also provides information about some ‘SKY’-branded goods, such as the ‘SKY+’ personal video recorder. Some of the press releases report on the launch of the ‘Sky Gamepad’ – a TV games controller, the ‘SKY+’ personal television recorders, and ‘SKY GNOME’ – a wireless device allowing users to listen to ‘SKY’ channels within a 30m radius of its base station. Some newspapers ranked the applicant’s ‘SKY+’ personal video recorder as the ‘number one’ among gadgets in 2003.

Some of the press releases report on the launch of the ‘Sky Gamepad’ – a TV games controller, the ‘SKY+’ personal television recorders, and ‘SKY GNOME’ – a wireless device allowing users to listen to ‘SKY’ channels within a 30m radius of its base station. Some newspapers ranked the opponent’s ‘SKY+’ personal video recorder as the ‘number one’ among gadgets in 2003.

The witness statement of Mrs Emma Campbell also clarifies that the ‘SKY’ magazine (‘SKY MAG’ between 2007 and 2009, ‘SKY MAGAZINE’ in 2010) was published monthly until July 2011 and ‘distributed exclusively to the great majority of SKY DIGITAL subscribers’. The magazine provided programme information, celebrity interviews and show business news.

The publications by the independent media Campaign and Media Week (exhibit 54) in 1998 – 2010 provide information, according to which the ‘SKY’ magazines were occupying the top position by circulation in the United Kingdom and reached to several million readers monthly. Although according to some documents these magazines were usually distributed to ‘SKY’ television subscribers, some magazine covers also bear prices (exhibit 53). In any event, the rankings of the opponent’s ‘SKY’ magazine as the most circulated one for a continuous period suggests that it became generally known in the market in, at least, the United Kingdom.

Some of the documents (exhibits 60-62) also provide indications in relation to the opponent’s activities marketed as ‘SKY MEDIA’ around the provision of advertising space, time and media and the production of advertising campaigns, which were promoted through brochures and guides of the opponent (exhibit 60) giving information about advertising opportunities through the ‘SKY’ television channels, the Sky TV Guide / SKY Magazine, the SKY websites, etc. Some articles in the press releases report on activities of ‘SKY MEDIA’ – ‘the advertising sales division of the company BSkyB’, including articles entitled ‘Emap Advertising strikes deal with Sky Media’ concerning promoting services of the company Orange, ‘ATR Look to the Sky for Ad Sales’, ‘Sky Media reports record month for interactive TV campaigns’, etc.

The witness statement of Mrs Emma Campbell provides an overview (p. 78 and 79) of the opponent’s own global expenditure on marketing and promoting its business, primarily under the ‘SKY’ trade marks, derived from its audited Annual Reports, including the following results: GBP 734 million spent in 2006-2007, GBP 743 million in 2007-2008, GBP 907 million in 2008-2009, GBP 1.118 million in 2009-2010, GBP 1.220 million in 2010-2011, GBP 1.064 million in 2011-2012, GBP 1.116 million in 2012-2013 and GBP 1.199 million in 2013-2014. The opponent has provided information by Universal McCann and MediaCom (p. 79-80 of the witness statement of Mrs Emma Campbell), supported by the publications in exhibit 23, according to which it has been consistently ranked as the top advertising spender in the entertainment and media sector.

The effects of the marketing actions of the opponent are also evidenced by the number of users of the opponent’s website. For example, exhibit 32 contains an independent report, according to which in some months in 2002 and 2004 the opponent’s ‘SKY’ websites had several million unique users per month.

The publications in independent media in the exhibits containing press releases provide information supporting the above data concerning marketing campaigns and expenditures amounting to millions of euros in relation to the ‘SKY’ marks and report on agreements for television coverage of various events.

Although a certain amount of time has elapsed between the publication of some of the information concerning the opponent’s activities, which show that the opponent used its mark for a continuous and long period, and the relevant point in time for proving reputation, account is taken of the relevant market sector and the fact that the other documents submitted show that the opponent continued to use and advertise its sign extensively in subsequent years and, consequently, remained active on the market.

Although the opponent’s sign ‘SKY’ is, in many occasions, used with additional terms (e.g. ‘NEWS’, ‘MOVIES’, ‘SPORTS’, ‘BROADBAND’, ‘MEDIA’, ‘MAGAZINE’), these indications are used to distinguish between the different types and lines of goods or services of the opponent (e.g. television channels indicated as ‘SKY NEWS’, ‘SKY MOVIES’ and ‘SKY SPORTS’, providing different types of content). It should be borne in mind that it is quite common in some market areas for goods or services to bear their individual mark as well as the mark of the business or product group (‘house mark’). Moreover, these words are descriptive terms relating to the nature of the goods and services at issue. Consequently, the indication ‘SKY’ will be perceived as the main sign indicating the commercial origin of the goods and services at issue.

The opponent’s intensive and widespread promotional activities in the United Kingdom are considered strong indications that the mark ‘SKY’ has earned recognition among the relevant public and that the opponent has undertaken steps to build up a brand image and enhance trade mark awareness among the public.

On the basis of the documents listed above the Opposition Division concludes that the earlier trade mark ‘SKY’ has acquired a reputation in the United Kingdom for some of the relevant goods and services for which reputation is claimed and for which the earlier mark is registered, namely the following:

Class 9: Telecommunications apparatus and instruments; apparatus for recording television programmes; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content.

Class 16: Magazines.

Class 35: Advertising services.

Class 38: Telecommunications services.

Class 41: Entertainment by means of television, telephony and the Internet; production of television programmes.

The Opposition Division notes that the abovementioned goods and services are either explicitly covered by the specification of goods and services for which the earlier mark is registered, or are included in broader categories of that specification (e.g. entertainment by means of television, telephony and the Internet is included in entertainment in Class 41).

Considering that reputation is accepted to be proven for the entire categories listed above, there is no need to determine whether reputation is indeed shown for each and every item belonging to any of these categories. Accepting that reputation is proven for the abovementioned goods and services is tantamount to accepting reputation for all possible variations belonging to these categories, including those explicitly mentioned in the earlier mark’s specification (e.g. set-top boxes in Class 9, since reputation is accepted for the broad category of telecommunications apparatus and instruments; television broadcasting in Class 38, since reputation is accepted for the broad category of telecommunications services; and betting, gaming or gambling services provided by means of television, telephony and the Internet in Class 41, since reputation is accepted for the broad category of entertainment by means of television, telephony and the Internet).

In conclusion, it is clear from the evidence that the sign ‘SKY’ has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The turnover figures and marketing expenditure demonstrated by the evidence and the various references in the press to the success of the sign all unequivocally show that it enjoys a high degree of recognition among the relevant public for the abovementioned goods and services.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the earlier trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to the abovementioned goods and services, whereas there is no or little reference to the remaining goods and services. For example, the opponent claims reputation for games and software applications and the documents submitted mention that the opponent has provided some applications related to its services. Some articles report on the launch of, for example, games controls. However, there is insufficient information in the evidence regarding the reception of these goods and the public’s recognition of the mark in relation to such goods or to any of the remaining goods and services not covered by the above categories.

It is noted that on 26/01/2018, the opponent submitted the following additional evidence:

• Annexes 1 and 2: Two decisions of the EUIPO concerning successful oppositions by the opponent against trade marks containing the element ‘SKY’.

• Annexes 3 and 4: Printouts from the opponent’s website www.sky.com, containing references to ‘SKY BROADBAND’, ‘SKY TALK’ and ‘SKY MOBILE’ services and showing several photographs of telecommunication devices and remote controls with the sign ‘SKY’.

However, according to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office. Moreover, the additional evidence does not demonstrate reputation for any additional goods or services other than those listed above for which reputation has been accepted on the basis of the initial evidence submitted. Therefore, taking into account the additional evidence would not alter the conclusion reached on the basis of the initial evidence.

1. The signs

SKY	ROLLING 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 mark is a word mark, consisting of the verbal element ‘SKY’. The contested sign is a word mark, consisting of the verbal elements ‘ROLLING SKY’.

As both marks are word marks, as such they have no elements which can be considered more dominant (visually eye-catching) than other elements.

The word ‘SKY’ constituting the earlier mark and the second word of the contested sign, will be perceived by the relevant consumers as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon that is characteristically blue or grey during the day, red in the evening, and black at night’ or ‘outer space, as seen from the earth’ (information extracted from Collins English Dictionary on 28/09/2018 at https://www.collinsdictionary.com/dictionary/english/sky). This word has no connection to the goods and services at issue or any of their essential characteristics and is of average distinctiveness.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘SKY’ and points out that there are over 1 400 EUTMs currently registered with this element. The Opposition Division notes that the existence of some trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the applicant has not demonstrated that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the verbal element ‘SKY’. Under these circumstances, the applicant’s claims must be set aside.

The first word of the contested sign, ‘ROLLING’, may be perceived as the gerundial form of the English verb ‘to roll’ and, consecutively, as meaning ‘moving or causing to move along by turning over and over’, or as an adjective meaning ‘having gentle rising and falling slopes; undulating’, ‘progressing or spreading by stages or by occurrences in different places in succession, with continued or increasing effectiveness’ (information extracted from Collins English Dictionary on 28/09/2018 at https://www.collinsdictionary.com/dictionary/english/rolling). The opponent argues that the word ‘ROLLING’ is weak or non-distinctive in relation to the relevant goods and services. However, the Opposition Division notes that there are no indications or evidence that ‘ROLLING’ on its own is connected to any of the characteristics of the particular goods and services at issue and considers that this term is of average distinctiveness in relation to them.

The expression ‘ROLLING SKY’, constituting the contested sign, considered as a whole, has no univocal meaning for the relevant public and is not used in common parlance. It may refer to, inter alia, ‘sky which is turning over and over’ or ‘sky having or forming curves or waves’, or it may also be perceived as a conjunction with no clear meaning as a whole, that is with no different meaning than the simple sum of its parts.

Visually and aurally, the signs coincide in the word ‘SKY’ (and its respective pronunciation), which constitutes the earlier mark and which is included as an independent and distinctive element at the second position in the contested sign, ‘ROLLING SKY’.

The signs differ in the additional distinctive word ‘ROLLING’ and (its pronunciation) present at the beginning of the contested sign, which is the part that first catches the attention of the reader.

Therefore, the signs are visually and aurally similar to only a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

There is a conceptual link between the signs on account of the coinciding word ‘SKY’. The marks differ in the additional concept present in the contested sign, conveyed by the word ‘ROLLING’, which qualifies the noun that follows it.

As previously indicated, the expression ‘ROLLING SKY’ is quite vague when considered as a whole and does not convey a meaning that would be any different from the sum of its parts. In any case, the public will be aware of the semantic content of the word ‘SKY’ in the contested sign. Therefore, the marks are conceptually similar at least 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 is accompanied by an adjective which only qualifies it.

As the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

2. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As regards the degree of similarity between the signs required under Article 8(5) EUTMR, the Court has held that it differs from that required under Article 8(1)(b) EUTMR. Whereas the implementation of the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the implementation of the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 27, 29 and 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58 and 66).

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

The goods and services for which the earlier mark has a reputation are the following:

Class 9: Telecommunications apparatus and instruments; apparatus for recording television programmes; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content.

Class 16: Magazines.

Class 35: Advertising services.

Class 38: Telecommunications services.

Class 41: Entertainment by means of television, telephony and the Internet; production of television programmes.

The contested goods and services are the following:

Class 9: Computer game software; joysticks for use with computers, other than for video games; memory cards for video game machines; video game cartridges; animated cartoons; computer software for creating social networks, building social networking applications and for allowing data retrieval, upload, download, access, display, marking and management.

Class 41: Electronic games services provided by means of the internet; providing a website featuring games and puzzles; game services provided on-line from a computer network; amusement services, online games; providing information related to computer games and electronic games.

In the present case, the signs under comparison are similar to the extent that the earlier mark, ‘SKY’, is included as an independent and distinctive element in the contested sign. The differences in the structures of the marks and in the additional first element of the contested sign, even though of average distinctiveness, do not alter this finding. The earlier mark is inherently distinctive for the relevant goods and services and, moreover, enjoys a high degree of recognition and reputation for some of the goods and services, as specified above.

There is a connection between the opponent’s goods and services in Class 9 (essentially telecommunication apparatus and instruments), Class 38 (telecommunication services) and Class 41 (in particular entertainment by means of television, telephony and the Internet) for which the earlier mark has a reputation, and the contested goods in Class 9 (which are essentially games software and software for creating social networks, joysticks, video game cartridges and memory cards and animated cartoons) and services in Class 41 (which are essentially games and amusement services and related information). Contrary to the applicant’s arguments, all of these goods and services belong to the information technology, telecommunication and entertainment sectors, which in some cases overlap, and can be offered through the same channels to the same relevant public. The telecommunications industry, within the sector of information and communications technology, is made up of telecommunication companies and, as it is evident from the opponent’s submissions (in particular Mrs Emma Campbell’s witness statement dated 23/02/2017), the opponent is one of these companies with a leading position in the United Kingdom. This witness statement traces the opponent’s development and demonstrates that, over the years, it has expanded its activities and its portfolio of goods and services to cover various needs in the telecommunications sector by providing broadcasting, telephony and internet services, as well as video receivers and recorders, game controllers, online interactive apps, games and platforms. The telecommunications sector is one of the fastest growing and most innovative industries and telecommunications operating companies often provide a very wide portfolio of goods and services in this field and related fields. Considering all of the above, it is reasonable to conclude that the relevant public is likely to make a connection between the opponent’s goods and services in Classes 9, 38 and 41 under the reputed mark ‘SKY’ and the contested goods and services in Classes 9 and 41 when encountering the contested mark.

Taking into account and weighing up all the relevant factors, which include the degree of similarity between the signs, the connection between the goods and services and the strength of the earlier mark’s reputation, it is likely that the contested sign will bring the earlier mark to the mind of the relevant public in relation to the abovementioned contested goods and services.

Therefore, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

3. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that, because of the fame of its ‘SKY’ trade mark, the use of a similar mark for identical or similar goods and services will inevitably free-ride on, or take advantage of, the opponent’s reputation because consumers will be likely to associate the mark applied for with the opponent’s famous brand. It also considers that use of the applicant’s mark will cause detriment through tarnishing to the repute of the opponent’s mark, since the opponent will not be able to control the manner in which the applicant uses its sign. It states that use of the applicant’s mark will cause detriment to the distinctive character of the earlier mark, which will reduce the capacity of the opponent’s ‘SKY’ mark to distinguish its goods and services from those of other providers and will reduce its power of attraction.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and would be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent claims that the opponent’s mark ‘SKY’ has a very substantial reputation in the United Kingdom, which has been acquired over more than 25 years in relation to goods and services in the fields of telecommunications, broadcasting, entertainment and converging communications technology. According to the opponent, each year ‘SKY’ further enhances its position as a company renowned for its innovation in the fields of entertainment and communications, with enormous expenditure on brand recognition and significant marketing efforts (point 8.4 of Mrs Emma Campbell’s statement). The opponent also claims to have used its ‘SKY’ mark with a substantial number of secondary words, such as ‘SKY LIVE’, ‘SKY NEWS’, ‘SKY SPORTS’ and ‘SKY GAMES’.

The opponent is of the opinion that, as a result, any use of the ‘SKY’ mark, even with the element ‘ROLLING’ preceding it (which is, in the opponent’s opinion, not particularly distinctive), will ride on the coat-tails of the opponent’s reputation and will be detrimental to the distinctiveness of the ‘SKY’ mark, which is associated by the relevant public with quality service and technological innovation. The opponent considers that the distinctive character of the earlier mark will be taken advantage of and put at risk, and that the reputation of the ‘SKY’ mark will be traded off. Consequently, the opponent considers that the contested mark will take unfair advantage of the earlier mark as a consequence of an association between the marks (in relation to all these claims see, for example, point 3.1 and point 9 of Mr Joel Barry’s witness statement and the submissions of Mrs Emma Campbell with references to figures to support her statements).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

As seen above, there is a link between the signs, since the marks are similar to a certain extent, the earlier trade mark has a substantial reputation and there is a clear relationship between telecommunication apparatus and instruments in Class 9, telecommunication services in Class 38 and entertainment by means of television, telephony and the Internet in Class 41, for which the earlier mark is reputed, and the contested goods and services in Classes 9 and 41, which are also related to the IT, communications and entertainment fields. Considering the similarity between the signs, the distinctiveness and the reputation of the earlier mark, and the relationship between the goods and services at issue, there is a high probability that the use of the mark applied for, for the goods and services concerned, may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark and the investments undertaken by the opponent to achieve that reputation.

For example, the goods and services covered by the trade mark applied for could be more attractive to consumers than they otherwise would be due to the reputation of the earlier mark and therefore the opponent’s reputation could facilitate the marketing of the abovementioned contested goods and services, or the applicant may unfairly benefit from the reputation of the opponent’s mark. It seems inevitable that the earlier mark’s image in the United Kingdom – namely being associated with innovation and convergent technologies in the telecommunications field – and its reputation for telecommunication apparatus and instruments in Class 9, telecommunication services in Class 38 and entertainment by means of television, telephony and the Internet in Class 41, as shown in the evidence submitted, will be transferred to the aforementioned contested goods and services if they are marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s mark in the minds of consumers.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

4. Due Cause

As mentioned above, the applicant claims to have due cause for using the contested trade mark.

According to the applicant, since the contested mark only contains the last three letters of the earlier mark, is used for different goods and services and there is no likelihood of confusion between the marks, the applicant should be allowed to use the mark ‘ROLLING SKY’. Furthermore, the applicant argues that its EUTM ‘ROLLING SKY’ is the name of a successful and popular game application and filed various items of evidence to substantiate this claim. It also points out that in the online platforms where its game marketed under the sign ‘ROLLING SKY’ is made available for download it is clearly stated that the game application is made by the applicant. It concludes that the use of its trade mark has to be indicated as fair market use and thus a due cause exists.

In support of its claims the applicant has submitted undated website extracts and website extracts dated in 2016 and 2017 referring to its game app ‘ROLLING SKY’ and showing game rankings, undated Facebook extracts from the page of ‘ROLLING SKY’ and an extract from YouTube showing a snapshot of a video entitled ‘Rolling Sky All Levels’.

However, although these documents show indeed the existence of a game called ‘ROLLING SKY’ in 2016 and 2017, they do not show in any way that, for example, the applicant had been using the sign for dissimilar goods, as claimed, in the relevant territory before the opponent’s mark was applied for (which was on 20/10/2008), or acquired a reputation before that date and that such a coexistence has not affected the distinctiveness and repute of the earlier mark. It has not demonstrated to have some specific right to use the mark for the goods and services either.

It is up to the applicant to show that it has due cause to use the mark applied for. Mere use of the sign is not enough — what must be shown is a valid reason justifying that use. Consequently, the condition of due cause is not fulfilled in the present case.

On the basis of the above, the Opposition Division considers that the applicant did not succeed in establishing due cause for using the contested trade mark.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Begoña URIARTE VALIENTE

Boyana NAYDENOVA

Gueorgui IVANOV

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.