OPPOSITION No B 2 985 227

Sky limited, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent), represented by CMS Cameron Mckenna Nabarro Olswang Posniak i Sawicki SP.K., Emilii Plater 53, 00-113 Warsaw, Poland (professional representative)

a g a i n s t

Sky Boy, 102 rue Nollet, 75017 Paris, France (applicant), represented by Claire de Chassey, 9, rue Saint Fiacre, 75002 Paris, France (professional representative).

On 17/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 985 227 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 504 409 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 16 504 409 for the word mark ‘SKY BOY’. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 534 440 for the figurative mark , in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. In relation to its other earlier rights, which include other registered trade marks as well as a non-registered signs used in the course of trade and a well-known trade mark in the sense of Article 8(2)(c) EUTMR, the opponent invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 2 534 440.

a) The goods and services

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

Class 9: Computer hardware; computer software.

Class 35: Advertising; promotional services; arranging and conducting of trade shows and exhibitions; arranging and conducting trade show exhibitions in the field of electronic, computer and video games for the computer and video game industry.

Class 38: Telecommunications services.

Class 41: Entertainment services; video taping and filming services; film production.

Class 42: Design and development of computer hardware and software; computer programming services; provision of customised webpages containing user defined information, search engines and links to other websites.

The contested goods and services are the following:

Class 9: Computer software applications, downloadable; computer software (downloadable software); computer application software for mobile telephones, electronic tablets, portable multimedia readers and laptops; computer software, namely mobile applications for installing, configuring, displaying and operating virtual, augmented or superimposed reality software; virtual, augmented or superimposed reality software; computer software and hardware for providing interactive virtual, augmented or superimposed reality platforms.

Class 35: Advertising, marketing and promotional services; promotion and providing of events and information for commercial purposes relating to interactive entertainment and virtual, augmented or superimposed reality.

Class 38: Telecommunication services; telecommunications for reading audio and video content via a global computer network; multimedia internet services, namely broadcasting audio, visual and audiovisual material via a global computer network.

Class 41: Entertainment services, namely, arranging and conducting of events relating to the use and development of interactive entertainment software and hardware; videotaping; film production services.

Class 42: Providing of a website containing information relating to designing and developing virtual, augmented and superimposed reality software and hardware; computer programming; design and development of computer game hardware and software, virtual, augmented or superimposed reality software and hardware; computer services, namely, design and development of computer hardware, firmware, peripherals and software; information technology services, namely, computer software development in the field of mobile applications.

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

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested computer software applications, downloadable; computer software (downloadable software); computer application software for mobile telephones, electronic tablets, portable multimedia readers and laptops; computer software, namely mobile applications for installing, configuring, displaying and operating virtual, augmented or superimposed reality software; virtual, augmented or superimposed reality software; computer software for providing interactive virtual, augmented or superimposed reality platforms are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

The contested computer hardware for providing interactive virtual, augmented or superimposed reality platforms is included in the broad category of the opponent’s computer hardware. Therefore, it is identical.

Contested services in Class 35

The contested advertising and promotional services are identically contained in the opponent’s list of services.

The contested marketing services are intended to promote other companies’ goods/services and are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested promotion of events and information for commercial purposes relating to interactive entertainment and virtual, augmented or superimposed reality are included in the broad category of the opponent’s promotional services. Therefore, they are identical.

The contested providing of events and information for commercial purposes relating to interactive entertainment and virtual, augmented or superimposed reality and the opponent’s arranging and conducting of trade shows and exhibitions; arranging and conducting trade show exhibitions in the field of electronic, computer and video games for the computer and video game industry all consist of the arrangement of events, presentations, exhibitions or trade fairs to facilitate or encourage the promotion and sale of the client’s goods and services. These services are normally provided by the same specialised companies, have the same nature and purpose (arrangement and organisation of events for commercial and advertising purposes) and coincide in their distribution channels and relevant public. Therefore, they are at least highly similar.

Contested services in Class 38

The contested telecommunication services are identically contained in the opponent’s list of services.

The contested telecommunications for reading audio and video content via a global computer network; multimedia internet services, namely broadcasting audio, visual and audiovisual material via a global computer network are included in the broad category of the opponent’s telecommunications services. Therefore, they are identical.

Contested services in Class 41

The contested entertainment services, namely, arranging and conducting of events relating to the use and development of interactive entertainment software and hardware are included in the broad category of the opponent’s entertainment services. Therefore, they are identical.

The contested videotaping; film production services are identically contained in the opponent’s list of services (including synonyms).

Contested services in Class 42

The contested providing of a website containing information relating to designing and developing virtual, augmented and superimposed reality software and hardware is included in the broad category of, or overlaps with, the opponent’s provision of customised webpages containing user defined information, search engines and links to other websites. Therefore, they are identical.

The contested computer programming is identically contained in the opponent’s list of services (despite slightly different wording).

The contested design and development of computer game hardware and software, virtual, augmented or superimposed reality software and hardware; computer services, namely, design and development of computer hardware, firmware, peripherals and software; information technology services, namely, computer software development in the field of mobile applications are identically contained in, are included in the broad categories of, or overlap with, the opponent’s design and development of computer hardware and software. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or at least highly similar are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise.

The degree of attention varies between average and high (e.g. for some of the advertising and business-related services in Class 35), depending on the price, specialised nature or terms and conditions of the goods and services purchased.

c) The signs

	SKY BOY
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 figurative mark which consists of the word ‘SKY’ in a stylised form.

The contested sign is a word mark, consisting of the verbal elements ‘SKY BOY’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The earlier mark’s verbal element, ‘SKY’, will be perceived 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’, ‘outer space, as seen from the earth’ (information extracted from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/sky on 10/06/2019). This word has no connection to any of the goods or services at issue and is of normal distinctiveness.

As regards the contested sign, the word ‘SKY’ will be perceived with the same meaning described above. The considerations of its distinctiveness are equally valid in relation to the contested sign and the contested goods and services.

The second word, ‘BOY’, will be perceived most likely as ‘a male child; lad; youth’. This verbal element has no clear connection to the relevant goods and services and is of average distinctiveness.

As a whole, the word combination ‘SKY BOY’ may be perceived by the relevant public as the mere combination of the meaningful elements ‘SKY’ and ‘BOY’ and/or as referring to the abstract notion of a boy coming from/living in the sky.

Visually, the signs coincide in the word ‘SKY’, which is the sole verbal element of the earlier mark and is included as an independent element at the beginning of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The marks differ in the additional second word, ‘BOY’ in the contested sign. They differ also in the stylisation of the verbal element of the earlier mark, which is decorative and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.

Therefore, considering that the sole and distinctive verbal element of the earlier mark retains an independent and distinctive role at the initial part of the contested sign, it is considered that the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘SKY’, which constitutes the earlier mark’s only verbal element and is present at the beginning of the contested sign, and which will be pronounced in one syllable. The pronunciation differs in the sound of the word ‘BOY’ at second position in the contested sign, which has no counterpart in the earlier mark and will also be pronounced in a single syllable.

Therefore, considering the normal distinctiveness of the coinciding component ‘SKY’ and the fact that it is placed in the part of the contested sign that first catches the attention of the consumer - its beginning - the marks are aurally similar to an average 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 due to the coinciding word ‘SKY’. The marks differ in the additional concept conveyed by the contested sign, that of the word ‘BOY’.

Regardless of how the expression ‘SKY BOY’ is perceived and interpreted, the public will be aware of the semantic content of the word ‘SKY’ at the beginning of the contested sign since, in any case, both components of the mark keep their individual meanings. This word is inherently distinctive in relation to the goods and services at issue and, therefore, this coincidence generates an average degree of conceptual similarity between the marks.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services under comparison are identical or at least highly similar and are directed at the public at large and at business customers, whose degree of attention will vary from average to high. The earlier mark has an average degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to an average degree for the relevant public on account of the coinciding verbal element ‘SKY’, which constitutes the earlier mark’s only verbal element and is fully included as an independent element at the beginning of the contested sign. The marks differ in the additional second word, ‘BOY’, of the contested sign, which will not go unnoticed by consumers, and in the stylisation of the earlier mark’s verbal element.

Nevertheless, given the reproduction of the distinctive and initial element ‘SKY’ in the contested sign, it is likely that, even if the relevant public displays a higher level of attention in relation to some of the goods or services, it will at least associate the contested sign with the earlier mark.

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

In the present case, even highly attentive consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark, considering that it will be applied to goods and services that are identical or at least highly similar to those protected by the earlier trade mark. In other words, consumers may confuse the origins of the goods and services at issue, assuming that they come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element, ‘SKY’, and that, for identical and highly similar goods and services, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 534 440. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the abovementioned earlier mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Likewise, 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 Article 8(5) EUTMR.

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

Catherine MEDINA

Boyana NAYDENOVA

Angela DI BLASIO

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.