OPPOSITION No B 3 042 044

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

a g a i n s t

Skyclear SA, 29 Boulevard de la Grande Duchesse Charlotte, L1331 Luxembourg, Luxembourg (applicant).

On 28/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 042 044 is upheld for all the contested services, namely:

Class 42: Design and development of software for website development; hosting of interactive applications; on-line computer services; design and construction of homepages and websites; programming of software for internet platforms; information services relating to the application of computer networks; creating and maintaining websites; website design consultancy; IT project management; design and development of systems for data input, output, processing, display and storage; installing web pages on the internet for others; website hosting services; development services relating to computer software application solutions; computer programming for the internet; creating electronically stored web pages for online services and the internet; providing information about the design and development of computer software, systems and networks; hosting of e-commerce platforms on the internet; providing temporary use of non-downloadable software applications accessible via a web site; installation and customisation of computer applications software; design of computer programs and software relating to aircraft; website development for others; development of systems for the processing of data; website design services; advice and consultancy in relation to computer networking applications; design of internet pages; IT consultancy, advisory and information services; IT security, protection and restoration; development of software solutions for internet providers and internet users; hosting online web facilities for others for sharing online content; hosting of computerized data, files, applications and information; design and development of homepages and websites; programming of software for information platforms on the internet; compilation of web pages for the internet; planning, design, development and maintenance of online websites for third parties; website development services; computer website design; hosting an online website for creating and hosting micro websites for businesses; consultancy relating to the creation and design of websites; information services relating to the application of computer systems; consultancy relating to the creation and design of websites for e-commerce; hosting platforms on the internet; constructing an internet platform for electronic commerce; design, creation and programming of web pages; hosting of digital content on the internet; preparation of computer programs for data processing; design and development of electronic database software; website design; creating and designing website-based indexes of information for others [information technology services]; creation of computing platforms for third parties; design of homepages and websites; design and development of data processing systems; development of computer software application solutions; engineering services for applications on large and medium-sized computer systems; software development, programming and implementation; application service provider (ASP) services, namely, hosting computer software applications of others; hosting services and software as a service and rental of software; design and development of internet security programs; creating websites; computer system design and development; hosting of platforms on the internet; development of systems for the storage of data; providing temporary use of web-based applications.

2. European Union trade mark application No 17 431 305 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS

The opponent initially filed an opposition against all the services of European Union trade mark application No 17 431 305 for the figurative mark . However, in its observations of 20/06/2018 the opponent limited the scope of the opposition, explicitly indicating that the opposition is directed against the services in Class 42 only and that the opposition against Class 39 has been withdrawn.

The opposition is based on, inter alia, United Kingdom trade mark registration No 3 188 194 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 non-registered signs used in the course of trade and a well-know 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 3 188 194.

a) The services

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

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; Analysis for oil-field exploitation; Architectural consultation; Architecture; Authenticating works of art; Bacteriological research; Biological research; Calibration [measuring]; Chemical analysis; Chemical research; Chemistry services; Clinical trials; Cloud seeding; Computer programming; Computer rental; Computer software consultancy; Computer software design; Computer system analysis; Computer system design; Computer virus protection services; Construction drafting; Consultancy in the design and development of computer hardware; Consultancy in the field of energy-saving; Conversion of data or documents from physical to electronic media; Cosmetic research; Creating and maintaining web sites for others; Data conversion of computer programs and data [not physical conversion]; Design of interior decor; Digitization of documents [scanning]; Dress designing; Duplication of computer programs; Energy auditing; Engineering; Geological prospecting; Geological research; Geological surveys; Graphic arts design; Handwriting analysis [graphology]; Hosting computer sites [web sites]; Industrial design; Information technology [IT] consulting services; Installation of computer software; Land surveys; Maintenance of computer software; Material testing; Mechanical research; Monitoring of computer systems by remote access; Oil-field surveys; Oil prospecting; Oil-well testing; Packaging design; Physics [research]; Providing search engines for the internet; Provision of scientific information, advice and consultancy in relation to carbon offsetting; Quality control; Quality evaluation of wool; Quality valuation of standing timber; Recovery of computer data; Rental of computer software; Rental of web servers; Research and development of new products for others; Research in the field of environmental protection; Scientific laboratory services; Scientific research; Server hosting; Software as a service [SaaS]; Styling [industrial design]; Surveying; Technical project studies; Technical research; Textile testing; Underwater exploration; Updating of computer software; Urban planning; Vehicle roadworthiness testing; Water analysis; Weather forecasting; Web site design consultancy; design and development of virtual reality software; Leasing and rental of computer and electronic equipment; Platform as a Service (Paas); Infrastructure as a service (Iaas); online storage of files, data, photographs, graphics, documents, videos, images, audio files, audio-visual files, visual files, computer files, computer applications and information for others, electronic data storage services for personal and business use, and services for the electronic storage and organization of files, images, music, audio, video, photos, drawings, audio-visual, text, documents and data; electronic storage services; data storage services (other than physical storage), computerised data storage services; electronic and online storage service; storage of computerised business information data; online technical storage facilities, online technical back-up services and online technical back-up facilities, software as a service [saas] services, and electronic hosting of files, data, photographs, graphics, documents, videos, images, audio files, audio-visual files, visual files, computer files, computer applications, information for others and video-conferencing services; computer services for accessing a communications or computer network; computer services relating to entertainment, education, retrieval of information and data via telephone, line, cable, wire or fibre, database or computer network; computer services for retrieving information, messages, text, sound, images and data via a computer network; computer services relating to radio and television programmes; computer services; design, drawing and commissioned writing all for the compilation of web pages on the Internet; hosting websites; creating and maintaining websites; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; maintenance and repair of software for operating game controllers; home computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services; computer services, namely the organisation of an infrastructure to enable television subscribers to access internet services via the television; advice relating to the development of computer systems; advisory services relating to computer based information systems; advisory services relating to computer hardware or software; design, installation, maintenance or updating of computer software; design of computer hardware; design services; designing electrical or electronic systems; design services for artwork for animated films; computer programming services; internet walled garden services; operation of search engines; rental or leasing of computer hardware or software; testing, research, assessing, consultancy, advising or providing information in relation to the foregoing; computer services for on-line shopping; computer services relating to the processing of orders and payments; providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, ecology as well as conducting research and drawing up expert reports in the aforementioned fields; research of durable use of nature and the environment; Development services for products, new technologies, activities and construction projects all relating to nature and the environment; technical assistance concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare and effecting such projects; development and testing for renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, and components therefor; effecting research projects concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare; provision of non-downloadable computer software for transmitting, receiving, synchronizing, displaying, backing-up, monitoring, controlling, sharing, coding, decoding, encrypting, accessing, remotely accessing, creating, collecting, storing, securing, removing, transferring, disseminating, locating, organizing or otherwise utilizing data, voice, multimedia, audio, visual, music, photographs, drawings, images, audiovisual, video, text, graphics or other data, including over a global communications network; application service provider services; technical advisory services including these services provided by a helpline relating to scientific and technological issues; provision of software updates electronically; weather forecasting online; weather forcasting; provision of online mapping; production of artwork for animated films; provision of customised webpages containing user defined information, search engines and links to other websites; online scanning, detecting, quarantining and eliminating of viruses, worms, trojans, spyware, malware and unauthorised data and programs on computers and electronic devices; online hosting services allowing users to publicise and share data online; online provision of information and general encyclopaedic knowledge relating to computer security, online security, environmental protection, energy conservation, ecology, alternative energy sources, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuel; provision of remote back-up services for computer data including services provided over a global communications network; anti-spamming services; brand design services; cloud computing and storage services; computer advisory services; computer software advisory services; computer and information technology consultancy services; computer firewall services; computer system analysis services; data encryption services; data recovery services; data security services; scientific development services; technical development services; technology development services; database development services; online internet security services; online security services relating to IT and data protection; environmental conservation services; environmental consultancy services; food development services; design and development of electronic greeeting cards; website hosting services, computer hosting services; server hosting services; , synchronization, of programs, data, files, e-mails, contacts, calendars, task lists, text messages, photos, music, audio, visual, audio visual, video, text, graphics, programs and other information via telecommunications and global communications networks; conversion of data and computer programs other than physical conversion; conversion of data and documents from a physical medium to an electronic medium; data conversion of electronic information; providing temporary use of non-downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, or otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content, and information via the Internet and other communications networks; providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; computer services featuring streaming software to enable hosting, recording, transmitting and broadcasting of audio, visual , audio visual media and any other performances live or recorded, in real time or otherwise; consultancy, information and advisory services relating to all the aforesaid services; Design of virtual reality software; Development of virtual reality software; provision of a website that contains information about building and developing virtual reality software and hardware; Providing non-downloadable software to enable streaming of video, audio, multimedia, music, movies, games, and audio-visual material, and for hosting digital multimedia content for others via the internet and other computer and electronic communication networks; technical support services, namely, troubleshooting in the nature of diagnosing and repairing application software problems for mobile phones, personal computers, portable computers, TV and MP3 players; development, maintenance, and management of application software for mobile phones, personal computers, portable computers, TV and MP3 players; hosting of websites providing digital contents, music, movies and games; providing information concerning computer software via the internet and other computer and electronic communication networks; providing technical consulting services and technical troubleshooting support for computer software and for handheld mobile digital electronic devices and other consumer electronics; computer hardware and software consulting services; consulting services in relation to multimedia, music, movies, games and audio-visual software; technical support services and consultation services for developing computer systems and databases; information relating to computer hardware or software provided on-line from a global computer network or the Internet; development of web-sites featuring multimedia materials; hosting the web-sites of others; scientific and technological services and research and design relating to the installation of wireless telecommunications equipment, wireless boosters and wireless communication devices; consultancy, information and advisory services relating to all the aforesaid services; professional consultancy, information and advisory services relating to all the aforesaid services; consultancy, information and advisory services relating to all the aforesaid services provided on-line from a computer database or via a helpline or the Internet.

The contested services are the following:

Class 42: Design and development of software for website development; hosting of interactive applications; on-line computer services; design and construction of homepages and websites; programming of software for internet platforms; information services relating to the application of computer networks; creating and maintaining websites; website design consultancy; IT project management; design and development of systems for data input, output, processing, display and storage; installing web pages on the internet for others; website hosting services; development services relating to computer software application solutions; computer programming for the internet; creating electronically stored web pages for online services and the internet; providing information about the design and development of computer software, systems and networks; hosting of e-commerce platforms on the internet; providing temporary use of non-downloadable software applications accessible via a web site; installation and customisation of computer applications software; design of computer programs and software relating to aircraft; website development for others; development of systems for the processing of data; website design services; advice and consultancy in relation to computer networking applications; design of internet pages; IT consultancy, advisory and information services; IT security, protection and restoration; development of software solutions for internet providers and internet users; hosting online web facilities for others for sharing online content; hosting of computerized data, files, applications and information; design and development of homepages and websites; programming of software for information platforms on the internet; compilation of web pages for the internet; planning, design, development and maintenance of online websites for third parties; website development services; computer website design; hosting an online website for creating and hosting micro websites for businesses; consultancy relating to the creation and design of websites; information services relating to the application of computer systems; consultancy relating to the creation and design of websites for e-commerce; hosting platforms on the internet; constructing an internet platform for electronic commerce; design, creation and programming of web pages; hosting of digital content on the internet; preparation of computer programs for data processing; design and development of electronic database software; website design; creating and designing website-based indexes of information for others [information technology services]; creation of computing platforms for third parties; design of homepages and websites; design and development of data processing systems; development of computer software application solutions; engineering services for applications on large and medium-sized computer systems; software development, programming and implementation; application service provider (ASP) services, namely, hosting computer software applications of others; hosting services and software as a service and rental of software; design and development of internet security programs; creating websites; computer system design and development; hosting of platforms on the internet; development of systems for the storage of data; providing temporary use of web-based applications.

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

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and the opponent’s lists of 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 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.

The contested engineering services for applications on large and medium-sized computer systems are included in the broader category of the opponent’s engineering. Therefore, they are identical.

The contested design and development of software for website development; hosting of interactive applications; on-line computer services; design and construction of homepages and websites; programming of software for internet platforms; information services relating to the application of computer networks; creating and maintaining websites; website design consultancy; IT project management; design and development of systems for data input, output, processing, display and storage; installing web pages on the internet for others; website hosting services; development services relating to computer software application solutions; computer programming for the internet; creating electronically stored web pages for online services and the internet; providing information about the design and development of computer software, systems and networks; hosting of e-commerce platforms on the internet; providing temporary use of non-downloadable software applications accessible via a web site; installation and customisation of computer applications software; design of computer programs and software relating to aircraft; website development for others; development of systems for the processing of data; website design services; advice and consultancy in relation to computer networking applications; design of internet pages; IT consultancy, advisory and information services; IT security, protection and restoration; development of software solutions for internet providers and internet users; hosting online web facilities for others for sharing online content; hosting of computerized data, files, applications and information; design and development of homepages and websites; programming of software for information platforms on the internet; compilation of web pages for the internet; planning, design, development and maintenance of online websites for third parties; website development services; computer website design; hosting an online website for creating and hosting micro websites for businesses; consultancy relating to the creation and design of websites; information services relating to the application of computer systems; consultancy relating to the creation and design of websites for e-commerce; hosting platforms on the internet; constructing an internet platform for electronic commerce; design, creation and programming of web pages; hosting of digital content on the internet; preparation of computer programs for data processing; design and development of electronic database software; website design; creating and designing website-based indexes of information for others [information technology services]; creation of computing platforms for third parties; design of homepages and websites; design and development of data processing systems; development of computer software application solutions; software development, programming and implementation; application service provider (ASP) services, namely, hosting computer software applications of others; hosting services and software as a service and rental of software; design and development of internet security programs; creating websites; computer system design and development; hosting of platforms on the internet; development of systems for the storage of data; providing temporary use of web-based applications can all be grouped under the general category of IT services, dedicated to the study or use of computers, storage, networking and other physical devices, infrastructure and processes to create, process, store, secure and exchange all form of electronic data. The opponent’s computer services; information technology [IT] consulting services are IT services formulated very broadly and including various more specific IT services (such as design and development of computer hardware and software, software as a service [SaaS], hosting computer sites [web sites], etc.). Consequently, the services under comparison are of the same nature and target the same consumers; they are provided through the same distribution channels and are generally rendered by the same kind of undertakings (professionals in the IT field) that normally provide a full spectrum of information technology (IT) solutions tailored to the needs of their customers. Therefore, these services are at least highly similar.

In relation to the applicant’s arguments about the use of the trade marks at issue for IT services in different fields, it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58). Moreover, according to Article 47(2) EUTMR, actual use of the earlier mark need be shown if – and only if – the applicant requests proof of use. If the applicant does not request proof of use, the issue of genuine use will not be addressed by the Office ex officio. Therefore, when considering whether or not the contested EUTM application falls under any of the relative grounds for refusal, it is the applicant’s services as applied for and the opponent’s rights and their scope of protection as registered that are relevant.

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 services found to be identical or at least highly similar are directed at the public at large and at business customers with specific knowledge or expertise. Considering the specialised nature and application of some of the services, the degree of attention is considered to vary between average and higher than average.

c) The signs

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 contested sign depicts the verbal element ‘SKYCLEAR’, in which the letters ‘Y’ and ‘C are slightly stylised and the letter ‘Y’ is prolonged and finishes in a figurative device in the shape of an airplane. It should be noted that the depiction of the letter ‘Y’ together with a figurative element will not alter the public’s perception of this element as a letter, given that it is depicted as part of a word. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case.

The contested sign has no element that could be considered clearly more dominant (visually more eye-catching) than other elements.

It should be noted that the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

This verbal element ‘SKYCLEAR’ of the contested sign as a whole does not exist as a word in English. Therefore, taking into account the aforementioned principle, it is highly likely that the relevant English-speaking public will perceive the contested sign as a combination of the meaningful elements ‘SKY’ and ‘CLEAR’. The visual distinction between the letters in the sign (‘SKY’ depicted in white and ‘CLEAR’ depicted in light blue) further facilitates this perception.

The word ‘SKY’, which forms the verbal element of the earlier mark and the beginning of the contested sign’s verbal element, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (information extracted from Collins English Dictionary on 11/01/2019 at https://www.collinsdictionary.com/dictionary/english/sky). The inherent distinctiveness of this term is average in relation to the relevant services, as the word ‘SKY’ has no connection to any of their essential characteristics.

The second part of the contested sign, ‘CLEAR’, may be perceived by the relevant public as an adjective meaning, inter alia, ‘free from darkness or obscurity; bright’, ‘(of weather) free from dullness or clouds’, ‘transparent’, or as a noun meaning, inter alia, ‘a clear space’ (information extracted from Collins English Dictionary on 11/01/2019 at https://www.collinsdictionary.com/dictionary/english/clear). The element ‘CLEAR’ is of average distinctiveness in relation to the relevant services, as it has no connection with them or their essential characteristics.

As a whole, the word combination ‘SKYCLEAR’ will be perceived by the English-speaking part of the public as the combination of the meaningful elements ‘SKY’ and ‘CLEAR’. ‘SKYCLEAR’ is not a grammatically correct expression in English; nevertheless, it is likely to be perceived as having the same meaning as the grammatically correct structure ‘clear sky’ referring to a sky that is free from clouds, in which case the word ‘CLEAR’ is in the role of an adjective that qualifies the noun ‘SKY’.

In any event and notwithstanding the perception of the meaning of ‘SKYCLEAR’ as a conceptual unit, it is clear that the relevant English-speaking consumers will instantly recognise and perceive the words ‘SKY’ and ‘CLEAR’ of the contested sign according to their aforementioned meanings, because they are both words known to them.

The element ‘SKYCLEAR’ as a whole is of average distinctiveness in relation to the relevant services in Class 42.

The figurative element in the contested sign resembling an airplane is also of normal distinctiveness for the relevant services as it has no clear connection to any of their essential characteristics.

Nevertheless, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the word ‘SKY’, which is the sole element of the earlier mark and is fully included as an identifiable 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 conjoined element ‘CLEAR’ placed at the end of the verbal element of the contested sign, ‘SKYCLEAR’.

They also differ in the small figurative element in the contested sign and in its background, which, as seen above, will have a lesser impact on the consumer than the verbal elements, as well as in the stylisation of the verbal elements in both marks, which is not particularly striking.

Therefore, considering that the sole and distinctive element of the earlier mark, ‘SKY’, 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 syllable ‘SKY’, constituting the earlier mark’s verbal element and present at the beginning of the contested sign. The pronunciation differs in the sound of the letters ‘CLEAR’ in the contested sign, which have no counterpart in the earlier mark.

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

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

As explained, the conjoined element of the contested sign may be perceived as a reference to a sky which is clear (from clouds), in which the adjective ‘CLEAR’ only qualifies the noun ‘SKY’.

The contested sign also conveys the additional concept of an airplane, which, however, is depicted as a rather small element and is likely to be paid less attention in the mark than its verbal elements.

Therefore, the marks are conceptually similar to a higher than average degree, as they share the concept of ‘sky’, which is inherently distinctive in relation to all the 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 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 the 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case the services under comparison are identical or at least highly similar. The earlier mark has an average degree of inherent distinctiveness. The signs are similar visually, aurally and conceptually to the degrees explained above on account of the coinciding verbal element ‘SKY’, constituting the earlier mark’s only element and fully included, yet clearly perceptible, in the beginning of the contested sign. The marks differ in the additional word, ‘CLEAR’, of the contested sign, which will not go unnoticed by consumers, as well as the figurative features of the marks.

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, 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 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 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 or highly similar 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 3 188 194. It follows that the contested trade mark must be rejected for all the contested services.

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

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.