COMMSKY | Decision 2723446
Date Published: Sep 28, 2017
OPPOSITION No B 2 723 446
Sky plc, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent), represented by Olswang LLP, 90 High Holborn, London WC1V 6XX, United Kingdom (professional representative)
a g a i n s t
CommSky Technologies (Hangzhou) Company Limited, Room 601-602, Unit 2, Building 2 Jiangnan Xingzuo, No. 529 Chunxiao Road, Binjiang District, Hangzhou, People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).
On 26/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 723 446 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 045 727 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 15 045 727. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604. In relation to this earlier right, the opponent invoked Article 8(1)(b) and 8(5) EUTMR. In addition, in relation to other earlier rights, the opponent invoked Article 8(1)(b), 8(4) and 8(5) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 2 500 604.
- The goods and services
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 goods and services on which the opposition is based are, inter alia, the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision) and teaching 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; televisions; LCD and plasma screens; home cinema systems; amplifiers; speakers; radios; wireless audio and/or audio visual devices; portable wireless audio and/or audio visual devices; remote controls; games controllers; wireless gaming controllers; wireless keypads; 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; set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings; satellite dishes; low noise blocks; satellite meters; computer software to enable searching of data; encoded programs for computers and for data processing and telecommunications; telephones; mobile telephones; PDAs; telephone and radio modems; 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 and radio programmes; recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs; video recordings; multimedia apparatus and instruments; portable or hand-held computers; DVD players; computers; computer hardware; computer hardware, apparatus and instruments all for transmitting, displaying, receiving, storing and searching electronic information; computer programs; electronic computer games; electronic interactive computer games; computer software; computer software and telecommunications apparatus to enable connection to databases and the Internet; computer software supplied from the Internet; network termination equipment; wired and/or wireless computer network routers, modems, firewalls and/or bridges; 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 and computer quiz software; computer video games and/or quizzes adapted for use with television receivers and screens or with video monitors or with computer screens; computer programs for interactive television and for interactive games and/or quizzes; electronic apparatus adapted for use with television receivers in playing games; games consoles; interactive video game devices comprised of computer hardware and software and accessories, namely game consoles, game controllers and software for operating game controllers; portable and/or hand-held electronic devices for interactive computer and video games; portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code; electronic publications; computer games; computer video games; video screens; video projectors; tapes, discs and wires, all being magnetic; cassettes and cartridges, all adapted for use with the aforesaid tapes; blank and pre-recorded audio and video cassettes, tapes and cartridges; compact discs; DVD discs; phonographic records; laser readable discs for recording sound or video; ROM cartridges, CD Roms, cards and discs, integrated circuit cards, memory carriers, recording media, all pre-recorded with computer video games and/or quizzes; encoded cards; radio and television signal antennae; music, sounds, videos, images, text and information provided by a telecommunications network, by on-line delivery and by way of the Internet and/or the world-wide web or other communications network; interactive sound and/or audio recordings; music, video, sound and/or audio recordings (downloadable) provided from MP3 Internet websites; MP3 players, MP3 readers; audio and/or video file recorders and/or players; portable audio and/or video file recorders and/or players; telephone ring tones (downloadable); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus and instruments for the reception of radio and television broadcasts including the reception of cable, satellite and digital broadcasts; smart cards; credit cards; loyalty cards; acoustic apparatus or instruments; adaptors; aerials; antennae; amplifiers; amusement apparatus and instruments adapted for use with an external display screen or monitor; communication apparatus and instruments; encoded or magnetic banking or credit cards; cinematographic film; cinematographic instruments and apparatus; data carriers; apparatus for data storage; 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 telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; film reproducing instruments and apparatus; hand held 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; hand held electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; interactive educational or entertainment games for use with television receivers and video apparatus; mobile telephones; motion pictures; telephone apparatus and equipment; parts and fittings for all the aforesaid goods; sunglasses, leather cases for holding mobile phones; e-sell through products, namely downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service; cases, containers, protective coverings and parts and fittings therefore, all for use with MP3 players, music storage devices, media storage devices and other consumer electronic devices; electrical, electronic and computer equipment for machinery for use in conservation, generation and efficient use of heat, light and water, including thermostatic controls, solar panels for electricity generation, photovoltaic devices, solar cells and motion detectors; electrical, electronic and computer equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; control and monitoring equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; electronic publications [downloadable), including electronic publications, magazines and newsletters regarding environmental protection, energy conservation and ecology, animal welfare and renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; apparatus and instruments for closed circuit television and surveillance systems; apparatus and instruments for personal security monitoring; apparatus and instruments for home security monitoring and control; home and personal security apparatus; home and personal security devices; home and personal security alarms; electronic protection equipment, including fire detecting and alarm equipment, intruder and burglar alarm equipment and motion detecting equipment; radio, telephonic, television and signalling apparatus and instruments, cameras, sound and video monitoring and recording and sound and video reproducing apparatus and instruments, all for control and telemetry purposes for the home and personal security; closed-circuit television systems (CCTV); monitors; cameras; optical lenses; camera casings; prepackaged cameras; videocassette recorders (VCRs); system controlling software; video monitoring apparatus; detectors; access control apparatus; readers; magnetic or encoded access control cards; monitoring apparatus; electronic panels for alarm management and monitoring; alarm panels; glass breakage detectors; smoke detectors; carbon monoxide detectors; digital audio recorders; digital video recorders; digital audio servers; digital video servers; electrical communication equipment; message programming equipment; radio paging equipment; electronic locking systems; life-saving apparatus and equipment; electric alarms; electronic devices for opening doors; electronic devices for protection; intruder alarms and anti-theft equipment; intruder detection apparatus; motion detecting equipment; electronic control apparatus; electronic apparatus for controlling operation of machines; remote apparatus for controlling operation of machines; computer apparatus for controlling operation of machines; electronic network equipment; electronic communication equipment; message programming devices; electronic locking apparatus; parts and fittings for all the aforesaid goods.
Class 38: Telecommunications services.
Class 42: Design and development of computer hardware and software; 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; weather forecasting; maintenance and repair of interactive video game devices comprised of computer software and accessories, namely 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; monitoring and analysis of call information; 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; weather forecasting; providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, ecology and animal welfare as well as conducting research and drawing up expert reports in the aforementioned fields; research and development of durable use of nature and the environment; technical and legal 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; consultancy, information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.
The contested goods and services are the following:
Class 9: Batteries and battery chargers; burglar alarms; communication hubs; computer chips; computer software development tools; computer software for encryption; computer software for pulmonary, cardiovascular and edema analysis for use in small animal research studies; computer graphics software; computer operating software; computer search engine software; electric switches; electronic device for monitoring and optimizing photovoltaic arrays; electronic devices, namely, energy meters for tracking and monitoring energy usage; electronic devices, namely, energy submeters for tracking and monitoring energy usage; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring energy usage; integrated circuits; measuring apparatus, namely, bevels; measuring apparatus, namely, clamp meters for measuring electricity; measuring apparatus, namely, laser distance meters; mouse mats; mouse pads; printer cables; printer hubs; remote control transmitter for radio-controlled devices; semiconductor chips; semiconductor devices; switches, electric; telephone wires; transmitter and receiver used to locate lost pets; transmitters of electronic signals; wireless transmitters and receivers; aeronautical radio communication machines and apparatus; air traffic control radio equipment; air traffic control radio equipment; apparatus for transmission of communication; asbestos gloves for protection against accidents; blank magnetic data carriers; blank optical data carriers; broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications; chip carriers, namely, semiconductor chip housings; clothing for protection against accidents; clothing for protection against accidents, irradiation and fire; computer keyboards; computer mouse, namely, touch pads; computer hardware and software system for remotely monitoring environmental conditions and controlling devices within a building, facility, grounds, or designated spatial area; computer network adapters, switches, routers and hubs; computer network hubs, switches and routers; data carriers containing stored typographic typefaces; digital signage display panels; downloadable electronic data files and databases, namely, business and tax forms, for use with computer software; electrical radio connectors; electricity router for managing and optimizing energy loads within a building; electronic equipment for point-of-sales (POS) systems, namely, point-of-sale terminals, bar code readers, optical readers, advertisement display monitors, keyboards, printers, scanners, radio transmitters, radio receivers, computer hardware, and computer operating software; electronic transmitters for jamming signals; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring energy usage; electrophoretic displays; gateway routers in the nature of computer control hardware; gloves for protection against accidents; industrial processed control software for generating computer readable markings for application to board lumber; LCD large-screen displays; microphones for communication devices; near field communication (NFC) tags; nets for protection against accidents; network routers; portable electronic devices for monitoring and analyzing ball movement in sports; pressure transmitters; radio transmitters; radio transmitters and receivers; reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communications; reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communications; recording and playing devices for sound and image carriers; reflective mirrors to prevent accidents; remote control transmitter for radio-controlled devices; shoes for protection against accidents and fire; shoes for protection against accidents, irradiation and fire; television transmitters; voice display monitors; wide area network (WAN) routers; wireless transmitters and receivers; wrist rests for computer mouse users.
Class 38: Cellular telephone communication; communication by electronic computer terminals; communications by computer terminals; e-mail forwarding services; electronic transmission of mail and messages; information about telecommunication; news agencies, namely, the transmission of news items to news reporting organizations; news agency services for electronic transmission; providing internet chat rooms; radio broadcasting; rental of telephones; telephone communication services; telephone services and teletext services; transmission of sound, picture and data signals; voicemail services; communications by television for meeting; data communication by electronic mail; internet access provider services; internet cafe services, namely, providing telecommunications connections to the internet in a cafe environment; mobile telephone communication; mobile telephone services; providing telecommunication connections to the internet or databases; providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works; providing telecommunications connections to a global computer network; providing telecommunications connections to the internet or databases; providing access to the internet; providing an on-line forum for companies to showcase, display, demonstrate and promote new and innovative ideas, products and services in the convention or meeting management arena; providing an on-line forum for trading virtual real estate; providing electronic telecommunication connections; providing internet access; providing on-line forums for transmission of messages among computer users; provision of online forums for users for the sharing and transmission of information and electronic media concerning environmental matters; sound and picture transmission via satellite; transmission of electronic mail; transmission of greeting cards online.
Class 42: Computer programming; computer programming and maintenance of computer programs; computer programming and rental of computer programs; computer programming and software design; computer programming consultancy; computer programming for others; computer programming services; computer software consultancy; computer software rental; computer system design services; computer software development and computer programming development for others; consultancy in the design and development of computer hardware; design of interior decor; graphic arts designing; industrial design; industrial design services; mapping services; material testing; authenticating works of art; programming of computer software for others; quality control for others; rental of computer software; technical advice relating to operation of computers; technical research in the field of aeronautics; technical research in the field of pharmaceutical studies; technical research in the field of pharmaceutical studies; technical writing; updating of computer software; calibration; cartography and mapping; cartography and mapping services featuring geophysical maps; engineering services for building and property condition assessment; genetic mapping for scientific purposes; water quality control services.
An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of these goods.
The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods/services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples.
On the other hand, the term ‘namely’, used in the opponent’s and in the applicant’s lists of goods and services to show the relationship of individual goods/services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
Contested goods in Class 9
The contested batteries and battery chargers; electric switches; integrated circuits; semiconductor chips; semiconductor devices; switches, electric; chip carriers, namely, semiconductor chip housings; computer network adapters and switches; computer network switches; electrical radio connectors; electricity router for managing and optimizing energy loads within a building are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; parts and fittings for all the aforesaid goods. Therefore, they are considered identical.
The contested burglar alarms are included in the broad category of the opponent’s intruder and burglar alarm equipment and motion detecting equipment. Therefore, they are considered identical.
The contested communication hubs; printer hubs; printer cables; remote control transmitter for radio-controlled devices (repeated twice in the applicant’s list); broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications; computer network routers and hubs; computer network hubs and routers; digital signage display panels; electronic equipment for point-of-sales (POS) systems, namely, point-of-sale terminals, bar code readers, optical readers, advertisement display monitors, keyboards, printers, scanners, radio transmitters, radio receivers, computer hardware, and computer operating software; electronic transmitters for jamming signals; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring energy usage; electrophoretic displays; LCD large-screen displays; microphones for communication devices; near field communication (NFC) tags; network routers; portable electronic devices for monitoring and analyzing ball movement in sports; recording and playing devices for sound and image carriers; television transmitters; voice display monitors; wide area network (WAN) routers; wireless transmitters and receivers are included in, or overlap to a considerable extent with, the broad categories of the opponent’s apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content; electronic communications and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus. Therefore, they are considered identical.
The contested computer chips; gateway routers in the nature of computer control hardware; reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communications; reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communications are included in the broad category of the opponent’s computer hardware. Therefore, they are considered identical.
The contested computer software for encryption; computer software for pulmonary, cardiovascular and edema analysis for use in small animal research studies; computer software development tools; computer graphics software; computer operating software; computer search engine software; industrial processed control software for generating computer readable markings for application to board lumber are included in the broad category of the opponent’s computer software. Therefore, they are considered identical.
The contested measuring apparatus, namely, bevels; measuring apparatus, namely, clamp meters for measuring electricity; measuring apparatus, namely, laser distance meters; electronic device for monitoring and optimizing photovoltaic arrays; electronic devices, namely, energy meters for tracking and monitoring energy usage; electronic devices, namely, energy submeters for tracking and monitoring energy usage; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring energy usage; transmitter and receiver used to locate lost pets; transmitters of electronic signals; wireless transmitters and receivers; aeronautical radio communication machines and apparatus; air traffic control radio equipment; air traffic control radio equipment; apparatus for transmission of communication; pressure transmitters; radio transmitters; radio transmitters and receivers are all included in, or at least overlap to a considerable extent with, the broad categories of the opponent’s scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision) and teaching apparatus and instruments; life-saving apparatus and equipment and electronic communications and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus. Therefore, they are considered identical.
The contested blank magnetic data carriers; blank optical data carriers; data carriers containing stored typographic typefaces are included in the broad category of the opponent’s data carriers. Therefore, they are considered identical.
The contested computer hardware and software system for remotely monitoring environmental conditions and controlling devices within a building, facility, grounds, or designated spatial area are included in the broad category of the opponent’s computer hardware and computer software. Therefore, they are considered identical.
The contested clothing for protection against accidents; clothing for protection against accidents, irradiation and fire; asbestos gloves for protection against accidents; gloves for protection against accidents; nets for protection against accidents; reflective mirrors to prevent accidents; shoes for protection against accidents and fire; shoes for protection against accidents, irradiation and fire are included in, or at least overlap with, the opponent’s broad category of life-saving apparatus and equipment. Therefore, they are considered identical.
The contested downloadable electronic data files and databases, namely, business and tax forms, for use with computer software cannot be clearly separated from the opponent’s electronic publications [downloadable). These goods overlap and are, therefore, considered identical.
The contested telephone wires cannot be clearly separated from the opponent’s wires, all being magnetic. Therefore, as these goods overlap, they are considered identical.
The contested mouse mats; mouse pads; computer mouse, namely, touch pads; computer keyboards; wrist rests for computer mouse users consist of computer peripheral devices and they are, at least, similar to the opponent’s computers; electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; parts and fittings for all the aforesaid goods. These sets of goods coincide partly in their nature and purpose. Furthermore, they are often manufactured by the same undertakings, sold through the same channels and they target the same consumers.
Contested services in Class 38
The contested cellular telephone communication; communication by electronic computer terminals; communications by computer terminals; e-mail forwarding services; electronic transmission of mail and messages; information about telecommunication; news agencies, namely, the transmission of news items to news reporting organizations; news agency services for electronic transmission; providing internet chat rooms; radio broadcasting; rental of telephones; telephone communication services; telephone services and teletext services; transmission of sound, picture and data signals; voicemail services; communications by television for meeting; data communication by electronic mail; internet access provider services; internet cafe services, namely, providing telecommunications connections to the internet in a cafe environment; mobile telephone communication; mobile telephone services; providing telecommunication connections to the internet or databases; providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works; providing telecommunications connections to a global computer network; providing telecommunications connections to the internet or databases; providing access to the internet; providing an on-line forum for companies to showcase, display, demonstrate and promote new and innovative ideas, products and services in the convention or meeting management arena; providing an on-line forum for trading virtual real estate; providing electronic telecommunication connections; providing internet access; providing on-line forums for transmission of messages among computer users; provision of online forums for users for the sharing and transmission of information and electronic media concerning environmental matters; sound and picture transmission via satellite; transmission of electronic mail; transmission of greeting cards online are included in the broad category of the opponent’s telecommunications services. Therefore, they are considered identical.
Contested services in Class 42
The contested computer programming; computer programming and maintenance of computer programs; computer programming and rental of computer programs; computer programming and software design; computer programming consultancy; computer programming for others; computer programming services; computer software consultancy; computer software rental; computer system design services; computer software development and computer programming development for others; consultancy in the design and development of computer hardware; programming of computer software for others; rental of computer software; technical advice relating to operation of computers; updating of computer software are identically covered by the list of services of the opponent’s earlier right in Class 42 (including synonyms).
The contested design of interior decor; graphic arts designing; industrial design; industrial design services are included in the broad category of the opponent’s design services. Therefore, they are considered identical.
The contested mapping services; material testing; quality control for others; technical research in the field of aeronautics; technical research in the field of pharmaceutical studies; technical research in the field of pharmaceutical studies; technical writing; calibration; authenticating works of art; cartography and mapping; cartography and mapping services featuring geophysical maps; engineering services for building and property condition assessment; genetic mapping for scientific purposes; water quality control services consist of a variety of technical services, such as testing, authentication and quality control services, surveying and exploration services, specialised technical research and scientific services. They promote the research and development of technologies and resources in the scientific, technological and/or industrial fields. These activities are aimed at the acquisition of new knowledge with the objective of using it for developing new products, processes or services or for bringing about a significant improvement in existing products, processes or services.
Therefore, they have relevant links with the opponent’s design services; design and development of computer hardware and software; providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, ecology and animal welfare as well as conducting research and drawing up expert reports in the aforementioned fields; research and development of durable use of nature and the environment; technical assistance concerning environmental protection, energy conservation and alternative energy sources 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; consultancy, information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet in Class 42.
These services partly coincide in their technological nature since, for instance, the opponent’s design services or design and development of computer hardware and software may be specifically applied to numerous fields of application and market sectors (such as the ones in which the contested services are rendered). Therefore, these services may be offered by the same companies and together as part of a broader package of services ordered by the same customer. The same service provider may conduct technical research and, based on this, the provider may design and develop computer hardware and software for the customers’ needs. The services may, therefore, be provided to the same customer. Consequently, they are considered similar.
- 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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s level of attention will vary from average to high, depending on the price and frequency of purchase of these goods and services.
- The signs
SKY | |
Earlier trade mark | Contested sign |
The relevant territory is the United Kingdom.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier sign is a word mark, consisting of the verbal element ‘SKY’. In the case of word marks it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters.
The contested sign is a figurative mark, consisting of the verbal element ‘CommSky’ written in relatively standard blue letters. The initial letter ‘C’ and the fifth letter ‘S’ are written in upper case, whereas the remaining letters of the sign are in lower case lettering.
It must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does 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).
Therefore, the Opposition Division considers that the English-speaking public in question will be able to instantly identify the two words composing the contested sign ‘CommSky’ as ‘Comm’ and ‘Sky’, essentially because they are both words known to them and do not form a conceptual unit that would be any different from their mere sum. Furthermore, the way in which they are portrayed (each word in title case) further reinforces this conclusion.
The word ‘SKY’, contained in both signs, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/sky). This word is neither descriptive nor lacking distinctiveness for any of the relevant goods and services in Classes 9, 38 and 42. It does not describe or even allude to any of their essential characteristics.
As for the contested sign, in the context of the relevant goods and services, the element ‘Comm’ is likely to be understood as, inter alia, ‘an abbreviation of the word communication’ (Oxford English Dictionary online, at https://en.oxforddictionaries.com/definition/comm). Therefore, this word is non-distinctive for all the relevant goods and services which may be used to communicate or are closely related to market of telecommunications and IT goods and services. In relation to the remaining goods and services, for which the term is not directly descriptive, it is still an element of a weaker than average distinctiveness, as the public will perceive it as an indication that the relevant goods and services originate from an IT company and/or have some sort of technological or telecommunications compatibility or feature.
It follows that the word ‘SKY’ is the most distinctive element in the contested sign.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced and plays an independent and distinctive role in the contested sign. The signs differ in the figurative component of the contested sign (which consists of the slight stylisation of its verbal elements) and in the initial term ‘Comm’, present therein, which is either non-distinctive or a weak, depending on the goods and services at issue, as explained above.
It must 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Consequently, the public will pay little attention to the stylisation of the contested sign and will focus on its verbal elements ‘CommSky’, as it will instantly perceive them as the badge of origin of the respective goods and services.
Therefore, considering the coincidence in the normally distinctive and independent element ‘SKY’ and the weak/non-distinctive character of the differing component ‘Comm’, the marks are visually similar to a high degree.
Aurally, the pronunciation of the marks coincides in the sound of the word ‘SKY’, which constitutes the earlier mark and plays an independent and distinctive role within the contested sign. The signs differ in the sound of the initial word ‘Comm’ of the contested sign, which is however non-distinctive or weak for all the relevant goods and services. Considering the coincidence in the distinctive element ‘SKY’, the signs are aurally similar to a high degree.
Conceptually, the public in the relevant territory will perceive the elements contained in the marks according to the meanings provided above. As explained, the conjoined element of the contested sign has no clear or univocal sense as a whole and the public will perceive clearly the words of which this conjoined element is composed, ‘Comm’ and ‘Sky’.
Therefore, the marks are conceptually similar to a high degree, as they share the concept of ‘sky’, which is inherently distinctive in relation to all the goods and services at issue, whereas the different component, ‘Comm’, is weak or non-distinctive.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 in relation to any of the 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.
- Global assessment, other arguments and conclusion
The contested goods and services are identical or similar to the goods and services covered by earlier United Kingdom trade mark registration No 2 500 604. The relevant public’s level of attention will vary from average to high.
The signs under comparison are visually, aurally and conceptually similar to a high degree on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included and clearly perceptible in the contested sign. The signs differ in the initial element ‘Comm’ and in the slight stylisation of the contested sign.
As mentioned above in section c), where a trade mark is composed of verbal and figurative elements, the verbal elements usually have a stronger impact on the consumer than the figurative components. This is justified by the fact that consumers will more easily retain in their memory and refer to the sign in question by its name, rather than by describing the figurative elements of the trade mark in question.
Therefore, the overall arrangement of the contested sign and its minimal stylisation will be perceived as ordinary graphic means intended to bring the verbal elements in question, ‘CommSky’, to the attention of the public. Consequently, consumers will pay more attention to these verbal elements, as they will attach more trade mark significance to them.
Furthermore, as explained above, the public will immediately perceive the word ‘SKY’, which is distinctive to an average degree in relation to all the relevant goods and services, as an independent element in the contested sign, whereas the differing initial component, ‘Comm’, is either non-distinctive or weak for the relevant goods and services.
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, in the present case, consumers may legitimately believe that the contested sign is a new stylised brand line of goods and services, originating from the same undertaking as the opponent’s ‘SKY’ mark, such as a line of goods and services specialised or adapted to the sector of telecommunications and IT solutions.
Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarity resulting from their coinciding element, ‘SKY’, and that, for identical or similar goods and services, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration. 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 earlier United Kingdom trade mark registration No 2 500 604 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and 8(5) EUTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Patricia LOPEZ FERNANDEZ DE CORRES | Gueorgui IVANOV | Liliya YORDANOVA |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.