MOBILESKY | Decision 2736901

Date Published: Sep 25, 2017

OPPOSITION No B 2 736 901

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

a g a i n s t

Shenzhen Huihong Import and Export Co., Ltd., Rm 02A, 26/F, Block A Worldtrade Plaza, Fuhong Rd, Futian Dist., Shenzhen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 2 rue Saint Florentin, 75001 Paris, France (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 736 901 is upheld for all the contested goods.

2.        European Union trade mark application No 15 146 831 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 of European Union trade mark application No 15 146 831. 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.

1. 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 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; cleaning, bleaching and abrasive preparations and substances, all for laundry use; anti-perspirants; perfumes; non-medicated toilet preparations; cosmetic preparations; dentifrices; toilet articles; hair preparations; shampoos, soaps; essential oils; including all the aforesaid made from unbleached and/or organic and/or biodegradeable ingredients.

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 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (leatherwear) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrella covers, and wallets.

Class 35: Advertising and promotional services; business management; business administration; office functions; administration services for businesses; customer relationship management, namely a marketing and public relation service; organisation, operation and supervision of sales and promotional incentive schemes; provision of product information and advice to prospective purchasers of home entertainment equipment, multi-media apparatus and instruments, television and radio equipment, audio visual equipment, set top boxes, personal video recorders, video recorders, computer games software, hardware and peripheral devices; rental of advertising space; television advertising commercials; preparation and presentation of audio visual displays for advertising purposes; dissemination of advertising matter; arranging and conducting of trade shows and exhibitions; arranging and conducting trade show exhibitions in the field of electronic, computer and video games for the computer and video game industry; advertisement and promotion of television services; compilation of business statistics and commercial information; loyalty card services; marketing studies; marketing of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; monitoring and analysis of call information (office services); business planning, inspection, survey and appraisal services; receipt, storage and provision of computerised business information data; compilation of business statistics and commercial information, all relating to television, radio, satellite broadcasting and video games; magazine and newspaper subscriptions; the bringing together, for the benefit of others of a variety of goods namely beauty products, toiletries, personal care products, cosmetics, perfumery, candles, pharmaceutical and veterinary goods, machines for household use, building, home improvement and gardening goods, home decorating equipment, paints and varnishes, hand tools, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision), teaching apparatus and instruments, amusement machines, video screens, video projectors, computer and video games, computer software, computer hardware and peripheral devices, computer games hardware and peripheral devices, portable and/or hand-held devices or computers for playing electronic, computer or video games, computer or video games software, computer software for playing video games and computer games, games software, quiz software, games consoles, interactive video games devices comprised of computer hardware and software and accessories, portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code, Portable Wireless Audio Devices, virtual reality systems, home entertainment equipment, multi-media equipment, audio visual equipment, video and television equipment, set top boxes, personal video recorders, video recorders, television receivers, satellite reception equipment, satellite dishes, MP3 players and readers, blank and pre-recorded audio and video cassettes, tapes, cartridges and discs, pre-recorded music, CDs, DVDs, records, tapes and films, cameras, telephones, mobile telephones, accessories for mobile telephones, sunglasses, spectacles, contact lenses, agricultural and horticultural goods, musical instruments, medical equipment, domestic electrical and electronic equipment including white goods, jewellery, clocks, watches, stationery, printed publications, books, newspapers, magazines, comics, journals, quiz books, shopping guides listing products for purchase, television listings magazines, printed materials, diaries, organizers, greeting cards, gift wrap, writing paper, writing sets, stickers for collecting and collating in albums, leather goods, luggage, footwear, headgear, clothing and accessories, hair accessories, lighting, kitchenware, glassware, china, porcelain, ornaments, furniture, kitchens, sanitary ware, art, paintings, posters, postcards, prints, photographs, household containers and utensils, crockery, cutlery, furnishings, carpets, textiles, table linen, bed linen, haberdashery, sewing machines and equipment, toys, games and playthings, playing cards, sports equipment, fitness equipment, camping equipment, pets goods, food and drink, massage apparatus, massage chairs and massage cushions, foot spas, deck chairs, aromatherapy apparatus, saunas, hammocks, yoga equipment, pilates equipment, meditation equipment, water features, sound therapy software and recordings, motor vehicles and their parts, enabling customers to conveniently view and purchase those goods including via an Internet website, an interactive television shopping channel, a digital television shopping channel, an Internet walled garden or by means of interactive television and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media; customer information and consultancy services for promotional, advertising and marketing purposes in relation to broadcast reception apparatus and instruments and parts and fittings therefor including cable, satellite and terrestrial, analogue or digital reception; advertising and promotional services in relation to lifestyle, ecological and environmental issues; management and conducting of renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels and projects in connection with other renewable energy sources; collection and processing of operational experiences in connection with renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, including compilation of statistics relating to operation and production; the bringing together for the benefit of others, via an Internet website, an interactive television shopping channel, a digital television shopping channel, an Internet walled garden or by means of interactive television and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media, of a variety of retailers and advertising services, promotional services, business management services, business advisory services, administration services for businesses, accounting services, business administration services, business inspection, survey and appraisal services, brand creation services, business consultancy services, business data analysis services, business development services, business enquiry services, business evaluation services, business information agency services, business intelligence services, business management advisory services, business merger services, business planning services, business promotion services, business relocation services, business secretarial services, business services relating to the establishment of businesses, business services relating to the provision of sponsorship for television commercials, business services relating to the provision of sponsorship for television programmes, business statistical information services, buyer to supplier matching services, career advisory services, charitable services, namely business management and administration, charitable services, namely organising and conducting volunteer programmes and community service projects, clerical services, commercial information services provided by access to a computer database, commercial management advisory services, price comparison services, computerised business information services, computerised data storage services, consumer market information services, credit card registrability services, data base services for business, data storage services, employee relocation services, employment agency services, employment bureau services, export-import agency services, franchising consultancy services, information services relating to advertising, information services relating to businesses, market assessment services, marketing advisory services, marketing agency services, market analysis studies, market forecasting, marketing information services, marketing studies, marketing, news clipping services, office equipment rental services, office management services, office services, outdoor advertising services, outdoor publicity services, press advertising services, price analysis services, product launch services, promotional services, sales promotion services, search engine marketing services, search engine optimisation services, search engine submission services, telephone marketing services [not selling], trade promotional services, incentive scheme services, product information services, analysis of business statistics, compilation of statistics, collection of commercial information, compilation of commercial information, provision of commercial information, loyalty card services, accountancy services, advertising analysis, advertisement and promotion of television services, magazine and newspaper subscription services, insurance services, information services relating to insurance, insurance advisory services, insurance arranging services, insurance brokers services, insurance claim assessments, warranty insurance services, warranties services, extended warranties for appliances, extended warranties for domestic electrical appliances, extended warranties for electrical appliances, financial services, advisory services relating to financial investment, advisory services relating to financial matters, advisory services relating to financial planning, financial brokerage services, card operated financial services, financial sponsorship services, computerised financial information services, computerised financial services, computerised information services relating to financial business, consultancy services relating to financial investment, consultation services relating to financial matters, economic financial research services, emergency financial services for travellers, financial evaluation services, financial advisory services, financial advisory services relating to assets management, financial appraisals services, asset management services, fund management services, financial credit services, financial data base services, financial transaction services, risk management services, provision of computerised financial information, financial information services for financial institutions provided via computer networks and satellite transmissions, financial information services for banks provided via computer networks and satellite transmissions, financial information retrieval services, financial information services, financial investigation services, financial investment advisory services, financial loan services, financial management advisory services, financial management, financial market information services, financial services for securing funds for others, banking services, advisory services relating to banking, bank account information services, bank card services, bankers clearing house services, banking services relating to travellers cheques, computerised information services relating to banking matters, home banking services, investment bank services, personal banking services, savings bank services, loan services, arrangement of loans, advisory services relating to loan services, financial loan services, instalment loan financing, credit card services, credit card advisory services, financial services relating to credit cards, insurance services relating to credit cards, issuance of credit cards, processing credit card transactions for others, debit card services, pre-payment card services, e-cash services, real estate services, advisory services relating to real estate ownership, advisory services relating to real estate valuations, agency services for the leasing of real estate property, appraisal of real estate, arranging of letting of real estate, brokerage of real estate, evaluation of real estate, financial services for the purchase of real estate, real estate brokerage services, real estate investment services, real estate management services, financial services relating to real estate property and buildings, financing services relating to real estate development, investment advisory services relating to real estate, leasing of real estate, property evaluations services, property finance services, property insurance services, property investment services, property management services, property leasing services, real estate administration services, real estate selection and acquisition services, real estate leasing, real estate licensing, information and consultancy services relating to real estate, real estate agency services, maintenance services, repair services, advisory services for maintenance, charitable services, namely repair, maintenance and installation, computer maintenance services, diagnostic maintenance services for computers, film projector repair and maintenance services, information services relating to maintenance of security systems, machinery maintenance services, maintenance and repair of communications systems, maintenance and repair of computer hardware, maintenance and repair of computers, maintenance and repair of data communications networks, maintenance and repair of data processing apparatus, maintenance and repair of electrical apparatus, maintenance and repair of electronic apparatus, maintenance and repair of electronic installations, maintenance and repair of telecommunications apparatus, maintenance and repair services in respect of electrical control apparatus, maintenance and repair of utilities in buildings, maintenance and servicing of fire alarm systems, maintenance and servicing of security alarms, office machines and equipment installation, maintenance and repair, advisory services relating to the maintenance of buildings, property maintenance services, burglar alarm installation and repair, fire alarm installation and repair, information services relating to repair or installation, provided on-line from a computer database or the Internet, consultancy services relating to the repair of buildings, locksmith services, photographic equipment repair services, repair information services, vehicle breakdown repair services, installation services, advisory services relating to the installation of environmental control systems, advisory services relating to the maintenance and repair of rainwater installations, installations of security systems, central heating installation, computer installation services, consultancy services relating to installation of computers, consultancy services relating to installation of telecommunication apparatus, double glazing installation, electrical apparatus installation, electrical installation services, information services relating to installation of security systems, installation closed circuit television systems, installation fire detection systems, installation lighting systems, installation of audio electrical apparatus, installation of cable television systems, installation of cellular communications systems, installation of communications network apparatus/instruments, installation of computerised information systems, installation of data processing apparatus, installation of data network apparatus, installation of office apparatus, installation of radio frequency communications systems, installation of radio telephone equipment, installation of safes, installation of stands for conferences/exhibitions/trade fairs, installation of telecommunications apparatus, kitchen equipment installation, machinery installation services, office equipment installation, office machine installation, maintenance, repair and installation services in relation to broadcast and/or telecommunications and/or communications reception apparatus and instruments, maintenance, repair and installation of telecommunications apparatus and equipment, maintenance, repair and installation of communications apparatus and equipment, maintenance, repair and installation of broadband apparatus and equipment, maintenance, repair and installation of apparatus for recording television programmes, maintenance, repair and installation of apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content, maintenance, repair and installation of electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts, maintenance and repair of televisions, LCD, plasma screens and home cinema systems, maintenance, repair and installation of amplifiers, maintenance, repair and installation of speakers, maintenance, repair and installation of radios, maintenance, repair and installation of wireless audio and/or audio visual devices, maintenance, repair and installation of portable wireless audio and/or visual devices, maintenance and repair of remote controls, maintenance and repair of games controllers and wireless gaming controllers, maintenance, repair and installation of television receivers including a decoder, maintenance, repair and installation of set-top boxes, maintenance, repair and installation of digital set-top boxes, maintenance, repair and installation of high definition set top boxes, maintenance, repair and installation of personal video recorders, maintenance, repair and installation of set-top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts, maintenance, repair and installation of apparatus for decoding encoded signals including set top boxes for television reception, maintenance, repair and installation of set top box apparatus including a decoder and an interactive viewing guide, maintenance, repair and installation of set top box apparatus including a decoder and a recorder for recording television and audio programmes, maintenance, repair and installation of set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings, maintenance, repair and installation of satellite dishes, maintenance, repair and installation of low noise blocks, maintenance, repair and installation of satellite meters, maintenance, repair and installation of telephones, maintenance and repair of PDAs, maintenance, repair and installation of telephone and radio modems, maintenance, repair and installation of set top boxes for use in decoding and reception of satellite, terrestrial cable and digital subscriber.

The contested goods are the following:

Class 9: Battery chargers; couplers [data processing equipment]; cabinets for loudspeakers; headphones; 3D spectacles; navigational instruments; global positioning system [GPS] apparatus; smartphones; tablet computers; wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers and display screens and also featuring a bracelet [excluding gaming apparatus].

Class 18: Clothing for pets; backpacks; leather leads; collars for animals; muzzles; harness for animals; clothing for pets; bags; umbrellas; alpenstocks.

Class 21: Kitchen utensils; containers for household or kitchen use; tableware, other than knives, forks and spoons; tea strainers; cake molds [moulds]; toothbrushes, electric; mills for domestic purposes, hand-operated; toilet cases / fitted vanity cases; make-up removing appliances.

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

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

As a preliminary remark, it should also be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 9

The contested battery chargers are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested couplers [data processing equipment]; smartphones; wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers and display screens and also featuring a bracelet [excluding gaming apparatus] cannot be clearly separated from the broad categories of the opponent’s apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content; computers; computer software. Therefore, as these categories of goods overlap, they are considered identical.

The contested navigational instruments; global positioning system [GPS] apparatus are included in the broad categories of the opponent’s nautical, surveying, measuring, radio, telecommunications and signalling, apparatus and instruments. Therefore, they are identical.

The contested tablet computers are included in the broad category of the opponent’s computers. Therefore, they are identical.

The contested cabinets for loudspeakers; headphones; 3D spectacles are included in the broad category of the opponent’s apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content. Therefore, they are identical.

Contested goods in Class 18

The contested backpacks; collars for animals; umbrellas are identically covered by the opponent’s registration in Class 18.

The contested bags include, as a broader category, the opponent’s beach bags, bags for campers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested alpenstocks are included in the broad category of the opponent’s walking sticks. Therefore, they are identical.

The contested harness for animals; leather leads are included in the broad category of the opponent’s whips, harness and saddlery. Therefore, they are identical.

The contested clothing for pets (mentioned twice in the applicant’s specification) cannot be clearly separated from the opponent’s covers for animals. Therefore, as these sets of goods overlap to a considerable extent, they are considered identical.

The contested muzzles are similar to the opponent’s collars for animals. These goods target the same consumers, through the same distribution channels and they originate from the same undertakings. In addition, they coincide in their ultimate purpose.

Contested goods in Class 21

The contested toilet cases / fitted vanity cases are considered highly similar to the opponent’s vanity cases in Class 18. These goods coincide in nature, purpose and method of use. Furthermore, they target the same consumers, have the same distribution channels and normally originate from the same companies.

The contested toothbrushes, electric are similar to the opponent’s dentifrices in Class 3. These goods can be complementary and they target the same consumers. They are likely to have the same distribution channels and points of sale, and they often originate from the same undertakings.

The contested make-up removing appliances are similar to the opponent’s cosmetic preparations in Class 3. These goods have the same ultimate purpose and they are complementary. Furthermore, they normally have the same producers, end users and distribution channels.

Retailing services in relation to goods consist of bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Furthermore, retail and wholesale services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The contested kitchen utensils; containers for household or kitchen use; tableware, other than knives, forks and spoons; tea strainers; cake molds [moulds]; mills for domestic purposes, hand-operated consist of a variety of household containers and utensils and kitchenware, glassware and cutlery. It follows that they cannot be clearly separated or dissected from these broad categories. Consequently, these goods are identical to the aforementioned broad categories.

Therefore, the contested kitchen utensils; containers for household or kitchen use; tableware, other than knives, forks and spoons; tea strainers; cake molds [moulds]; mills for domestic purposes, hand-operated are considered similar to a low degree to the opponent’s services consisting of the bringing together, for the benefit of others of a variety of goods, namely kitchenware; glassware; household containers and utensils and cutlery and their parts, enabling customers to conveniently view and purchase those goods in Class 35.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar (to different degrees) are directed essentially at the public at large, although some of the goods in Class 9 (e.g. navigational instruments) may also target 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.

3. The signs

SKY
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a word mark, consisting of the verbal element ‘SKY’. In the case of word marks it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters.

The contested sign is a figurative mark which contains the verbal element ‘MOBILESKY’, written in stylised upper case black letters. The initial ‘M’ is surrounded by an elliptic black curved line.

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).

The conjoined expression ‘MOBILESKY’, considered as a whole, has no univocal meaning for the relevant public and is not used in common parlance. It may refer to, inter alia, a ‘sky which is mobile’ or it may also be perceived as a conjunction with no clear meaning as a whole, i.e., with no different meaning than the simple sum of its parts. In any case, considering the aforementioned principle, it is reasonable to assume that the relevant English-speaking consumers will instantly perceive the verbal element ‘MOBILESKY’ of the contested sign as the sum of its parts, thus splitting it into the words ‘mobile’ and ‘sky’, because they are both words known to them. The fact that there is a slight spacing between the elements ‘MOBILE’ and ‘SKY’ in the contested sign will also facilitate the abovementioned perception of the elements comprising the conjoined expression.

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’ (information extracted from 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; it does not describe or even allude to any of their essential characteristics.

As regards the contested sign, the word ‘MOBILE’ will be perceived as, inter alia, ‘having freedom of movement’, ‘movable’, ‘portable’ or as an abbreviation for ‘mobile phone’ (information extracted from Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/mobile_1). Therefore, this element will be perceived as directly describing the mobile nature of some of the relevant goods (e.g., smartphones; tablet computers), in relation to which it is non-distinctive. In relation to the remaining goods, the element is weak, because it is allusive as regards their qualities, as it suggests that they are portable and/or easily transportable.

As regards the overall stylisation of the contested sign and the oval line contained therein, it must be noted that these components will be perceived as having a weaker than average distinctiveness, because such elements are common in many trade marks and have a role which is essentially ornamental, i.e., to bring the verbal element(s) of the mark to the attention of the public.

Therefore, for all the aforementioned reasons, the public will attribute more trade mark significance to the element ‘SKY’ of the contested sign and, consequently, this word is the most distinctive element contained therein.

The marks have no elements that 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’s verbal element ‘MOBILESKY’. As mentioned above, this is because the English-speaking public will instantly break down the conjoined term of the contested sign into the words ‘mobile’ and ‘sky’. In addition, ‘SKY’ is the element in the contested sign to which consumer will attribute the more trade mark significance, i.e., the most distinctive element present therein.

The signs differ in the overall stylisation, figurative element and in the additional word ‘MOBILE’ present in the contested sign. As referred above, these elements are either non-distinctive or weak, or have a reduced impact on the public, as indicators of commercial origin.

Furthermore, 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).

Therefore, considering that the most distinctive element of the contested sign reproduces the earlier mark, the signs are considered visually similar to an average degree.

Aurally, as regards the element ‘MOBILESKY’, as explained above, it is composed of two words which will be perceived as such by the relevant public. The second word, ‘SKY’ (which plays a distinctive role within the contested sign), and the earlier mark are pronounced identically. The pronunciation differs in the sound of the initial word ‘MOBILE’ of the contested sign, which has no counterpart in the earlier mark but is, nonetheless, non-distinctive or weak in relation to the relevant goods.

Overall, considering the weakness of the differing component ‘MOBILE’ and the fact that the most distinctive part of the contested sign - ‘SKY’ - reproduces identically the earlier mark, the marks are aurally similar to an average 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, although a part of the public may perceive it as a reference to a ‘sky which is mobile’; in any case, the public will perceive clearly the words of which this conjoined element is composed.

Therefore, the marks are conceptually similar to an average degree, as they share the concept of ‘sky’, which is inherently distinctive in relation to all the goods and services at issue.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods 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.

5. Global assessment, other arguments and conclusion

The contested goods are identical or similar (to different degrees) to the goods and services covered by earlier United Kingdom trade mark No 2 500 604.

The signs under comparison are visually, aurally and conceptually similar to an average degree on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included, yet clearly perceptible, in the contested sign’s verbal element, ‘MOBILESKY’. The signs differ in the additional word, ‘MOBILE’, in the stylisation and figurative element in the contested sign.

As mentioned above, 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. In addition, the slight stylisation of the verbal elements of the contested sign and the curved line will be perceived as ordinary graphic means of bringing the verbal elements of the sign to the attention of the public. Therefore, the relevant public will pay little attention to these stylisation and figurative components.

Furthermore, it is decisive that the relevant public will immediately perceive the word ‘SKY’ as an element in the contested sign, recognising the meanings of the conjoined words ‘MOBILE’ and ‘SKY’, for the reasons explained above. It should also be emphasised that the coinciding meaningful element ‘SKY’ is considered distinctive to an average degree in relation to all the relevant goods and is the most distinctive element of the contested sign.

In addition, it cannot be overlooked that this identical element will also establish a conceptual link between the signs, as explained above in section c) of this decision, thus further contributing to the finding of similarity between the marks.

Therefore, given the reproduction of the element ‘SKY’ in the contested sign, it is likely that the relevant public will, at least, associate the contested sign with the earlier mark.

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 version or a new brand line of goods provided under the opponent’s ‘SKY’ mark, related to products which are ‘mobile and/or easily transportable’.

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 similar (also to a low degree) goods, 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. It follows that the contested trade mark must be rejected for all the contested goods.

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

Monika CISZEWSKA

Gueorgui IVANOV

Michaela SIMANDLOVA

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.