MOVEUP by Sky Republic | Decision 1925836 - Sky plc v. SKY REPUBLIC, S.L.
Date Published: Oct 1, 2017
OPPOSITION No B 1 925 836
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
Sky Republic, S.L., Dr. Fleming, 52, 08860 Castelldefels (Barcelona), Spain (applicant).
On 20/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 925 836 is upheld for all the contested goods and services.
2. European Union trade mark application No 10 021 145 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 021 145. 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 goods and services on which the opposition is based are, inter alia, the following:
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 25: Clothing, footwear, headgear; underclothing; clothing for men, women, children and infants, jeans, slacks, trousers, skirts, shorts, wraps, jerseys, sweaters, waistcoats, dresses, jumpers, sleepwear, robes, warm-up suits, rainwear, sweaters, scarves, hats, caps, mittens, snow suits, belts, smocks, swimwear, playsuits, bibs, stockings, socks, waterproof clothing, underwear; footwear for men, women, children, and infants shoes, sneakers, sandals, slippers, boots; headgear for men, women, children, and infants hats, headbands, earmuffs, caps, sweaters, dress shirts, blouses; jackets, ties, suits, bathing suits, belts, skirts, dresses, coats, hats, caps, tuxedos, pants, vests, hosiery, scarves, pyjamas, underwear, kilts, mufflers, shawls; footwear, shoes, boots, slippers, and athletic shoes; blazers, headbands, wristbands, coveralls, overalls, sweat pants, and sleepwear.
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 and services are the following:
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.
Class 25: Clothing, footwear, headgear.
Class 35: Procurement services for others, commercial intermediation, import-export and retailing and wholesaling in shops and via the Internet of jewellery, horological instruments, leatherware, saddlery, ready-made clothing, footwear, headgear.
Contested goods in Class 18
The contested 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 are identically covered by the opponent’s earlier right in Class 18.
Contested goods in Class 25
The contested clothing, footwear, headgear are identically covered by the opponent’s earlier right in Class 25.
Contested services in Class 35
The contested commercial intermediation is included in the broad category of the opponent’s business management services. Therefore, they are identical.
The contested procurement services for others are included in the broad category of, or overlap with, the opponent’s administration services for businesses. Therefore, they are identical.
The contested import-export and retailing and wholesaling in shops and via the Internet of jewellery, horological instruments, leatherware, saddlery, ready-made clothing, footwear, headgear cannot be clearly separated from the broad categories of the opponent’s the bringing together, for the benefit of others of a variety of goods namely jewellery, clocks, watches, leather goods, luggage, footwear, headgear, clothing and accessories, enabling customers to conveniently view and purchase those goods and the bringing together for the benefit of others, via an Internet website and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media, of a variety of export-import agency services. Indeed, there is a substantial overlap between these categories of services, which may consist of, essentially, the same type of commercial services rendered by the same undertakings. As a consequence, they are considered identical or at least highly 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 highly similar are directed at the public at large and at business customers with specific professional knowledge or expertise in, inter alia, the business and commercial fields. The relevant public’s level of attention will vary from average to higher than average, depending on the price and frequency of purchase of these goods and services.
- The signs
SKY | MOVEUP by Sky Republic |
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).
Both signs are word marks. 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 the signs are represented in upper or lower case characters, or in a combination thereof. The earlier sign consists of the verbal element ‘SKY’ and the contested sign of the verbal elements ‘MOVEUP by Sky Republic’.
The word ‘SKY’, contained in both signs, will be perceived as, inter alia, ‘the apparent arch or vault of heaven, whether covered with cloud or clear and blue; the firmament’, ‘the upper region of the air’, ‘the heavens’ (Oxford English Dictionary; http://www.oxforddictionaries.com). This word is not descriptive or lacking in distinctiveness for any of the relevant goods and services; it does not describe or even allude to any of their essential characteristics.
It must be noted that the signs’ aural, visual and conceptual similarities have to be weighed up by taking into account important factors such as, in particular, the nature of the goods or services in question, the way in which they are marketed and the public’s level of attention. It must be added that, in the context of this assessment, the visual, aural or conceptual similarities of the signs at issue do not always carry the same weight, especially after considering the objective conditions under which the marks may be marketed (13/12/2007, T 242/06, El charcutero artesano, EU:T:2007:391 § 79, emphasis added).
As regards the contested sign, and bearing in mind the aforementioned principle, the Opposition Division notes that, in particular in the clothing, accessories and fashion context (in which the contested goods and services are inserted or are closely related thereto), the presence of the word ‘by’ in such expressions is normally understood by the public as separating a sub-brand from the main brand at issue.
In other words, considering the lexical structure of the contested sign, the relevant public in question (English-speakers) as well as the market sector of the relevant goods and services (all of which may be marketed in the clothing, accessories and fashion context), it is highly likely that a considerable part of the public will interpret the contested sign as announcing that the sub-brand ‘MOVEUP’ originates from or belongs to the main brand ‘Sky Republic’, because the latter is introduced with the word ‘by’.
This part of the public will perceive that the entity responsible for the manufacture/marketing of the corresponding goods and services brands itself as ‘Sky Republic’, whereas the element ‘MOVEUP’ constitutes a specific line of goods and services belonging to this entity (i.e., the main brand).
The comparison of the signs conducted herewith will focus on the aforementioned part of the public, as it is the one which will be more prone to confusion, considering the association it will establish between the marks.
The element ‘MOVEUP’ will be perceived as a simple conjunction of the terms ‘move’ and ‘up’, and will be understood as ‘moving upwards’. It may be perceived as a motivational and inspirational message intended to lift the spirit of the consumers, since such messages are common in commerce. As regards the main brand ‘Sky Republic’, it must be noted that references to a community of some sort are also relatively common in the fashion sector, where brands often seek to transmit a sense of belonging to a particular group, belief or entity; consequently, although consumers will also be aware of the literal meaning of the word ‘Republic’ (a form of government), in the context of the contested mark they will pick up the exaggerated message which informs them that the goods and services offered carry some sense of community and that the entity responsible for their production and marketing is named ‘Sky Republic’.
Considering the abovementioned perception of the contested sign, on behalf of the considerable part of the public under analysis, it is concluded that the element to which those consumers will attribute the more importance in the contested sign, as an indicator of the commercial origin of the respective goods and services, is ‘Sky Republic’, because the initial element ‘MOVEUP’ will be understood as a motivational and inspirational message which is subordinate to it.
Bearing in mind all the above, it must be concluded that visually and aurally, the coincidence in the word ‘Sky’ is a relevant one. Indeed, this term is normally distinctive for all the relevant goods and services and constitutes the earlier mark; it is fully reproduced in the contested sign, where it plays an independent and distinctive role, furthermore, appearing in the part of the sign which will convey the more trade mark significance for a considerable part of the public: ‘Sky Republic’. The signs differ in the initial element ‘MOVEUP’ of the contested sign which will, however, not have a striking impact for the part of the public in question, due to the aforementioned reasons.
As regards the main indicator of origin in the contested sign, ‘Sky Republic’, whereas the word ‘Republic’ is also normally distinctive, consumers would still link it to the allusion to a sense of community or identity of some sort; in any case, whatever its particular perception is, consumers would not fail to interpret that this noun refers to the entity named ‘Sky’, i.e., a republic (even if a metaphorical one) named ‘Sky’.
Therefore, bearing in mind the different length and structure of the signs, but also considering the coincidence in the independent and distinctive element ‘SKY’, the marks are considered visually and aurally similar to a lower than average degree.
Conceptually, the public in the relevant territory will perceive the words contained in the signs according to the abovementioned meanings. The contested sign, as a whole, will be interpreted as indicating that the main brand ‘Sky Republic’ is responsible for the line of goods and services marketed as ‘MOVEUP’. Owing to the above-mentioned reasons, the marks are conceptually similar to an average degree, because they have in common the concept of ‘Sky’, which is inherently distinctive in relation to all the goods and services at issue and is a key component in the main indicator of origin in the contested sign, ‘Sky Republic’.
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 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.
- Global assessment, other arguments and conclusion
The contested goods and services are all identical or highly similar to the goods and services covered by earlier United Kingdom trade mark No 2 500 604.
The signs under comparison are visually and aurally similar to a lower than average degree and conceptually similar to an average degree, on account of the common element ‘Sky’, which constitutes the earlier mark and is fully included and clearly perceptible as an independent and distinctive element in the contested sign. The signs differ in the additional words of the contested sign, ‘MOVEUP by’ and ‘Republic’; however, as pointed out above, the element ‘MOVEUP’, despite its initial position in the sign, will have a lesser impact for the public as an indicator of commercial origin, due to the particular structure of the contested mark, which will trigger the perception, for a considerable part of the public, that this initial element constitutes merely a sub-brand of the entity identified as ‘Sky Republic’, in the form of an inspirational message.
Therefore, considering the aforementioned part of the public, the element of the contested sign to which consumers will attribute the more trade mark significance and which will perform the role of a main indicator of commercial origin is the expression ‘Sky Republic’.
Likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). In the present case, it is decisive that all the contested goods and services are identical or highly similar to the goods and services covered by the earlier right.
Therefore, considering the interdependence principle, the Opposition Division finds that the lesser degree of visual and aural similarity between the signs is offset by the identity/high similarity of the conflicting goods and services.
Moreover, it cannot be overlooked that the identical element ‘Sky’ which has full distinctive capacity in relation to all the relevant goods and services will also establish a conceptual link between the signs, as explained above in section c) of this decision, thus contributing decisively to the finding of similarity between the marks.
In conclusion, the signs must be deemed similar on the basis that the later sign consists exclusively of the earlier sign ‘Sky’, to which other words have been added, which is an indication that the two trade marks are similar (see by analogy 12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 28). Furthermore, beyond the usual case in which the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such a case, as here, the composite mark and that other mark may be considered to be similar (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, and 01/07/2009, T-16/08, Center Shock, EU:T:2009:240,44 and case-law cited therein).
Therefore, given the reproduction of the distinctive 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. In the present case, consumers may legitimately believe that the contested trade mark is a new brand line or a recent development under the opponent’s mark, considering that it will be applied to goods and services which are identical or highly similar to those marketed under the earlier ‘Sky’ brand. They may assume, for instance, that the ‘Sky Republic’ goods and services at issue originate from the same entity responsible for the brand ‘Sky’, which is appealing to a sense of belonging or community via use of the word ‘Republic’ and that ‘MOVEUP’ is simply the name of a particular line of goods and services, because the use of such sub-brands is common in the fashion and accessories business sector. In other words, consumers may confuse the origins of the goods and services at issue by assuming that they come from the same undertaking or from economically-linked undertakings.
Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarities resulting from their coinciding element, ‘Sky’, and that there is a likelihood of confusion, in the form of a likelihood of association, on the part of the relevant public in the United Kingdom. Given that a likelihood of confusion for a considerable part of the relevant public is sufficient to reject the contested application, there is no need to analyse the perception of the remaining 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 | Marzena MACIAK |
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.