SKYCALL | Decision 2793258
Date Published: Sep 22, 2017
OPPOSITION No B 2 793 258
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
Cheetah Mobile Inc., PO Box 309, Ugland House, Grand Cayman 1 1104, Cayman Islands (applicant), represented by Greenberg Traurig, LLP, Leidseplein 29, 1017 PS Amsterdam, The Netherlands (professional representative).
On 13/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 793 258 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 593 171 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 593 171 for the word mark ‘SKYCALL’. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604 for the word mark ‘SKY’. In relation to this earlier right, the opponent invoked Articles 8(1)(b) and 8(5) EUTMR. In addition, in relation to other earlier rights, the opponent invoked Articles 8(1)(b), 8(4) and 8(5) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 2 500 604.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Computer software.
Class 38: Telecommunications services.
The contested goods and services are the following:
Class 9: Computer software, namely, software for the transmission of phone calls, internet protocol (VOIP) calls, and audio conferencing between two or multiple users via computer networks, communication networks, and the global information network; computer software for text messaging, video conferencing, file sharing and transfer.
Class 38: Communication services, namely, transmitting and receiving text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, communication networks and the global information network; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet.
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 ‘namely’, used in the applicant’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.
Contested goods in Class 9
Taking into consideration the aforementioned principle, the contested computer software, namely, software for the transmission of phone calls, internet protocol (VOIP) calls, and audio conferencing between two or multiple users via computer networks, communication networks, and the global information network; computer software for text messaging, video conferencing, file sharing and transfer are included in the broad category of the opponent’s computer software. Therefore, they are considered identical.
Contested services in Class 38
Likewise, the contested communication services, namely, transmitting and receiving text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, communication networks and the global information network; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet are included in the broad category of the opponent’s telecommunications services. Therefore, they are considered identical.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s level of attention will vary from average to high, depending on the price and frequency of purchase of these goods and services.
- The signs
SKY | SKYCALL |
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; furthermore, for the same reasons, they have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s). The earlier sign consists of the verbal element ‘SKY’ and the contested sign of the verbal element ‘SKYCALL’.
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 verbal element ‘SKYCALL’, considered as such, has no clear univocal meaning for the relevant public. However, considering that this element is pronounced in two syllables (‘skái-koul’) and that those syllables correspond precisely to the two conjoined words at issue, it is likely that the relevant English-speaking public will perceive the contested sign as the conjunction of the words ‘SKY’ and ‘CALL’, because they are both known to them. The word ‘CALL’ will be perceived as, inter alia, ‘an instance of speaking to someone on the phone or attempting to contact someone by phone’ (Oxford English Dictionary online, at https://en.oxforddictionaries.com/definition/call).
In the context of the contested goods and services, this word is non-distinctive or in any case rather weak, as it directly indicates that the software (Class 9) and communications services (in Class 38) at issue will enable the consumers to establish telecommunications via phone calls and, in addition, it suggests that the goods and services related to the transmission of data, images, files, video, etc. are compatible with/provided by telephone or broadband communication (via wireless networks, platforms, the Internet, global information networks, etc.).
The word ‘SKY’, which forms the earlier mark and the beginning of the contested sign, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (Collins English Dictionary online, at http://www.collinsdictionary.com/dictionary/english/sky). This word is neither descriptive nor lacking in distinctiveness for any of the relevant goods and services in Class 9 and 38. It does not describe or even allude to any of their essential characteristics. It follows that the most distinctive element of the contested sign is the word ‘SKY’.
Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced as a noticeable element at the beginning of the contested sign. The signs differ in the additional element of the contested sign, ‘CALL’, which is, however, non-distinctive or in any case, rather weak, in relation to the relevant goods and services.
As mentioned above, the English-speaking public in the relevant territory is likely to perceive ‘SKY’ as an element in the contested sign. Therefore, the beginning of the contested sign coincides with the earlier mark. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, considering the coincidence in the normally distinctive and initial element ‘SKY’, as well as the weakness of the differing component, the marks are visually highly similar.
Aurally, the contested sign will be pronounced in two syllables (‘skái-koul’), corresponding to the two elements of which its verbal element is composed: ‘sky’ and ‘call’. Therefore, the first part, ‘sky’, is aurally identical to the earlier sign. The signs differ in the sound of the second element of the contested sign, ‘call’, which, as previously explained, is non-distinctive or very weak in relation to the relevant goods and services. Overall, considering the above-mentioned principles and the importance of the coincidence in their initial element, it is concluded that there is a high degree of aural similarity between the marks.
Conceptually, the public in the relevant territory will perceive the word ‘SKY’ contained in both signs and the word ‘CALL’ of the contested sign, in accordance with the meanings referred to above. As regards the contested sign as a whole, as explained above, it has no clear univocal meaning, because the concept of a ‘call in the sky’ is a rather vague and unclear one. However, independently of the way in which the whole conjoined element is perceived and interpreted, the public will be aware of the semantic content of the words composing this element, ‘SKY’ and ‘CALL’, for the previously explained reasons.
Therefore, bearing in mind that the word ‘SKY’ is inherently distinctive in relation to the goods and services at issue, whereas the differing element ‘CALL’ is non-distinctive or rather weak, this coincidence generates a high degree of conceptual similarity between the marks.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning in relation to any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The contested goods and services are identical 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 highly similar, on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included, yet clearly perceptible, in the beginning of the contested sign, ‘SKYCALL’. The signs differ in the additional element, ‘CALL’, of the contested mark.
In word signs, the first part is usually the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a significant influence on the overall impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; and judgment of 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).
This principle is fully applicable to the present case. The signs are both word marks and the entire earlier mark, ‘SKY’, is contained, as a distinguishable element, in the first part of the contested sign. Therefore, this has to be taken into account when assessing the likelihood of confusion between the marks, because it will have a significant impact on the overall impression made by the contested sign.
It is also important to note that the coinciding meaningful element ‘SKY’ is considered distinctive to an average degree in relation to all the relevant goods and services, i.e., the earlier mark enjoys an average distinctiveness, whereas the differing element in the contested sign, ‘CALL’, is non-distinctive or, in any case, rather weak.
Therefore, given the reproduction of the distinctive element ‘SKY’ in the beginning of 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 to those marketed under the ‘SKY’ brand. 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 sufficient to counteract the similarity resulting from their coinciding element, ‘SKY’, and that, for identical goods and services, there is a likelihood of confusion, including a likelihood of association, on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration. 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
Monika CISZEWSKA | Gueorgui IVANOV | Benoit VLEMINCQ |
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.