SKYWONDER | Decision 2641572
Date Published: Sep 25, 2017
OPPOSITION No B 2 641 572
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
Kortrijk Xpo cvba, Doorniksesteenweg 216, 8500 Kortrijk, Belgium (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).
On 28/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 641 572 is upheld for all the contested services.
2. European Union trade mark application No 14 630 834 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 14 630 834. 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 services
The services on which the opposition is based are, inter alia, the following:
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; arranging and conducting of trade shows and exhibitions.
Class 41: Education and entertainment services; provision of training; provision of audio visual content relating to entertainment, education, training, sport and culture; education and entertainment services by means of radio, television, telephony, the Internet and on-line databases; arranging conferences, seminars, symposiums or workshops; arranging exhibitions or festivals; organisation of entertainment; organising and conducting educational courses; arranging and conducting of seminars and workshops (training); consultancy, information and advisory services relating to all the aforesaid services; advising or providing information in relation to the foregoing; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.
The contested services are the following:
Class 35: Arranging of trade fairs and exhibitions for commercial and advertising purposes.
Class 41: Organisation of trade fairs and exhibitions for cultural or educational purposes; arranging and conducting of colloquiums and seminars.
Contested services in Class 35
The contested arranging of trade fairs and exhibitions for commercial and advertising purposes are included in the broad category of the opponent’s arranging and conducting of trade shows and exhibitions. Therefore, they are identical.
Contested services in Class 41
The contested arranging and conducting of colloquiums and seminars are, albeit a slightly different wording, identical to the opponent’s arranging and conducting of seminars and workshops (training).
The contested organisation of trade fairs and exhibitions for cultural or educational purposes cannot be clearly separated from the broad categories of the opponent’s arranging exhibitions or festivals; organising and conducting educational courses; organisation of entertainment; arranging conferences, seminars, symposiums or workshops. These sets of services overlap to a considerable extent and, therefore, 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 services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, the specialised nature and/or the terms and conditions of the purchased services.
- The signs
SKY | |
Earlier trade mark | Contested sign |
The relevant territory is the United Kingdom.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier sign is a word mark, consisting of the verbal element ‘SKY’.
The contested sign is a figurative mark which contains the verbal elements ‘SKY WONDER’, written in rather standard upper case red letters, over two lines, in the top part of the sign. A red and white pilot helmet, surrounded by several small airplanes, drones and helicopters, is portrayed below the verbal elements. The sign also displays some purely decorative features: a blue rectangular background and some grey, white and red stripes scattered across the mark.
The word ‘SKY’, which forms the earlier mark and the first word 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 distinctiveness for any of the relevant services in Classes 35 and 41, as it does not describe or allude to any of their essential characteristics. Therefore, it is normally distinctive.
The word ‘WONDER’ of the contested sign will be perceived as, inter alia, ‘the feeling excited by something strange; a mixture of surprise, curiosity, and sometimes awe’, ‘something that causes people to feel great surprise or admiration’ or as a verb, indicating that ‘if you wonder about something, you think about it, either because it interests you and you want to know more about it, or because you are worried or suspicious about it’ (Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/wonder). Although this term may carry a certain positive connotation, it is deemed that it contains no informative or suggestive indication as regards the essential characteristics of the relevant services and, therefore, it is considered normally distinctive.
Considering the contested sign as a whole, the expression ‘SKY WONDER’ has no univocal meaning for the relevant public and is not used in common parlance. It may refer to, inter alia, a ‘wonder in the sky’; however, it may also be perceived as an expression with no clear meaning as a whole. In any case, it is clear that the relevant English-speaking consumers will instantly recognise and perceive the words ‘Sky’ and ‘Wonder’ of the contested sign according to their aforementioned meanings, because they are both words known to them.
The figurative elements of the contested sign (pilot helmet, surrounded by several small airplanes, drones and helicopters) are also normally distinctive in relation to the relevant services. Nonetheless, the Opposition Division respectfully disagrees with the applicant’s contention that these elements are the most distinctive and dominant elements of the contested sign.
Indeed, 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, for the aforementioned reasons, even considering the normal inherent distinctiveness of the figurative component of the contested sign, the public will attribute more trade mark significance to the verbal elements ‘SKY WONDER’, as it will perceive them as the main indicator of commercial origin of the relevant services and will use them in order to refer to these services.
Furthermore, as regards the visual impact of the figurative components of the contested sign, although it is true that the device of the helmet and the elements surrounding it occupy a larger space in the sign (compared to the verbal elements ‘SKY WONDER’), it is also clear that they do not overshadow these verbal elements, which are sufficiently large in size and remain clearly noticeable and readable. Furthermore, the verbal elements ‘SKY WONDER’ are portrayed in the initial part of the sign, as the relevant public reads from left to right and from top to bottom.
Therefore, considering all the above, the marks under comparison have no elements which could be considered more dominant (visually eye-catching) than other elements.
Finally, as regards the remaining figurative components of the contested sign (the blue rectangular background and some grey, white and red stripes scattered across the mark), they will be perceived as elements which perform a purely ornamental role within the sign, thus bringing the verbal elements of the mark to the attention of the public. Consequently, it is considered that these elements are negligible within the overall impression conveyed by the contested sign; as they will have no relevant impact on the consumers, they will not be further analysed in the comparison conducted hereunder.
Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced and plays an independent and distinctive role at the beginning of the contested sign. 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 and from top to bottom, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader.
The signs differ in the overall stylisation and figurative elements of the contested sign and in the additional word ‘WONDER’ contained therein. However, for the aforementioned reasons, the public will attribute more trade mark significance to the verbal elements of the mark, ‘SKY WONDER’, than to its figurative and stylisation components.
Therefore, considering that the initial, independent and fully distinctive element of the contested sign, ‘SKY’, reproduces the earlier mark, the signs are considered visually similar to an average degree.
Aurally, the first element of the contested sign, ‘SKY’, which performs an independent distinctive role therein, and the earlier mark as a whole, are pronounced identically. The pronunciation differs in the sound of the element ‘WONDER’ of the contested sign, which has no counterpart in the earlier mark.
Overall, considering that the aurally most conspicuous part of the contested sign - its beginning ‘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 words ‘SKY’, contained in both signs, and ‘WONDER’ of the contested sign, in accordance with the meanings referred to above. The figurative elements of the contested sign convey the meaning of a pilot helmet, surrounded by aircrafts. As regards the contested sign as a whole, as explained above, it has no clear univocal meaning. However, independently of the way in which the expression ‘SKY WONDER’ is interpreted, the public will be aware of the semantic content of the word ‘SKY’ at the beginning of the contested sign. This word is inherently distinctive in relation to the services at issue and, therefore, this coincidence generates an average 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 for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The contested services are identical to the 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 in the beginning of the contested sign. The signs differ in the additional term, ‘WONDER’, and in the stylisation and figurative components 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 ornamental devices present in the sign (blue background and some grey, white and red stripes) will be perceived as ordinary graphic means of bringing the elements in question, ‘SKY WONDER’, to the attention of the public. Therefore, the relevant public will pay little attention to the figurative features of the contested sign.
As regards the main figurative element of the contested sign (helmet surrounded by aircrafts), although it cannot be denied that it is noticeable and quite stylised, this does not invalidate the aforementioned principle: consumers will attribute more trade mark significance to the verbal elements ‘SKY WONDER’, as they will perceive them as the main indicator of commercial origin of the relevant services and will use them in order to refer to these services. In addition, it must be noted that the stylisation and overall graphic arrangement of this figurative element is not such as to obscure the verbal elements of the sign or otherwise detract the public’s attention from them.
It should also be noted that the coinciding meaningful element ‘SKY’ is considered distinctive to an average degree in relation to all the relevant services, i.e., the earlier mark enjoys a normal inherent distinctiveness.
Therefore, given the reproduction of the element ‘SKY’ in the contested sign, it is likely that even the part of the relevant public displaying a high level of attention 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 believe that the contested sign, ‘SKY WONDER’, is a new extension or a new brand line of services, provided under the opponent’s ‘SKY’ mark, considering that the sign will be applied to identical services.
Account must also be taken of the principle that a likelihood of confusion implies some interdependence among the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, it must be taken into consideration that the contested services are all identical to the services covered by the earlier mark.
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 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 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 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 | Boyana NAYDENOVA |
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.