Sky fails to prevent registration of mark containing 'sky' element

In Stone Electrical Limited v British Sky Broadcasting Group PLC (August 13 2014), the hearing officer, acting for the controller, has dismissed an opposition by British Sky Broadcasting Group PLC against the registration of a mark containing the word 'sky'.

On May 26 2009 Stone Electrical Limited, a company involved in the supply and installation of micro-generators powered by renewable energy, applied to register the following figurative mark in Classes 7, 9 and 37 of the Nice Classification:

On advertisement the application was opposed by Sky on the basis of its prior registrations for the mark SKY. These marks were registered in respect of what were held to be identical goods.

Sky opposed the application on six grounds but only adduced evidence in support of three of these, namely that:

• there arose a likelihood of confusion between the respective marks (Section 10(2) of the Trademarks Act 1996);
• use of the applicant’s mark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the opponent’s marks (Section 10(3)); and/or
• the use of the mark in the state was liable to be prevented by any rule of law protecting an unregistered trademark or other sign (Section 10(4)).

The other grounds were thus dismissed without being considered.

With regard to Section 10(2), since the goods were identical, the main issue that arose under this ground was whether the marks were sufficiently similar for a likelihood of confusion to arise.

The opponent had argued that the word 'sky' should be considered the dominant element of the applicant’s mark. However, while the hearing officer was happy to disregard the purely descriptive element “Generators of power by Wind, Sun and Water”, he was of the view that a component of a mark could be considered dominant only if it stood “way above all other components to such a degree that it renders the other components insignificant or negligible”. He was therefore unwilling to disregard the word 'volt' from the applicant’s mark and held that the marks only shared “a medium level of visual and aural similarity”.

From a conceptual point of view, the applicant’s mark was held to convey “something from the sky as opposed to the sky itself, just as space is a different concept to a space-ship”. The hearing officer was therefore of the view that the marks shared a low level of conceptual similarity.

When the above was considered alongside the nature of the goods (ie, micro-generators powered by renewable energy), the consumer behaviour in relation to the goods, the channels through which they were traded, the expertise required to be provided to consumers, the significant investment undertaken (a 5Kw wind turbine apparently cost over €22,000) and the infrequency of purchases of such goods by consumers, it was enough, in the hearing officer’s opinion, for no likelihood of confusion to arise.

With regard to Section 10(3), the hearing officer was satisfied that the opponent’s marks enjoyed a reputation in the state that extended beyond the limited class of consumers of the opponent’s goods and “penetrated the consciousness of the wider public”. However, he was of the view that what was required to rely on Section 10(3) was a link between the marks which existed on foot of some degree of similarity which, although not necessarily sufficient to cause confusion, would nonetheless enable the consumer to make a “connection in trade” between the marks (or, more specifically, “a connection in respect of the essential function of a trademark; which is to act as a guarantee of origin by distinguishing the goods or services of one undertaking from those of other undertakings”).

In the hearing officer’s opinion, the level of similarity between the respective marks was not sufficient to “establish a link or connection in trade between the marks” on behalf of the public. He was of the view that “where there is no such connection, unfair advantage cannot be taken, nor will it cause detriment to the distinctive character or the repute of the opponent’s marks”. Accordingly, he dismissed the opposition on this ground.

With regard to Section 10(4) (passing off), the hearing officer applied the classic three-stage test for passing off laid down by Lord Oliver in Reckitt & Colman Products Limited v Borden Inc ([1990] 1 WLR 491, 499) (the Jif Lemon case). While he noted that the opponent had not adduced any evidence that it was actually using the mark in relation to the goods at issue, he accepted that this did not necessarily preclude the opponent from successfully relying on Section 10(4) (the case of Harrods v Harrodian School ([1996] RPC 697) was cited in support of this contention).

However, the opponent’s resulting lack of reputation and/or goodwill in respect the goods at issue, taken together with the fact that there was, in the hearing officer’s view, no likelihood of confusion between the marks and the “due cause the applicant had in adopting its mark”, led the hearing officer to conclude that there was no “misrepresentation as to the provenance of the applicant’s goods or services” by the applicant. Accordingly, he did not believe that the opponent would suffer any damage and dismissed the opposition on this ground.

The opposition was therefore dismissed.

Ciaran O’Neill, DFMG Solicitors, Dublin