Sky International fails to prevent registration of figurative mark containing 'sky'

The Appeal Division of the State Patent Bureau has dismissed Sky International AG’s opposition against the registration of the figurative trademark SKYTER.

On March 29 2012 Sky International AG (Switzerland) filed an opposition (No PTZ-55) with the Appeal Division of the Lithuanian State Patent Bureau requesting that the latter refuse to extend protection to Lithuania of the international figurative trademark SKYTER (No 1099768, pictured below), owned by Alexander Kuketa.

The SKYTER mark covered “equipment for recording, transmitting, reproduction of sound and/or image, data processing apparatus” in Class 9, “retail services of equipment for recording, transmitting, reproduction of sound and/or image, data processing apparatus” in Class 35 and “satellite transmission” in Class 38 of the Nice Classification.

Sky based its opposition on the following Community and international word marks: 

• SKY (CTM No 006870992; filing date: April 18 2008), registered for various goods and services in Classes 3, 4, 7, 9, 11, 12, 16, 17, 18, 25, 28 and 35 to 45.
• SKY (CTM No 010032282; filing date: June 9 2011), registered for various goods and services in Classes 9, 16, 28, 35, 36, 38, 41, 42 and 45.
• SKY (International Registration No 828572A; registration date and date of extension of protection to Lithuania: July 16 2003), registered for various goods and services in Classes 9, 16, 18, 25, 28, 35, 36, 38, 41 and 42.

The opposition was based on Article 7(1)(2) of the Law on Trademarks of the Republic of Lithuania, which provides that a trademark registration should be declared invalid if it is identical, or misleadingly similar, to an earlier registered mark or application covering identical or similar goods and/or services.

The Appeal Division dismissed the opposition and decided that SKYTER was protected in Lithuania.

In its decision, the Appeal Division followed EU case law and the national Methodical Guidelines on the Assessment of Similarity and Identity of Trade and Services Marks. It stated that, when determining the existence of a likelihood of confusion, the trademarks must be compared by making an overall assessment of the visual, phonetic and conceptual similarities between them and by taking into account the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.   

According to EU case law, the assessment of the similarity between two marks does not amount to taking into consideration only one component of a complex trademark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks as a whole. This does not mean that the overall impression created in the mind of the relevant public by a complex trademark may not, in certain circumstances, be dominated by one or more of its components (see Matratzen Concord GmbH v OHIM (Case C-3/03 P), Paragraph 32, and Matratzen Concord v OHIM (MATRATZEN) (Case T-6/01), Paragraphs 33 and 34). When assessing the dominant character of one or more components of a complex trademark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition (and accessorily), account may be taken of the relative position of the various components within the arrangement of the complex mark (see MATRATZEN, Paragraph 35).

When assessing the overall impression created by the marks SKY and SKYTER, the Appeal Division noted that the sole dominant element in the opponent’s marks was the word ‘sky’. In contrast, the distinctive character of the opposed trademark SKYTER was determined by the graphic and word elements as a whole. The opposed trademark consisted of stylised letters which had a significant influence on the overall impression of the mark. The first letter of the opposed trademark consisted of two hooked lines and could be perceived as a letter ‘S’, or even as a letter ‘O’. Moreover, the opposed trademark was longer in size and consisted of a single word element. The Appeal Division inferred that, due to the original graphic nature of the letters, the graphic elements played an important role in the mark; therefore, the overall visual impression of the mark differed from that of the opponent’s SKY marks.

The parties did not dispute that the opposed trademark SKYTER was an artificially created word. However, it was not clear which language rules should apply when pronouncing the mark. Due to its graphic elements, the opposed trademark could be pronounced in various ways (including ‘okyter’ and ‘skyter’). The Appeal Division stated that the compared trademarks were dissimilar phonetically, even if the marks were pronounced as they were written or following the rules of the English language.

The Appeal Division stressed that, as the average consumers were considered to be reasonably well informed and reasonably observant and circumspect, and due to the stylised first letter in the opposed mark SKYTER (which would not be necessarily perceived as the letter ‘S’), it could not be inferred that the sign created an association with the opponent’s SKY marks or with the word ‘sky’.

The Appeal Division further stated that the similarity of marks cannot be examined mechanically, taking into account each part of the marks in accordance with each criterion of similarity; in contrast, the significance of each criterion to the overall perception of the mark and the perception of the mark as a whole should be evaluated. Based on its analysis of similarity, the Appeal Division found the marks to be dissimilar.

With regard to the similarity of the goods and services, the Appeal Division held that the dispute concerned the goods in Class 9 (apparatus and instruments of various purposes, which are not for daily use). It was important to evaluate the technical characteristics of the goods at the time of purchase. Therefore, the Appeal Division assumed that the attention of consumers would be high and that they would notice the differences between the compared trademarks in this particular case.

The Appeal Division also noted that the element ‘sky’ was not solely associated with the opponent, since that element often appears in third-party trademarks registered for similar goods and services. The Appeal Division stated that the opponent had not submitted any evidence as to whether its trademarks were known among Lithuanian end users. Therefore, the Appeal Division rejected the opponent’s arguments that its SKY marks had a higher distinctive character in Lithuania and that, therefore, there was a higher likelihood of confusion. In addition, since the compared trademarks were found to be dissimilar, the Appeal Division concluded that the assessment of the higher distinctive character of the earlier marks had no legal effect.

Based on the foregoing, the Appeal Division concluded that there was no likelihood of confusion between the marks among the relevant public.

Aušra Pakėnienė, AAA Law, Vilnius