Sky successfully prevents registration of EUROSKY

In Conrad Electronic SE v Office for Harmonisation in the Internal Market (OHIM) (Case T-510/12, November 18 2014), the General Court has held that there was a likelihood of confusion between the prior mark SKY and the later filed Community trademark (CTM) application for EUROSKY in relation to goods in Class 9 of the Nice Classification.

In July 2005 Conrad Electronic applied to register the word mark EUROSKY as a CTM for the class heading for Class 9, as well as "apparatus and instruments for communications technology; aerials and receivers for sound, images and radio; assemblies and components for the aforesaid apparatus, electric cables and conduits, electric switches, electric plug-in and clamping devices, protective bags and transport frames for the aforesaid electric and electronic apparatus; satellite receivers; satellites for scientific purposes, satellite navigation equipment, radar apparatus" in the same class. 

On publication, British Sky Broadcasting Group plc and Sky IP International Ltd filed an opposition based on, among other things, an earlier CTM registration for the word mark SKY broadly covering the class heading for Class 9, among other classes. The grounds for the opposition were those laid down in Article 8(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009). 

In March 2011 the Opposition Division of OHIM upheld the opposition on the grounds that there was a likelihood of confusion in respect of all of the above goods. Conrad Electronic appealed. 

The Fourth Board of Appeal of OHIM dismissed the appeal. The board held that, from a global assessment, there was every reason to conclude that the average consumer would find a likelihood of confusion in the sense that there was a risk that the public might believe that the conflicting mark came from the same undertaking or one which was economically linked. In reaching this conclusion, the board had found that 'Euro' was a descriptive term and, therefore, 'Sky' was the dominant element of Conrad Electronic’s mark. 

Before the court, OHIM argued that Conrad Electronic’s application did not fulfil the conditions of Article 44 of the Rules of Procedure by reason of the brevity of the statement of the pleas made by Conrad Electronic, which were partially limited to a general reference to its submissions made before OHIM in the appeal proceedings. The court disagreed with OHIM and found the application admissible. Conrad Electronic had made submissions regarding the distinctiveness of the SKY mark and the court found that this, together with more general statements arguing against a likelihood of confusion, sufficient to comply with the conditions of Article 44 of the Rules of Procedure.

The court however dismissed evidence submitted by Conrad Electronic before the court as inadmissible citing the well-established principle that the review of OHIM’s decision by the Community courts is confined to a review of the legality of that decision, and is thus not intended to re-examine the facts which were assessed within OHIM.

Turning to the substance of the decision, Conrad Electronic raised just one plea alleging infringement of Article 8(1)(b). It argued that there was no likelihood of confusion between the marks because of the prefix 'Euro' in the mark applied for and the alleged low distinctiveness in the mark SKY. 

The General Court held that even the allegedly weak distinctive character of the word 'sky' in relation to the goods of interest in Class 9 could not preclude the likelihood of confusion. Since the goods were held to be identical and the marks were similar, the court concluded that there was a likelihood of confusion. 

The marks were held to be visually and phonetically similar, despite the prefix 'Euro' in the mark applied for. In the court's view, the additional term 'Euro' was descriptive and therefore occupied a secondary position in the mark only. The second part, 'Sky' was held to be dominant. 

In its general assessment of a likelihood of confusion, the court considered whether the word mark SKY enjoyed a higher distinctiveness because of the use of the mark in the United Kingdom. It agreed with the Board of Appeal that British Sky Broadcasting Group plc and Sky IP International Ltd had successfully shown a higher distinctiveness at least in relation to receivers in the opposition and appeal proceedings before OHIM. As a consequence, even if the inherent distinctiveness of the word 'sky' were only low, the higher distinctiveness acquired through use of the mark in the United Kingdom would counter-balance the effects of an inherent low distinctiveness within the assessment of a likelihood of confusion. Given the identity of the conflicting goods and the similarity of the marks, the court upheld OHIM’s decision. The opposition was therefore successful.

It is interesting to note that a number of decisions from the court in Düsseldorf and the German Patent and Trademark Office, which Conrad Electronic referred to before the General Court, appear to have supported Conrad Electronic’s position. However, the evidence was not submitted in the proceedings before OHIM, and accordingly, the court did not take it into consideration. Furthermore, SKY’s reputation in the United Kingdom was instrumental in succeeding in this opposition. 

Florian Traub, Squire Patton Boggs (UK) LLP, London