Sky launches another attack
A figurative addition didn’t guarantee distinctiveness, reports Jasmine Sihre. B 3 079 387, Sky Ltd v Guangdong Dabanya Intelligent Technology Co. Ltd, EUIPO, 17th March 2020.
Given Sky Ltd’s vast reputation in its SKY marks and its thorough enforcement of its IP rights, it does not come as a surprise to see the EUIPO’s Opposition Division (OD) uphold an opposition against a third party that filed a SKY formative mark for identical goods.
Guangdong Dabanya Intelligent Technology Co. Ltd (Guangdong) filed an EU trade mark application for a SKY DOLPHIN mark in class 9. Sky Ltd (Sky) opposed that, relying on its stylised and word marks for SKY on the grounds of Articles 8(1)(b), 8(4) and 8(5) EUTMR.
Ample evidence
Sky filed observations to supplement the opposition, including a large amount of evidence arguing the likelihood of confusion and demonstrating the vast reputation of the SKY mark in the EU. This included evidence of continued use of the mark for more than 30 years in the EU, generating a group revenue of more than £7bn between the years 2013 and 2017. Guangdong did not file any observations in reply, and the OD proceeded to assess the merits of the opposition based on a comparison of the marks and the evidence filed by Sky.
The OD considered the evidence and decided that it was sufficient to establish a successful opposition based on Article 8(1)(b). The OD therefore held that it did not need to consider the other grounds of opposition, namely Articles 8(4) and 8(5) EUTMR.
First, the OD looked at the overlap in the class 9 goods. The goods covered by Sky’s earlier trade mark included “chargers; battery chargers; video screens; [and] telephone apparatus”. The goods in the application included “chargers; battery chargers; video screens; [and] smartphones”. The OD found that there was an identical overlap in the goods, including in “telephone apparatus” and “smartphones”, because “smartphones” are included within Sky’s broader term “telephone apparatus”.
Distinctiveness weighed
Next, the OD compared the signs and weighed up the distinctiveness of the marks. The OD considered the marks to be visually, aurally and conceptually similar to one another. In particular, the OD found that the first and dominant parts of both the Application and the earlier mark is SKY. That part of the marks attracts the consumer’s attention first, because the consumer reads from left to right.
While the word DOLPHIN and the Dolphin Device add some distinctiveness to the application mark, the OD decided that even a highly attentive consumer may consider that the application mark is a new version or a brand variation of Sky’s marks. This raises a risk that consumers would be confused between the businesses and the business offerings. At the very least, the consumer would associate the application mark with one of Sky’s marks and/or brands.
Based on these comparisons, the OD did not find the need to compare all the marks which Sky relied upon and was able to successfully uphold the opposition, awarding costs against Guangdong.
The decision was open to appeal at the time of writing.
Key points
- Adding stylisation, distinctive words and/or device elements to a mark will not necessarily be enough to distinguish that mark from another company’s earlier rights, especially where the goods and services are identical
- In a specification, narrowly defined terms may still be considered identical to the goods/services of the earlier rights holder if the earlier registration has broad and non-specific terms in the specification