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20 May 2019Trademarks

EU General Court sides with Sky in TM opposition

British telecoms company Sky has successfully stopped a trademark registration which it said would likely be confused with its earlier marks.

On Thursday, May 16, the European General Court dismissed an appeal from KID-Systeme to register ‘SKYFi’ as a trademark.

KID-Systeme, which produces electronic cabin systems for airplanes, first applied to register the mark in 2013 under classes 9 and 37 for goods and services including computer software, data processing equipment and installation services.

In 2018, the Board of Appeal for the European Intellectual Property Office found there was a likelihood of confusion between the applied-for mark and two of Sky’s earlier marks for the word ‘SKY’.

In its argument to the General Court, KID-Systeme said Sky had failed to submit proof of use of its earlier marks. But, the court agreed with the Board of Appeal that the request for proof was inadmissible because none of the marks had been registered for more than five years.

Additionally, the court rejected KID-System’s argument that the Board of Appeal failed to assess the likelihood of confusion between the applied-for mark and earlier marks globally, and did not rely on the overall impression produced by the ‘SKYFi’ mark.

But, the General Court said the board “took into account all factors” as well as “the level of attention of the relevant public and distinctive character of the earlier marks”.

“In doing so, the Board of Appeal assessed the likelihood of confusion globally,” it said.

KID-Systeme also contested that the Board of Appeal based its decision on a single identical element between its mark and Sky’s trademarks.

The General Court found, however, that the board did not err in its decision as the distinctive and dominant element of the applied-for mark, the element ‘Sky’, would give the applied-for mark the same overall impression as the earlier marks.

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