General Court dismisses TM appeal in win for Sky
The EU General Court yesterday upheld the European Union Intellectual Property Office’s (EUIPO) decision in trademark opposition proceedings instigated by Sky, in a win for the British telecommunications company.
In 2015, individual Alexandru Negru, who lived in Romania, applied to register an EU trademark with the EUIPO. The figurative sign contained the word ‘SkyPrivate’ under two intertwined hearts, in two shades of blue.
Negru sought to register the mark in classes 9, 35, 36, and 42, covering a range of e-commerce software, internet advertising, automated payment services, and IT consultancy services.
In 2016, Sky filed a notice of opposition in respect of all goods and services.
Sky relied on its earlier-registered UK word mark ‘Sky’, registered in 2012 under number 2,500,604 for goods in classes 9, 35, 36, and 42, covering similar goods and services to those covered by Negru’s applied-for mark.
The Opposition Division upheld Sky’s opposition in 2016.
The following year, Negru appealed against the decision, but the EUIPO’s Second Board of Appeal dismissed the appeal on the grounds that the goods and services covered by the two marks are identical and the marks themselves are visually, phonetically, and conceptually similar.
Also, the board said that the word element ‘Private’ in the applied-for mark has a weak level of distinctiveness, and may be perceived by the public as being a new brand line related to the services covered by Sky’s earlier-registered mark.
Therefore, the board found that a likelihood of confusion exists between the marks.
At the General Court, Negru claimed that the relevant consumers in relation to Sky’s earlier-registered mark are “experienced” and “familiar with the technology in question”, resulting in them having a higher than average level of attention.
The board had rather found that the relevant public in this matter included the general public and professionals with knowledge relating to the goods and services covered by Sky’s mark, and that the level of attention of this segment of the public varies from average to higher than average.
Yesterday, the General Court held the board’s assessment of the relevant public to be correct.
“The Board of Appeal was also right in finding in the contested decision that the relevant public might perceive the mark applied for, ‘SkyPrivate’, as a new brand line or a recent development under the earlier mark ‘Sky’,” the court said.
The General Court upheld the board’s finding of a likelihood of confusion and ordered Negru to pay the costs incurred by the EUIPO and Sky.
It also ordered Negru to repay Sky’s costs incurred in the proceedings at the Second Board of Appeal, but said that Sky’s costs incurred in the Opposition Division proceedings are not recoverable.
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