Sky loses opposition in ‘Skyliners’ TM case
Sky has failed to defend its opposition to a German basketball team’s ‘Skyliners’ trademark at the Court of Justice of the European Union’s General Court.
In a judgment published on Wednesday, June 30, the general court upheld both pleas from the Fraport Skyliners to annul a European Intellectual Property Office (EUIPO) decision that allowed the UK broadband and TV provider to oppose the team’s trademark application.
The Skyliners filed a trademark for its team name at the EUIPO in September 2015.
Following the publication of the application, it was opposed by Sky in November 2015 for infringing on three earlier ‘Sky’ wordmarks filed between 2008 and 2009. The EUIPO’s Opposition Division upheld Sky’s opposition in March 2018.
The Skyliners sought to appeal the decision at the EUIPO Board of Appeals but the board dismissed in October 2019, leading it to appeal to the general court.
The case before the general court hinged on whether Sky was able to bring opposition at all. The Skyliners argued that Sky had failed to prove it was entitled to oppose on the basis of its earlier EU marks because it provided a licence agreement as evidence in June 2019, almost three years after the initial deadline for evidence in 2016.
The EUIPO claimed that Sky had already confirmed the registration of the licence agreement in 2016 before filing the opposition and that it had already received a copy of the agreement in separate proceedings in 2009. Sky contested that the opposition was “duly registered”.
The general court upheld the Skyliners’ absence of evidence claim, ruling that the opposition breached Article 46(1)(a) of Regulation 2017/1001.
‘No valid reason’
The Skyliners’ second plea alleged the board of appeal took into consideration the evidence of the licence agreement, despite its late submission, claiming that there was “no valid reason for submitting proof of entitlement out of time”.
The EUIPO claimed that its decision to uphold the opposition was not based on the licence agreement, claiming that the evidence submitted within the deadline was enough to grant an opposition.
But the court reinforced its ruling on the prior plea, claiming that EUIPO erred by granting the opposition in the first place.
The judgment said: “It must be concluded that, in breach of the first sentence of Article 94(1) of Regulation 2017/1001, the contested decision contains no statement of reasons making it possible to understand, in general, the basis on which the Board of Appeal found that the intervener was entitled to file an opposition based on the earlier EU marks...
“More particularly, what its procedural approach was in regard to the licence agreement presented on 27 June, 2019, or even its reasons for implicitly accepting that evidence as a basis proving entitlement.”
As a result, the general court upheld the second plea.
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