Action brought on 8 September 2011 - Skyhawke Technologies v OHIM - British Sky Broadcasting et Sky IP (SKYCADDIE)

(Case T-484/11)

Language in which the application was lodged: English

Parties

Applicant: Skyhawke Technologies, LLC (USA) (represented by: K. Gilbert and M. Blair, Solicitors)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other parties to the proceedings before the Board of Appeal: British Sky Broadcasting Group plc (Isleworth, United Kingdom) and Sky IP International Ltd (Isleworth, United Kingdom)

Form of order sought

Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 28 June 2011 in case R 501/2010-4; and

Order the defendant and the other parties to the procedure to bear their own costs and pay the costs of the applicant.

Pleas in law and main arguments

Applicant for a Community trade mark: The applicant

Community trade mark concerned: The word mark "SKYCADDIE", for goods and services in classes 9, 25, 28 and 41 - Community trade mark application No 4264685

Proprietor of the mark or sign cited in the opposition proceedings: The other parties to the proceedings before the Board of Appeal

Mark or sign cited in opposition: Community trade mark registration No 3203411 of the word mark "SKY", for goods and services in classes 9, 16, 18, 25, 28, 35, 38, 41 and 42; United Kingdom trade mark registration No 2302176B of the word mark "SKY", for goods and services in classes 9, 28, 36, 41, 42, 43 and 45; Community trade mark registration No 3166337 of the figurative mark in black and white "SKY", for goods and services in classes 9, 16, 18, 25, 28, 35, 38, 41 and 42; United Kingdom trade mark registration No 2044507A of the word mark "SKY", for goods in classes 18, 25 and 28; United Kingdom trade mark registration No 2197682 of the figurative mark in black and white "SKY", for goods and services in classes 9, 16, 18, 25, 28, 35, 38, 41 and 42; United Kingdom well-known mark "SKY", for goods and services in classes 9, 16, 28, 38 and 41; United Kingdom non-registered mark "SKY", for goods and services in classes 9, 16, 28, 38 and 41;

Decision of the Opposition Division: Upheld the opposition and rejected the Community trade mark application in its entirety

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Article 8(1)(b) of Council Regulation No 207/2009, as the Board of Appeal failed: (i) to appreciate that there were sufficient visual, aural and conceptual differences between the marks particularly with respect to its analysis of the conceptual meanings of the marks; and (ii) to properly take into consideration the level of attention of the average consumer of the category of goods concerned.

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