JUDGMENT OF THE GENERAL COURT (Third Chamber)
23 May 2019 (*)
(EU trade mark — Opposition proceedings — Application for the EU figurative mark SkyPrivate — Earlier national word mark SKY — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑837/17,
Alexandru Negru, residing in Iaşi (Romania), represented initially by I.-M. Iliescu, and subsequently by T. Protopopescu, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Sky Ltd, formerly Sky plc, established in Isleworth (United Kingdom), represented by K. Saliger, Solicitor, and P. Roberts QC,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 12 October 2017 (Case R 349/2017-2), relating to opposition proceedings between Sky and Mr Negru,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: E. Hendrix, Administrator,
having regard to the application lodged at the Court Registry on 28 December 2017,
having regard to the response of EUIPO lodged at the Court Registry on 14 June 2018,
having regard to the response of the intervener lodged at the Court Registry on 18 June 2018,
further to the hearings on 17 October 2018 and 20 March 2019,
gives the following
Judgment
Background to the dispute
1 On 22 September 2015, the applicant, Mr Alexandru Negru, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2 Registration as a mark was sought for the following figurative sign, for which the applicant claimed the colours sky blue and dark blue:
3 The goods and services in respect of which registration was sought are in Classes 9, 35, 36 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description:
– Class 9: ‘Computer e-commerce software; computer software for business purposes; application software for social networking services via internet; communication software for connecting computer network users; community software; computer e-commerce software; computer programmes for use in telecommunications; computer software designed to estimate costs; computer software platforms; software applications for use with mobile devices; software for tablet computers; software for online messaging; software for facilitating secure credit card transactions; computer software; computer telephony software; computer software for time control’;
– Class 35: ‘Advertisement for others on the Internet; business administration services for processing sales made on the Internet; provision of an on-line marketplace for buyers and sellers of goods and services; provision of advertising space, time and media; advertising by transmission of on-line publicity for third parties through electronic communications networks’;
– Class 36: ‘Automated payment services; payment administration services; payment transaction card services; electronic wallet services (payment services); financial transfers and transactions, and payment services; bill payment services provided through a website; collection of payments for goods and services; processing payments for the purchase of goods and services via an electronic communications network’;
– Class 42: ‘IT consultancy, advisory and information services; programming of software for e-commerce platforms; computer programming and software design; programming of software for Internet portals, chatrooms, chat lines and Internet forums; provision of on-line support services for computer program users; computer software integration’.
4 The EU trade mark application was published in European Union Trade Marks Bulletin No 2015/196 of 16 October 2015.
5 On 15 January 2016, the intervener, Sky Ltd, formerly Sky plc, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
6 The grounds relied on in support of the opposition included that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
7 The opposition was based, inter alia, on the earlier United Kingdom word mark SKY (‘the earlier mark’), which was filed on 20 October 2008 and registered on 7 September 2012 under the number 2500604 in respect of goods and services in, inter alia, Classes 9, 35, 36 and 42 corresponding to the following description:
– Class 9: ‘Computer programs; computer software’;
– Class 35: ‘Advertising and promotional services; business management; business administration; office functions; the bringing together for the benefit of others, via an Internet website, an interactive television shopping channel, a digital television shopping channel, an Internet walled garden or by means of interactive television and/or telecommunications (including voice, telephony and/or transfer of digital information or data) and/or interactive digital media, of a variety of buyer to supplier matching services’;
– Class 36: ‘Insurance; provision of insurance; insurance consultancy; provision of warranties, extended warranties and associated assistance; provision of warranties, extended warranties and associated assistance in relation to broadcast and/or telecommunications and/or communications reception apparatus and instruments and parts and fittings therefor including cable, satellite, terrestrial, analogue or digital reception equipment; financial services; financial management; financial information; financial services provided via the Internet; financial affairs; financial sponsorship; financial and banking services; monetary affairs; asset and fund management; financial, credit, debit, pre-payment, e-cash, cash management, loan and finance services; financial services relating to betting, gaming, gambling, lotteries or book-making; credit services; credit card services; provision of financial information relating to betting, gaming, gambling, lotteries or book-making services; real estate; real estate services; real estate affairs; real estate investment; real estate brokerage services; real estate agency services; real estate financing; real estate management; real estate administration; real estate leasing and licensing; real estate appraisals and valuations; real estate acquisition and sales; information, advice and consultancy services relating to real estate; information relating to the aforesaid services provided on-line from a computer database or via the Internet; information, advice and assistance relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet’;
– Class 42: ‘Design and development of computer hardware and software; design, drawing and commissioned writing all for the compilation of web pages on the Internet; hosting websites; creating and maintaining websites; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; weather forecasting; maintenance and repair of interactive video game devices comprised of computer software and accessories, namely software for operating game controllers; home computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services; computer services, namely the organisation of an infrastructure to enable television subscribers to access internet services via the television; advice relating to the development of computer systems; advisory services relating to computer based information systems; advisory services relating to computer hardware or software; design, installation, maintenance or updating of computer software; design of computer hardware; design services; designing electrical or electronic systems; design services for artwork for animated films; monitoring and analysis of call information; computer programming services; internet walled garden services; operation of search engines; rental or leasing of computer hardware or software; testing, research, assessing, consultancy, advising or providing information in relation to the foregoing; computer services for on-line shopping; computer services relating to the processing of orders and payments; weather forecasting; providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, ecology and animal welfare as well as conducting research and drawing up expert reports in the aforementioned fields; research and development of durable use of nature and the environment; technical and legal assistance concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare and effecting such projects; development and testing for renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, and components therefor; effecting research projects concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare; consultancy, information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided online from a computer database or via the Internet’.
8 By decision of 15 December 2016, the Opposition Division upheld the opposition in its entirety and rejected the applicant’s application for registration.
9 On 15 February 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10 By decision of 12 October 2017 (‘the contested decision’), the Second Board of Appeal dismissed the appeal. In essence, it found, first, that the relevant public consisted of the general public and professionals in the United Kingdom, the level of attention of which varied from average to higher than average. Next, it stated that the goods and services covered by the marks at issue were identical. The Board of Appeal also found that the marks at issue were visually, phonetically and conceptually similar. Furthermore, it took the view that the earlier mark had a normal degree of distinctiveness. Lastly, the Board of Appeal concluded that, in the light of the foregoing, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. It observed that, inter alia, the earlier mark was included in the mark applied for and that, as the word element ‘private’ and the figurative element in that mark were weakly distinctive, the relevant public might regard the mark applied for as a new brand line or a recent development under the earlier mark.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order EUIPO to pay the costs.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those incurred by the intervener before the Opposition Division and the Board of Appeal.
14 By letter of 23 October 2018, EUIPO informed the Court that the earlier mark on the basis of which both of its adjudicating bodies had ruled on the opposition in question, namely the United Kingdom trade mark No 2500604, was subject to a counterclaim for a declaration that it was wholly or partly invalidly registered, on the grounds that the specifications of goods and services lacked clarity and precision and that the application for registration had been made in bad faith.
15 The applicant did not submit any observations regarding that letter. The intervener, by letter of 5 November 2018, stated that it regarded the validity of the mark in question as irrelevant for the purposes of the proceedings before the Court and that the Court should dismiss the action.
16 As the service of certain procedural documents on the applicant’s representative by the Court Registry in the period from September to November 2018 had failed and that representative had not responded to the Court Registry’s repeated attempts at contact, the Court requested, by measure of organisation of procedure of 20 December 2018, that he, first, open an e-Curia account and, secondly, confirm that he had done so by submitting a response to that measure via that account by 18 January 2019 at the latest. The applicant’s representative complied with that measure within the period given. The procedural documents in respect of which service had failed were subsequently sent again by the Court Registry to the applicant’s representative via his e-Curia account.
Law
17 In support of the action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.
18 EUIPO and the intervener dispute the applicant’s arguments.
19 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation 2017/1001, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
20 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services concerned (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). Furthermore, the more distinctive the earlier trademark, the greater will be the likelihood of confusion (see, by analogy, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24).
21 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public
22 In the first place, it must be borne in mind that the relevant public consists of consumers who are likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (judgment of 1 July 2008, Apple Computer v OHIM — TKS-Teknosoft (QUARTZ), T‑328/05, not published, EU:T:2008:238, paragraph 23).
23 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
24 The applicant does not dispute the Board of Appeal’s assessment that the relevant public consists of the general public and of professionals with specific knowledge. However, he claims that the relevant consumer is experienced, is familiar with the technology in question and therefore has a higher than average level of attention.
25 In the present case, in view of the goods and services covered by the marks at issue, the Board of Appeal’s finding that the relevant public consists of the general public and of professionals with specific knowledge relating to the goods and services concerned must be upheld. Furthermore, as the goods and services at issue are, inter alia, software, computer programs, advertising and promotional services, business administration services, Internet buyer to supplier matching services, financial and banking services, computer programming and software design services or computer services for interactive communications and broadcasting, it must be held, as the Opposition Division and the Board of Appeal found, that the relevant public’s level of attention will not necessarily be higher than average, but will vary from average to higher than average, depending on the prices of those goods and services and how frequently they are purchased.
26 In the second place, given that the opposition was based on, inter alia, an earlier United Kingdom trade mark and the Board of Appeal relied on that mark when examining the likelihood of confusion, it was right in defining, in paragraph 21 of the contested decision, the relevant territory as that of the United Kingdom. The applicant does not, moreover, dispute that finding. The relevant public is the public in the United Kingdom.
The comparison of the goods and services at issue
27 In assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
28 The applicant submits that the Board of Appeal made an error of assessment by not taking into account the goods and services actually provided under the marks at issue. According to the applicant, the earlier mark is known to the public on account of the services which are actually provided to its public, in particular, services connected with the field of telecommunications and television, whereas the mark applied for is known to the public for its services in the area of online erotic shows.
29 In that regard, it must be noted that, in order to assess whether the goods at issue are similar for the purposes of Article 8(1)(b) of Regulation 2017/1001, the group of goods or services protected by the marks at issue must be taken into account and not the goods actually marketed under those marks (judgment of 16 June 2010, Kureha v OHIM — Sanofi-Aventis (KREMEZIN), T‑487/08, not published, EU:T:2010:237, paragraph 71).
30 Consequently, contrary to what the applicant submits, the Board of Appeal was right in finding, in paragraph 24 of the contested decision, that the comparison of the goods and services covered by the marks at issue had to be based on the wording in the respective lists of goods and services. The actual or intended use of the goods and services covered by the earlier mark and by the mark applied for is irrelevant for the purposes of that comparison. Moreover, as is apparent from paragraph 3 above and as the Board of Appeal pointed out in paragraph 25 of the contested decision, the wording of the list of goods and services covered by the mark applied for does not refer to online erotic shows, but contains more general terms. The Board of Appeal was therefore fully entitled to find that the comparison of the goods and services in the present case could not be restricted, as regards the mark applied for, to goods and services that are linked to online erotic shows.
31 That is why, in the light of the goods and services covered by the marks at issue and referred to in paragraphs 3 and 7 above, the Board of Appeal’s finding in paragraph 26 of the contested decision, namely that the goods and services covered by the mark applied for are identically included in the list of goods and services covered by the earlier mark, fall under the broader category of the goods and services covered by the earlier mark or overlap with them, must be upheld.
The comparison of the signs at issue
32 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
The visual comparison
33 In the present case, the earlier mark, as the Board of Appeal correctly pointed out in paragraph 28 of the contested decision, is a word mark consisting of the word ‘sky’. The mark applied for is a composite mark consisting of the word element ‘skyprivate’ placed below a figurative element representing two intersecting hearts which respectively contain the images of a camera and that of a speech bubble. The two intersecting hearts, considered as a whole, might also be perceived as a cloud. The elements of the mark applied for are represented in various shades of blue.
34 That said, it must be pointed out that, as regards the visual comparison, there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark (see judgment of 5 May 2017, Globo Media v EUIPO — Globo Comunicação e Participações (GLOBO MEDIA), T‑262/16, not published, EU:T:2017:315, paragraph 37 and the case-law cited). Furthermore, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42 and the case-law cited).
35 The applicant claims that, although, in the contested decision, it is stated that the word ‘sky’ is written in a darker colour, that cannot constitute evidence of a wish to emphasise that word in the mark applied for, since it could just as easily be argued that the word ‘private’ is highlighted by the slightly lighter shade of blue used. The applicant submits that, as a result of the number of letters of which it consists and the business carried on under the mark in the sphere of online erotic shows, the word ‘private’ must be regarded as dominant, as it suggests the confidentiality necessary in a business which concerns erotic shows. The applicant maintains that the element ‘skyprivate’ is not a generic term and is distinctive for the relevant public.
36 However, those arguments are not capable of casting doubt on the Board of Appeal’s finding that the marks at issue are visually similar to an average degree.
37 In paragraph 29 of the contested decision, the Board of Appeal correctly observed that the word element ‘skyprivate’ consists of the words ‘sky’ and ‘private’ which will easily be recognised by the relevant English-speaking public as two separate words, particularly because the capital letters ‘S’ and ‘P’ make it possible to identify clearly the beginning of each word. The darker shade of blue of the word ‘sky’ also makes it possible to distinguish that word visibly from the word ‘private’, the blue of which is lighter. As the Board of Appeal correctly pointed out in the same paragraph of the contested decision, the word ‘sky’ maintains an independent role in the mark applied for.
38 Contrary to what the applicant claims, the word ‘private’ cannot be considered to be dominant. As the Board of Appeal correctly found in paragraph 32 of the contested decision, the word ‘private’ will be perceived as meaning, inter alia, ‘not for general or public use’ or as ‘confidential; secret’. As the goods and services concerned can all be adapted for individual use with restricted access, offer a level of confidentiality and protection to the consumer or be intended for private use, it must be held that the Board of Appeal was right in finding that the word ‘private’ is weakly distinctive for the goods and services concerned. Consequently, the Board of Appeal did not make an error of assessment in finding that the word ‘sky’, which is common to both marks and will be understood as ‘the region of the atmosphere and outer space seen from the earth’, is the more distinctive word in relation to the goods and services concerned.
39 Furthermore, it must be borne in mind that, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods or services in question by quoting their name than by describing the figurative element of the mark (judgment of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37). That general reasoning applies to the mark applied for in the present case. As the Opposition Division and the Board of Appeal correctly pointed out as regards the figurative element of the mark applied for, the representations of a camera and a speech bubble of which that element consists will be perceived as an allusion to the fact that the software and information technology services at issue (Classes 9 and 42) are connected with facilities such as chatrooms and video conferences. The distinctive character of that element is therefore weak with regard to those goods and services and average with regard to the other services. Moreover, that figurative element is above the word element and the relevant public might regard it as a decorative element.
40 Consequently, it must be held that, taken as a whole, the marks at issue consist, on the one hand, of a word and, on the other hand, of a word element the first word of which is identical to the earlier mark and a figurative element, which is, however, less distinctive than the word element. The earlier mark is therefore fully included in the mark applied for, in which it maintains an independent role. That fact is, in the present case, liable to create both a visual and phonetic similarity between the marks at issue (see, to that effect, judgment of 12 December 2017, For Tune v EUIPO — Simplicity trade (opus AETERNATUM), T‑815/16, not published, EU:T:2017:888, paragraph 53). Furthermore, the word that the marks at issue have in common, namely ‘sky’, constitutes the most distinctive element in the mark applied for, in view of the fact that the word ‘private’ may designate a characteristic of the goods and services at issue and the figurative element is less likely to be remembered by the relevant public.
41 In the light of the foregoing, it must be held that the Board of Appeal was fully entitled to conclude that the marks at issue are visually similar to an average degree.
The phonetic comparison
42 The Board of Appeal found that the pronunciation of the marks at issue coincided in the sound of the word ‘sky’ and differed in the sound of the word ‘private’ in the mark applied for. It concluded, in paragraph 37 of the contested decision, that the marks at issue were phonetically similar to an average degree.
43 The applicant submits that, in the light of the number of words and the number of letters of which the marks at issue consist, those marks are phonetically dissimilar.
44 In that regard, it must be held that, contrary to the applicant’s claims, the fact that the numbers of words and letters of which the marks at issue consist differ does not constitute a factor which is sufficient to differentiate them decisively as far as the overall phonetic impression that they create is concerned, since the first syllable of both marks is identical and the relevant public will pronounce it in the same way. In spite of the different numbers of words and letters in the marks at issue, the fact remains that, in each of those marks, the word ‘sky’ will be pronounced clearly and will be identified as an element of phonetic similarity (see paragraph 40 above). That phonetic similarity will particularly be perceived by the relevant public because the word element ‘skyprivate’ consists of the words ‘sky’ and ‘private’ which will be easily identified as two separate words (see paragraph 37 above).
45 In the light of the foregoing and in particular of the elements of similarity between the marks at issue, it must be held that the Board of Appeal was right in finding that those marks are phonetically similar to an average degree.
The conceptual comparison
46 The applicant does not dispute the Board of Appeal’s finding that the marks at issue are conceptually similar. However, as a whole, the applicant’s line of argument seeks to maintain that the relevant public will not confuse the marks at issue.
47 In that regard, it must be pointed out that the relevant public will perceive the word ‘sky’, which is in both of the marks at issue, and the word ‘private’ in the mark applied for as having the meanings set out in paragraph 38 above. The element ‘skyprivate’ does not, as a whole, have any clear or unambiguous meaning and could be interpreted as a ‘private sky’. However, it must be stated, in view of the goods and services concerned, that English-speaking consumers will understand the word ‘private’ as being a straightforward reference to the fact that those goods and services can be adapted for individual use with restricted access, offer a level of confidentiality and protection to the consumer or be intended for private use. Similarly, since the figurative element is likely to be perceived essentially as a reference to the characteristics of the goods and services concerned or as a decorative element, it is not capable of conferring a significant conceptual difference.
48 Consequently, it must be held, as the Board of Appeal found, that the marks at issue are conceptually similar to an average degree, since they have the concept of ‘sky’ in common.
The likelihood of confusion
49 It must be borne in mind that, according to the case-law set out in paragraph 20 above, the likelihood of confusion must be assessed globally, by admittedly taking into account the relevant public’s perception of the signs and goods or services in question, but also all factors relevant to the circumstances of the case. Consequently, contrary to what the applicant submits in paragraph 17 of the application, even if the relevant public consisted of educated consumers who are familiar with new technologies, that fact alone would not in itself make it possible to rule out any likelihood of confusion.
50 In the present case, in the light of all of the foregoing findings, the goods and services at issue are identical, the marks at issue are visually, phonetically and conceptually similar to an average degree since the earlier mark is fully included in the mark applied for, in which it maintains an independent role, and the inherent distinctiveness of the earlier mark is normal.
51 It follows that the Board of Appeal was right in finding, in paragraphs 46 and 47 of the contested decision, that there was a likelihood of confusion on the part of the relevant public, even taking into account an above-average level of attention on the part of that public, since the mark applied for consists of the earlier mark juxtaposed with the word ‘private’, an element which is, at most, weakly distinctive, and of a purely decorative figurative element.
52 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. As a result, in particular, of the juxtaposition of the words ‘sky’ and ‘private’, the relevant public might regard the mark applied for as a new range of goods and services deriving from the earlier mark, which could be adapted for individual use with restricted access or offer the consumer a level of confidentiality.
53 The applicant’s other arguments cannot call that conclusion into question.
54 First, the applicant criticises the contested decision on the ground that the Board of Appeal erred in finding, as regards the mark applied for, that the word ‘private’ was complementary and ancillary in relation to the word ‘sky’. However, it must be stated that the applicant himself admits, in paragraph 33 of the application, that the element ‘skyprivate’ ‘was created by focusing mainly on the word “Private”, which defines the services provided by SkyPrivate and the means by which those services are provided (the message being one of confidentiality, discretion, and so on)’. As has previously been stated, the fact that the word ‘private’ might allude to a characteristic of the goods and services concerned is precisely what makes it weakly distinctive.
55 Secondly, it must be borne in mind that it is not apparent from the wording of the lists of goods and services covered by the mark applied for that it provides an online service via a platform connected with erotic shows. Consequently, contrary to the applicant’s claims, it cannot be held, when assessing the likelihood of confusion, that the services covered by the mark applied for are different from those covered by the earlier mark, which the applicant maintains are oriented more towards offline media such as telecommunications and television.
56 Lastly and thirdly, the applicant submits, in paragraph 35 of the application, that the relevant public will not perceive the mark applied for as a new trade mark belonging to the intervener. He maintains that the intervener does not have a monopoly on the word ‘sky’ and cannot circumvent ‘the provisions of legislation concerning the registration of marks and the effects of such registrations’. In that regard, it must be borne in mind that, under Article 8(1)(b) of Regulation 2017/1001, the proprietor of an earlier mark may oppose the registration of a later mark. The trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. Since the Board of Appeal was right in finding that there is a likelihood of confusion on the part of the relevant public, that argument on the part of the applicant must be rejected.
57 In the light of all of the foregoing, the single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001 must be rejected and the action must therefore be dismissed in its entirety.
Costs
58 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
59 Since the applicant has been unsuccessful, he must be ordered to pay the costs incurred for the purposes of the proceedings before the Court, in accordance with the forms of order sought by EUIPO and the intervener.
60 Furthermore, the intervener has claimed that the applicant should be ordered to repay to it the costs which it incurred for the purposes of the administrative proceedings before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Accordingly, the intervener’s request that the applicant should be ordered to repay the costs necessarily incurred by the intervener for the purposes of the proceedings before EUIPO can be allowed only as regards the costs incurred by the intervener for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Third Chamber),
hereby:
1. Dismisses the action;
2. Orders Mr Alexandru Negru to pay the costs, including those incurred by Sky Ltd for the purposes of the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).
Frimodt Nielsen | Kreuschitz | Półtorak |
Delivered in open court in Luxembourg on 23 May 2019.