# C_2015354EN.01001501.xml

| 26.10.2015 | EN | Official Journal of the European Union | C 354/15 |
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26.10.2015

EN

Official Journal of the European Union

C 354/15

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Appeal brought on 15 July 2015 by Skype against the judgment of the General Court (First Chamber) delivered on 5 May 2015 in Case T-423/12: Skype v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Case C-383/15 P)

(2015/C 354/18)

Language of the case: English

Parties

Parties

Appellant: Skype (represented by: A. Carboni, M. Browne, Solicitors)

Appellant:

Other parties to the proceedings: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Sky IP International Ltd, Sky plc

Other parties to the proceedings:

Form of order sought

Form of order sought

The appellant claims that the Court should order that:

| — | the decision of the General Court dated 5 May 2015 in T-423/12 be annulled in its entirety and the application be remitted to OHIM to allow it to proceed; and |
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the decision of the General Court dated 5 May 2015 in T-423/12 be annulled in its entirety and the application be remitted to OHIM to allow it to proceed; and

| — | that OHIM and any intervening parties in this Appeal shall bear their own costs and pay the Appellant’s costs of these proceedings and those of (i) the appeal before the General Court in Case T-423/12; (ii) the Fourth Board of Appeal in Case ‘ 1561/2010-4; and (iii) Opposition B 1 023 680 before the Opposition Division. |
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that OHIM and any intervening parties in this Appeal shall bear their own costs and pay the Appellant’s costs of these proceedings and those of (i) the appeal before the General Court in Case T-423/12; (ii) the Fourth Board of Appeal in Case ‘ 1561/2010-4; and (iii) Opposition B 1 023 680 before the Opposition Division.

Pleas in law and main arguments

Pleas in law and main arguments

The Appellant’s sole Ground of Appeal is that the General Court infringed Article 8(1)(b) of Council Regulation (EC) No 207/2009 0f 26 February 2009 on the Community Trade Mark (1) in giving its decision in case number T-423/12 relating to Community Trade Mark application no. 4 546 248 (the ‘Contested Mark’). In particular, the General Court made the following errors in reaching its decision to uphold the Respondent’s finding of likelihood of confusion:

1

| 1. | it incorrectly assessed the characteristics of the relevant public, failing to take account of the fact that the Appellant’s Skype service was based on a very new and innovative form of technology as at the priority date of the Contested Mark (the ‘Relevant Date’), and therefore that the relevant public had an above average level of technical expertise and an enhanced capability of distinguishing between brands; |
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1.

it incorrectly assessed the characteristics of the relevant public, failing to take account of the fact that the Appellant’s Skype service was based on a very new and innovative form of technology as at the priority date of the Contested Mark (the ‘Relevant Date’), and therefore that the relevant public had an above average level of technical expertise and an enhanced capability of distinguishing between brands;

| 2. | it appears to have wrongly assumed that the Appellant’s acceptance that the goods and services covered by the Contested Mark are identical to certain of the goods and services covered by the earlier mark was also an acceptance that the earlier mark enjoyed an enhanced distinctive character and/or reputation in respect of those areas of crossover with the specification for the Contested Mark as at the Relevant Date; |
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2.

it appears to have wrongly assumed that the Appellant’s acceptance that the goods and services covered by the Contested Mark are identical to certain of the goods and services covered by the earlier mark was also an acceptance that the earlier mark enjoyed an enhanced distinctive character and/or reputation in respect of those areas of crossover with the specification for the Contested Mark as at the Relevant Date;

| 3. | it misapplied the law in several respects when evaluating the Respondent’s assessment of the visual, aural and conceptual similarities of the marks in issue, in particular, by relying on the incorrect legal fiction that the average consumer reads single short words from left to right; by placing undue weight on the coincidence of the letters S-K-Y at the start of both marks; by failing to take account of the graphical element of the Contested Mark; and by failing to appreciate that the conceptual difference between the marks counteracts any visual or aural similarity; |
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3.

it misapplied the law in several respects when evaluating the Respondent’s assessment of the visual, aural and conceptual similarities of the marks in issue, in particular, by relying on the incorrect legal fiction that the average consumer reads single short words from left to right; by placing undue weight on the coincidence of the letters S-K-Y at the start of both marks; by failing to take account of the graphical element of the Contested Mark; and by failing to appreciate that the conceptual difference between the marks counteracts any visual or aural similarity;

| 4. | it made two significant errors in upholding the Respondent’s finding that the earlier mark has an enhanced distinctive character in relation to goods and services outside the Interveners’ ‘core’ television broadcasting services: first, it wrongly relied on use of the earlier mark in relation to the Interveners’ ‘core’ services to infer distinctiveness for other services: and secondly, it took account of evidence of use that post-dated the Relevant Date; |
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4.

it made two significant errors in upholding the Respondent’s finding that the earlier mark has an enhanced distinctive character in relation to goods and services outside the Interveners’ ‘core’ television broadcasting services: first, it wrongly relied on use of the earlier mark in relation to the Interveners’ ‘core’ services to infer distinctiveness for other services: and secondly, it took account of evidence of use that post-dated the Relevant Date;

| 5. | it misapplied the law in several respects when conducting the overall assessment of the likelihood of confusion by failing to take into account:






  i. | the substantial reputation enjoyed by the Contested Mark at the Relevant Date; and |
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5.

it misapplied the law in several respects when conducting the overall assessment of the likelihood of confusion by failing to take into account:

i.

the substantial reputation enjoyed by the Contested Mark at the Relevant Date; and

| ii. | real-world evidence that the marks in issue have peacefully coexisted in the market place for over ten years, with no infringement action having been brought by the Interveners, which is strongly indicative that there was no likelihood of confusion at the Relevant Date. |
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ii.

real-world evidence that the marks in issue have peacefully coexisted in the market place for over ten years, with no infringement action having been brought by the Interveners, which is strongly indicative that there was no likelihood of confusion at the Relevant Date.

likelihood

Accordingly, the Appellant requests that the Court: (1) annuls the decision of the General Court in case number T-423/12 and remits the application to the Respondent in order to allow it to proceed; and (2) orders that the costs of the proceedings be awarded to the Appellant.

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(1)  OJ L 78, p. 1.

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