JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
15 October 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark SKYSOFT — Earlier Community word mark SKY — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑262/13,
Skysoft Computersysteme GmbH, established in Kleinmachnow (Germany), represented by P. Ehrlinger and T. Hagen, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and N. Bambara, acting as Agents,
defendant,
the other parties to the proceedings before the Board of Appeal of OHIM, interveners before the General Court:
British Sky Broadcasting Group plc, established in Isleworth (United Kingdom)
and
Sky IP International Ltd, established in Isleworth,
represented by J. Barry and S. Wright, solicitors, and P. Roberts, barrister,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 20 March 2013 (Case R 2503/2011-4) concerning opposition proceedings between British Sky Broadcasting Group plc and Sky IP International Ltd, on one side, and Skysoft Computersysteme GmbH, on the other.
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,
Registrar: C. Heeren, Administrator,
having regard to the application lodged at the Court Registry on 15 May 2013,
having regard to the response of OHIM lodged at the Court Registry on 24 July 2013,
having regard to the response of the intervener lodged at the Court Registry on 9 August 2013,
further to the hearing on 4 July 2014,
gives the following
Judgment
Background to the dispute
1        On 5 December 2005 the applicant, Skysoft Computersysteme GmbH, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The trade mark in respect of which registration was sought is the word sign SKYSOFT.
3        Among the goods and services in respect of which registration was sought are those falling within Classes 9, 35, 37, 38 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, of which those falling under Class 37 correspond, inter alia, to the following description: ‘Maintenance and repair of data processing equipment and computer installations (including equipment for access to networks and computer databases)’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 19/2008 of 13 May 2008.
5        On 13 August 2008 the interveners, British Sky Broadcasting Group plc and Sky IP International Ltd, filed a notice of opposition pursuant to Article 42(1) of Regulation No 40/94 (now Article 41(1) of Regulation No 207/2009) against the registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
6        The opposition was based on the earlier Community word mark SKY, registered on 14 October 2008 under No 3203411, covering goods and services falling within Classes 9, 16, 18, 25, 28, 35, 38, 41 and 42, of which those falling within Class 9 correspond, inter alia, to the following description: ‘Data processing equipment and computers’.
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation No 40/94 (now Article 8(1)(b), (4) and (5) of Regulation No 207/2009).
8        By decision of 30 September 2011, the Opposition Division upheld the opposition in respect of all the goods and services in question, pursuant to Article 8(1)(b) of Regulation No 207/2009, and rejected the application in its entirety.
9        On 30 November 2011 the applicant filed an appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 against the decision of the Opposition Division.
10      By decision of 20 March 2013 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal.
11      In support of that decision, the Board of Appeal essentially took the view, first, that the relevant public consisted of both the general public and the professional public in all the Member States of the European Union, in particular the English-speaking public residing in the United Kingdom, with average or above average level of attentiveness (paragraphs 16 to 43 of the contested decision). Secondly, it found that the goods and services falling within Classes 9, 35, 38 and 42, covered by the marks at issue, were identical, and that the services falling within Class 37 were averagely similar to the goods referred to as ‘data processing equipment and computers’ in Class 9, since they were complementary, could be offered by the same undertaking, could share the same distribution channels and had the same end consumers (paragraphs 17 and 18 of the contested decision). Thirdly, the signs at issue were of average similarity on the visual, phonetic and conceptual levels (paragraphs 21 to 24 of the contested decision). Fourthly, having regard to the evidence, submitted by the interveners, of the earlier mark’s use, including two decisions of the United Kingdom Intellectual Property Office of 15 June 2005 and 25 January 2008 respectively, that mark had a substantial reputation within the United Kingdom in respect of some of the goods and services at issue (paragraphs 26 to 34 of the contested decision) and could not be regarded as having inherently low distinctiveness in respect of those goods and services; that distinctiveness had been strengthened by the intensive use of the earlier mark over a long period and for a wide range of products and services (paragraphs 35 to 39 of the contested decision). Fifthly, taking into account that the goods and services at issue were identical or similar, the average visual, phonetic and conceptual similarity of the signs at issue, as well as the average — or for some goods and services even high — distinctiveness of the earlier trade mark, the Board of Appeal considered that there was a likelihood of confusion in the mind of the relevant public in the United Kingdom in particular, even taking into account a higher degree of attentiveness of that public (paragraphs 43 to 45 of the contested decision).
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to produce the documents lodged by the applicant and the interveners in the proceedings before OHIM;
–        order the interveners to pay the costs, including those incurred by the applicant in the proceedings before OHIM.
13      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
14      The interveners contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including those incurred by the interveners in the proceedings before OHIM.
Law
Preliminary observations
15      The applicant raises a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009. In its view, the Board of Appeal was incorrect in its finding that there was a likelihood of confusion between the goods at issue, on the basis in particular of an erroneous assessment of a high degree of distinctiveness and substantial reputation of the earlier trade mark, the degree of similarity between the signs at issue on the visual, phonetic and conceptual level as well as the degree of similarity between the services falling within Class 37 covered by the mark applied for, on the one hand, and the goods falling within Class 9 covered by the earlier trade mark, on the other.
16      OHIM and the interveners argue that the single plea should be rejected and, therefore, that the action should be dismissed in its entirety.
17      According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may 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. Such likelihood of confusion includes the likelihood of association with the earlier trade mark.
18      As acknowledged by settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraph 30 and the case-law cited).
19      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, 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 are cumulative conditions (see judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42).
20      The assessment of the likelihood of confusion in the mind of the relevant public depends on numerous elements and must be made globally, taking into account all the pertinent factors of the case at hand. That global assessment must, as regards the visual, phonetic or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components (see judgments of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraphs 34 and 35, and of 3 September 2009 in Aceites del Sur-Coosur v Koipe and OHIM, C‑498/07 P, ECR, EU:C:2009:503, paragraphs 59 and 60 and the case-law cited).
The relevant public
21      As a preliminary point, it must be stated that the applicant does not dispute the Board of Appeal’s assessment of the relevant public, which is made up of both the general public and the professional public in all the Member States of the European Union, in particular the English-speaking public residing in the United Kingdom with average or above average level of attentiveness (paragraphs 16 and 43 of the contested decision). In view of the goods and services at issue in the present case, as well as the fact that it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 27 November 2007 in Gateway v OHIM-Fujitsu Siemens Computers (ACTIVY Media Gateway), T‑434/05, EU:T:2007:359, paragraph 36 and the case-law cited), that assessment is not vitiated by any error and should be upheld. It follows from the unitary character of the Community trade mark, established in Article 1(2) of Regulation No 207/2009, that an earlier Community trade mark, such as that in the present case, is protected in an identical manner in all Member States and can be relied on in opposition proceedings against any application for registration of a Community trade mark which would adversely affect that protection, even if only in relation to the perception of consumers in part of the European Union (see judgment of 18 September 2008 in Armacell v OHIM, C‑514/06 P, EU:C:2008:511, paragraph 57).
Comparison of the goods and services
22      It must be noted that the applicant does not dispute the validity of the finding, set out in paragraph 17 of the contested decision, that the goods and services falling under Classes 9, 35, 38 and 42, such as are covered by the marks at issue, are identical. It disputes only the Board of Appeal’s finding, in paragraph 18 of the contested decision, of an average degree of similarity between services for maintenance and repair of equipment and equipment for access to networks and computer databases in Class 37 (see paragraph 3 above), on the one hand, and goods referred to as ‘data processing equipment and computers’ in Class 9 (see paragraph 6 above), on the other. According to the applicant, essentially, it is incorrect to consider that companies selling those goods typically also maintain them, since such services are often offered by independent service providers.
23      However, the Board of Appeal was correct to consider that those goods and services are complementary, since they may be offered by the same undertaking, may share the same distribution channels and have the same end consumers. It is apparent from settled case-law that, in order to assess the similarity between goods, all the relevant features of the relationship between those goods should be taken into account, including, in particular, their nature, their end users, their method of use and whether they are in competition with each other or are complementary (see, by analogy, judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 23). Other factors may also be taken into account, such as the distribution channels of the goods at issue (see judgment of 26 October 2011 in Bayerische Asphaltmischwerke v OHIM — Koninklijke BAM Groep (bam), T‑426/09, EU:T:2011:633, paragraph 48 and the case-law cited). The case-law also makes it clear that the fact that the goods at issue are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (see, to that effect, judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 50). That assessment applies mutatis mutandis to after-sale services offered in those specialist sales outlets for the purpose, in particular, of maintaining and repairing those goods.
24      As is argued by OHIM and the interveners, in the present case the services ‘maintenance and repair of data processing equipment and computer installations (including equipment for access to networks and computer databases)’, as covered by the mark applied for, and the goods ‘data processing equipment and computers (including data storage apparatus and instruments, software and data storage software, and software for video-conferencing)’, as covered by the earlier mark, are indeed complementary, since those maintenance, repair and installation services refer specifically to the goods mentioned above and ensure their proper functioning (see paragraph 18 of the contested decision).
25      Moreover, the applicant has not been able to weaken the sufficiently substantiated assertion that, when selling those goods to their customers, many producers, including in the United Kingdom, offer, particularly on the basis of warranty provisions linked to purchase contracts, such after-sale services, either themselves, or through an integrated retailer or one with which they maintain commercial relations. Accordingly, the applicant’s argument that it is atypical for both the sale and maintenance of the goods at issue to be performed by the same company cannot succeed. It follows that those goods and services often share the same distribution channels and are offered in the same sales outlets specialising in IT and that, accordingly, the perception by the relevant public, including professionals, of the close connections between them is facilitated and the impression that the same undertaking is responsible for their production or provision is strengthened. Since that assessment is sufficient for finding that there is a similarity between the goods and services at issue, it cannot be challenged by the applicant’s allegation, even if proved, that some producers and sellers of computers and IT equipment do not offer maintenance or repair services or service of network environments, those being provided by independent service providers who do not produce or sell goods in Class 9.
26      Consequently, the Board of Appeal was correct in finding an average degree of similarity between the services ‘maintenance and repair of data processing equipment and computer installations (including equipment for access to networks and computer databases)’ in Class 37, on the one hand, and the goods ‘data processing equipment and computers’ in Class 9, on the other hand.
27      Therefore, the Court must reject the head of complaint alleging that the comparison between the goods and services at issue was vitiated by an error.
Comparison of the signs
28      The applicant disputes the Board of Appeal’s assessment that the level of visual, phonetic and conceptual similarity between the signs at issue is average (paragraphs 21 to 24 of the contested decision). In the applicant’s view, there is only a low degree of similarity between those signs. Visually, they clearly differ in the additional element ‘soft’ of the sign applied for. Moreover, the Board of Appeal was wrong in finding that the consumer normally attaches more importance to the first part of a word, since that assertion is not absolute and has to be verified in each individual case. Phonetically, the applicant maintains that the earlier trade mark consists of a single syllable and three letters, clearly distinguishing it from the mark applied for with its two syllables and seven letters. Conceptually, it claims, the differences between the two marks are obvious.
29      As regards the visual comparison, the Court finds that the Board of Appeal was correct in finding, in paragraph 22 of the contested decision, that there is an average degree of visual similarity of the signs at issue on the grounds essentially that, on the one hand, their beginnings, consisting of the common element ‘sky’, are identical and, on the other hand, the relevant public attaches less importance to the additional element ‘soft’ of the sign applied for.
30      In that respect, the interveners have rightly asserted that, in the mind of the relevant English-speaking public, with regard in particular to the goods and IT services covered by the marks at issue (see paragraphs 3 and 6 above), the element ‘soft’, being an abbreviation of the word ‘software’, is descriptive of some of those goods — including software — and services, which further diminishes its importance compared to the element ‘sky’, which does not have such a descriptive character (see paragraphs 32 and 37 below). As the Board of Appeal also found, that is all the more true given that the sign of the earlier trade mark is entirely reproduced at the beginning of the mark applied for. It follows that, already on a visual comparison, the relevant public may perceive the latter sign as being derived from the first sign.
31      With regard to the phonetic comparison, the applicant has not succeeded in challenging the finding of an average phonetic similarity of the signs at issue by reason of the identical pronunciation by the relevant English-speaking public of the common syllable ‘sky’ (see paragraph 23 of the contested decision). Contrary to what the applicant alleges, the fact that the earlier trade mark is limited to that single syllable and three letters, whereas the mark applied for is made up of two syllables and seven letters, is not such as to diminish the average phonetic similarity resulting from that identical pronunciation.
32      On the conceptual level, the applicant merely claims that there are ‘obvious’ differences between the marks at issue. However, as the Board of Appeal held, essentially, in paragraphs 21 and 24 of the contested decision, from the perspective of the relevant English-speaking public, the term ‘sky’ means the ‘region of the atmosphere and outer space seen from the earth’, while the term ‘soft’ refers to ‘something that is not hard or firm’.
33      In that regard, the Board of Appeal did indeed erroneously find that, in the mind of the relevant public, the term ‘soft’ could not, in relation to the goods and services covered by the marks at issue (see paragraphs 3 and 6 above), be described as an abbreviation of the term ‘software’ (see paragraph 30 above). Nevertheless, as OHIM and the interveners argued at the oral hearing, that error is not capable of invalidating the Board of Appeal’s assessment that (i) the combination ‘skysoft’ has no meaning in itself, but that of its two components, and (ii) the signs at issue have an average degree of conceptual similarity due to their common element ‘sky’ (see paragraph 24 of the contested decision). In that context, OHIM has rightly stated that the element ‘soft’ is an adjective qualifying the noun ‘sky’, so that those two elements cannot be considered in isolation and that the relevant public will tend to retain the common reference to the first element.
34      Consequently, it must be held that the Board of Appeal was correct in finding that there was an average degree of visual, phonetic and conceptual similarity between the signs at issue and that the head of complaint to which it relates must be rejected.
Likelihood of confusion
35      With regard to the likelihood of confusion, the applicant disputes the Board of Appeal’s finding that the earlier trade mark is highly distinctive. First, that mark is simply a descriptive reference to the goods and services in question, since the English word ‘sky’ refers to a ‘part of the outer space’ and thus to non-terrestrial television programmes or data transmission paths and therefore has little distinctiveness. Secondly, the Board of Appeal was not entitled to base its decision on a decision of the United Kingdom Intellectual Property Office, since the legality of OHIM decisions must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the European Union judicature. Thirdly, more than 600 entries in the United Kingdom Intellectual Property Office register containing the word ‘sky’ have the effect of ‘diluting’ the distinctiveness of the earlier trade mark. Fourthly, the evidence submitted by the interveners, in particular the statements of Mr W. and Mr M. and the decisions of the United Kingdom Intellectual Property Office, is not sufficient for showing intensive use of the earlier trade mark. Lastly, taking into account all the circumstances of the present case, by reason of the low degree of distinctiveness of the earlier trade mark, the low degree of similarity of the goods and services in question, and the low degree of similarity of the marks at issue, the applicant claims that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
36      However, the Court considers that, given the identity of the goods and services falling under Classes 9, 35, 38 and 42 and the similarity of the goods and services falling under Classes 9 and 37, as referred to in paragraphs 3 and 6 above, as well as the average degree of visual, phonetic and conceptual similarity of the signs at issue, the Board of Appeal was right to consider that, in the mind of the relevant English-speaking public residing in the United Kingdom, even taking into account a greater level of attentiveness than average on its part, there was a likelihood of confusion between the marks at issue (see paragraph 45 of the contested decision).
37      That likelihood of confusion is supported by the fact that the common element ‘sky’ of the marks at issue simultaneously constitutes their distinctive and dominant element, taking into account, in particular, how the element ‘soft’ — as an abbreviation of the term ‘software’ — of the mark applied for is descriptive of some of the goods and IT services in question (see paragraph 30 above) and of its function as an adjective qualifying the noun ‘sky’ (see paragraph 33 above). In that regard, the applicant cannot claim that the earlier trade mark is simply a descriptive reference to the goods and services in question, in particular those associated with telecommunications, television and the transmission of images because the word ‘sky’ refers to non-terrestrial television programmes or data transmission paths (see paragraph 21 of the contested decision). Having regard to the meaning of that word, as understood by the relevant English-speaking public (see paragraph 32 above), and to the absence of any additional qualifier establishing a link with the infrastructure for providing those services, such as the word ‘channel’, such a perception by the relevant public appears to be out of the question.
38      Furthermore, in paragraph 25 of the contested decision, the Board of Appeal correctly recalled settled case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with a less distinctive character (see judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20 and the case-law cited). Moreover, when examining whether a trade mark enjoys a high distinctive character because of its familiarity to the public, all the relevant facts of the case should be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006 in Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, ECR, EU:T:2006:202, paragraph 35 and the case-law cited).
39      In that regard, suffice it to note that the applicant disputes in a very vague manner the probative value of the evidence of use of the earlier trade mark produced by the interveners before OHIM, including the decisions of the United Kingdom Intellectual Property Office of 15 June 2005 and 25 January 2008 and the statements of Mr W. and Mr M. Moreover, the applicant is wrong in submitting that OHIM is not entitled to take into account decisions of national authorities on intellectual property as factors relevant to its assessment, as the Board of Appeal did in the present case (see paragraphs 33, 36 and 37 of the contested decision), since the case-law merely holds that the Community trade mark regime is autonomous and that the legality of Board of Appeal decisions is assessed solely on the basis of Regulation No 207/2009, meaning that OHIM is not required to come to the same conclusions as those arrived at by national authorities in similar circumstances (see, to that effect, judgment of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 49; order of 11 April 2013 in Asa v OHIM, C‑354/12 P, EU:C:2013:238, paragraph 43; and judgment of 17 November 2009 in Apollo Group v OHIM (THINKING AHEAD), T‑473/08, EU:T:2009:442, paragraph 43). Lastly, in a similarly vague and ineffective manner the applicant claims a ‘dilution’ of the distinctiveness of the earlier trade mark by the approximately 600 entries containing the word ‘sky’ in the United Kingdom Intellectual Property Office register.
40      It must therefore be concluded that the Board of Appeal’s assessment that the earlier trade mark had a substantial reputation in the United Kingdom for some of the goods and services in question (paragraphs 26 to 34 of the contested decision) and could not be regarded as having an inherently low distinctiveness in respect of those goods and services (paragraphs 35 to 39 of the contested decision) is not vitiated by any error.
41      It follows, furthermore, that it is not necessary to decide on the applicant’s request for production of the documents lodged by it and by the interveners in the proceedings before OHIM.
42      Accordingly, the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and, consequently, the action must be dismissed.
Costs
43      Under Article 87(2) 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.
44      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred before the Court, in accordance with the forms of order sought by OHIM and the interveners.
45      In so far as the forms of order sought by the interveners concern the costs which they incurred in the proceedings before the Cancellation Division, it is apparent from Article 136(2) of the Rules of Procedure that the Court does not have jurisdiction to adjudicate on the costs relating to the proceedings before the Cancellation Division of OHIM. Their application must therefore be declared inadmissible in this respect (see, to that effect, order of 21 May 2014 in Atlas Transport v OHIM, T-145/08 DEP, ECR (Extracts), EU:T:2014:361, paragraph 17 and the case-law cited). Finally, to the extent that those forms of order concern the costs relating to the proceedings before the Board of Appeal, it is sufficient to state that the contested decision must be upheld in its entirety and that there is no need for the Court to make another ruling on those costs.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Skysoft Computersysteme GmbH to pay the costs.
Prek
Labucka
Kreuschitz
Delivered in open court in Luxembourg on 15 October 2014.
[Signatures]
* Language of the case: English.