Judgments nº T-382/19 of Tribunal General de la Unión Europea, January 27, 2021

• Resolution Date: January 27, 2021
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-382/19

(EU trade mark - Invalidity proceedings - International registration designating the European Union - Word mark skylife - Earlier EU word mark SKY - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) Regulation (EU) 2017/1001))

In Case T-382/19,

Turk Hava Yollari AO, established in Istanbul (Turkey), represented by R. Almaraz Palmero, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, 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, established in Isleworth (United Kingdom), represented by A. Brackenbury, Solicitor, and A. Zalewska, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 23 April 2019 (Case R 880/2018-4), relating to invalidity proceedings between Sky and Turk Hava Yollari,

THE GENERAL COURT (Ninth Chamber),

composed of M.J. Costeira, President, M. Kancheva and T. Perišin (Rapporteur), Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 25 June 2019,

having regard to the response of EUIPO lodged at the Court Registry on 16 September 2019,

having regard to the response of the intervener lodged at the Court Registry on 13 September 2019,

having regard to the request for a stay of proceedings brought by the applicant at the hearing on 2 July 2020,

having regard to the observations of EUIPO and of the intervener lodged at the Court Registry on 1 and 2 July 2020, respectively,

having regard to the decision of 3 August 2020 rejecting the request for a stay of proceedings brought by the applicant,

further to the hearing on 2 July 2020,

gives the following

Judgment

Background to the dispute

1 On 10 July 2006, the applicant, Turk Hava Yollari AO, obtained, from the International Bureau of the World Intellectual Property Organisation (WIPO), international registration No 898322, designating, inter alia, the European Union. The mark in respect of which the international registration was granted is the following figurative sign:

2 The services in respect of which protection was sought are in, inter alia, Class 41 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: ‘Training and education services, organising symposiums, conferences, congresses and seminars, publication services for magazines, books, journals and other printed matter, entertainer services, film production, photography, production of radio and television programmes, translation services’.

3 The international registration reached the European Union Intellectual Property Office (EUIPO) on 26 October 2006 and was recognised on 30 August 2006 as having the same protection as that granted to an EU trade mark with effect from 10 July 2006 as a word mark pursuant to 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 European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)).

4 On 11 July 2011, British Sky Broadcasting Group plc, the predecessor in law to the intervener, Sky Ltd, filed an application with EUIPO for a declaration of invalidity of that mark, in particular, in respect of the services referred to in paragraph 2 above, pursuant to Article 53(1) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation (now Article 60(1) and Article 8(1)(b) of Regulation 2017/1001).

5 In support of its application for a declaration of invalidity, the predecessor in law to the intervener relied, in particular, on the EU word mark SKY, filed on 30 April 2003 and registered on 14 October 2008 (‘the earlier mark’), for goods and services in, inter alia, Classes 16 and 41 of the Nice Agreement and corresponding to the following description:

- Class 16: ‘Printed matter’;

- Class 41: ‘Education except for boarding schools and education in relation to dental services provided to dentistry businesses, including dental laboratory businesses and their personnel, only; providing of training except for providing of training in relation to dental services provided to dentistry businesses, including laboratory businesses and their personnel, only; entertainment’.

6 By decision of 9 April 2018, the Cancellation Division upheld the application for a declaration of invalidity and annulled the contested mark in respect of the services referred to in paragraph 2 above, with the exception of translation services, on the basis of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.

7 On 14 May 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

8 By decision of 23 April 2019 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal.

9 In particular, first, in view of the unitary protection enjoyed by the earlier mark throughout the European Union, the Board of Appeal examined whether there was a likelihood of confusion on the part of the English-speaking public in the European Union.

10 Second, as regards the comparison of the goods and services covered by the marks at issue, the Board of Appeal noted that the training and education services and entertainer services covered by the contested mark were identical to the education, training and entertainment services in the same class and covered by the earlier mark. Moreover, the Board of Appeal stated that the services of organising symposiums, conferences, congresses and seminars covered by the contested mark were similar to the education services covered by the earlier mark, that services of film production, photography, production of radio and television programmes were similar to entertainment services and that publication services for magazines, books, journals and other printed matter were similar to the printed matter covered by the earlier mark.

11 Third, as regards the comparison of the marks at issue, the Board of Appeal submitted that they had, at the very least, an average degree of visual and phonetic similarity and that they were also conceptually similar, taking account of their shared element ‘sky’.

12 Fourth, as regards the existence of a likelihood of confusion, the Board of Appeal observed that, in view of the partial identity and similarity between the goods and services concerned, the similarity between the marks at issue causes a likelihood of confusion on the part of the relevant public, - consisting of the general public, but also of professionals, and thus displaying an average to high level of attention, - between the contested mark and the earlier mark, which has a normal distinctive character.

13 In that regard, the Board of Appeal rejected the applicant’s arguments relating to an alleged peaceful coexistence between the marks at issue and the specific methods of use and the alleged reputation of the contested mark.

Forms of order sought

14 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to declare the registration of the contested mark to be valid;

- order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.

15 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

16 The intervener contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs, including those incurred before the Cancellation Division and the Board of Appeal.

Law

17 In support of its action, the applicant puts forward two pleas in law, alleging, respectively, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, and infringement of the obligation to state reasons.

18 It is appropriate to examine the second plea first.

The second plea in law , alleging infringement of the obligation to state reasons

19 The applicant submits that the Board of Appeal relied on the analysis of the Cancellation Division without carrying out its own analysis on the questions underlying the assessment as to whether there was a likelihood of confusion. In view of the use made of the contested mark and the visual, phonetic and conceptual differences between the marks at issue, the Board of Appeal did not set out the necessary information enabling the conclusion that there is a likelihood of confusion.

20 EUIPO and the intervener dispute those assessments.

21 The first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU, and its objective is, first, to allow those concerned to know the reasons for the measure adopted in order to be able to defend their rights and, second, to enable the EU judicature to exercise its power to review the legality of the decision (judgment of 14 February 2019, Torro Entertainment v EUIPO - Grupo Osborne (TORRO Grande MEAT IN STYLE), T-63/18, not published, EU:T:2019:89, paragraph 70).

22 Whether a statement of reasons satisfies those requirements is a question to be assessed by reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question. Thus, when EUIPO refuses registration of a sign or declares a sign invalid as an EU trade mark, it must...