Skyliners GmbH v European Union Intellectual Property Office.

• Jurisdiction: European Union
• ECLI: ECLI:EU:T:2021:401
• Date: 30 June 2021
• Docket Number: T-15/20
• Celex Number: 62020TJ0015
• Court: General Court (European Union)

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

30 June 2021 (*)

(EU trade mark – Opposition proceedings – Application for EU word mark SKYLINERS – Earlier EU word marks SKY – Relative ground for refusal – Article 8(1)(b) and Article 41(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 46(1)(a) of Regulation (EU) 2017/1001) – Entitlement to file the opposition)

In Case T‑15/20,

Skyliners GmbH, established in Frankfurt am Main (Germany), represented by A. Renck and C. Stöber, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral 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. Zalewska, lawyer, and A. Brackenbury, Solicitor,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 October 2019 (Case R 798/2018‑4) relating to opposition proceedings between Sky and Skyliners,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, S. Frimodt Nielsen and J. Schwarcz (Rapporteur), Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 10 January 2020,

having regard to the response of EUIPO lodged at the Court Registry on 25 March 2020,

having regard to the response of the intervener lodged at the Court Registry on 25 March 2020,

further to the hearing on 11 November 2020,

gives the following

Judgment

Background to the dispute

1 On 21 September 2015, the applicant, Skyliners GmbH, 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), as amended (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 word sign SKYLINERS.

3 The goods and services in respect of which registration was sought are in Classes 16, 25, 35 and 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.

4 The trade mark application was published in Community Trade Marks Bulletin No 2015/218 of 17 November 2015.

5 On 17 February 2016, the intervener, Sky plc, which became Sky Ltd on 19 December 2018, 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 covered.

6 The opposition was based, in particular, on the following earlier marks:

– the United Kingdom word mark SKY, filed on 20 October 2008 and registered on 7 September 2012 under No 2 500 604, covering, inter alia, goods and services in Classes 16, 25, 35 and 41;

– the EU word mark SKY, filed on 18 April 2008 and registered on 8 August 2012 under No 6870992, covering, inter alia, the same goods and services as those covered by the abovementioned earlier United Kingdom word mark SKY;

– the EU word mark SKY, filed on 2 March 2009 and registered on 22 May 2014 under No 8178436, covering, inter alia, the same goods and services as those covered by the abovementioned earlier United Kingdom word mark SKY.

7 The earlier United Kingdom trade mark SKY No 2 500 604 was registered in the name of Sky plc. By contrast, the two earlier EU marks SKY, No 6870992 and No 8178436 (‘the earlier EU marks’), were registered in the name of Sky International AG. In the form used to file the opposition, under the heading ‘Entitlement of opponent’, Sky plc stated, in relation to the earlier EU marks, that it was a licensed company, authorised by the proprietor for the purposes of Article 41(1)(a) of Regulation No 207/2009 (now Article 46(1)(a) of Regulation 2017/1001).

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009. The opposition was directed against all the goods and services referred to in the trade mark application and was based on all the goods and services covered by the earlier marks.

9 On 3 March 2016, EUIPO informed the parties that the opposition had been found to be admissible, ‘at least in so far as it [was] based on the following earlier right: [EU trade mark No] 6870992’. It set the time limits for the opposition proceedings and a period within which Sky plc was required to provide evidence of the existence of earlier rights, namely, until 8 July 2016. Lastly, in an information sheet, EUIPO stated that, where the opposition was filed in the name of a licensee, that licensee had to prove its authorisation, by the proprietor of the marks at issue, to file an opposition.

10 On 7 July 2016, EUIPO granted Sky plc an extension of time until 8 September 2016.

11 On 5 March 2018, the Opposition Division upheld the opposition in its entirety on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the sole basis of the registration of the earlier United Kingdom word mark.

12 On 30 April 2018, the applicant brought an appeal before EUIPO against the decision of the Opposition Division.

13 On 27 June 2019, the intervener provided the Board of Appeal of EUIPO, as an annex to the observations on the appeal, with an extract from the register of United Kingdom Companies House concerning the change of its name from Sky plc to Sky Ltd and a copy of an updated version of the relevant sections of a licence agreement relating to the earlier EU marks, dated 30 November 2012, concluded between Sky International AG and British Sky Broadcasting Group plc, which is the intervener’s former name, used from 1 July 1994 to 21 November 2014 (‘the licence agreement’).

14 By decision of 29 October 2019 (‘the contested decision’), the Board of Appeal of EUIPO dismissed the appeal in its entirety, on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009. Unlike the Opposition Division, the Board of Appeal relied on the earlier EU marks. In addition, it considered that there was no need to examine the other earlier rights and the other grounds on which the opposition was based.

Forms of order sought

15 The applicant claims that the Court should:

– annul the contested decision;

– order EUIPO and the intervener to pay the costs.

16 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

17 The intervener contends that the Court should:

– reinstate and confirm the contested decision, ‘in that there is a likelihood of confusion for the reasons set out by [the Board of Appeal]’;

– ‘dismiss all the applicant’s arguments relating to procedural matters for the reasons set out in [its response], and confirm [the contested decision] in all such respects’;

– award it all the costs incurred in the present proceedings and in the proceedings before the Opposition Division and the Board of Appeal of EUIPO.

Law

18 In support of its action, the applicant relies, in essence, on two pleas in law. The first plea alleges infringement of Article 46(1)(a) of Regulation 2017/1001, read in conjunction with Rule 19(2) and Rule 15(2)(h)(iii) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). In the applicant’s submission, EUIPO erred in finding that the intervener had established, to the requisite legal standard and within the time limit set by the Opposition Division, its entitlement to file the opposition.

19 The second plea alleges infringement of the third subparagraph of Rule 50(1) of Regulation No 2868/95, read in conjunction with Article 94(1) and Article 95(2) of Regulation 2017/1001. That plea comprises, in essence, two parts. As regards the first part of the second plea, the applicant maintains that the Board of Appeal had no discretion to take into consideration the evidence adduced for the first time on 27 June 2019. As regards the second part of the second plea, the applicant submits, on the basis of Article 94(1) of Regulation 2017/1001, that the Board of Appeal did not state any reasons for taking that evidence into consideration.

Preliminary observations

20 As a preliminary point, it should be recalled that, given the date on which the application for registration at issue was filed, namely 21 September 2015, which is decisive for the purposes of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009, in its original version (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 2; see, also, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the rules applicable to the procedure before the Opposition Division and before the Board of Appeal should be indicated.

21 As regards the procedure before the Opposition Division, the procedural provisions of Regulation No 2868/95 on opposition proceedings, namely Rules 15 to 20, are applicable to the present case, in accordance with a combined reading of the transitional provisions laid down in Article 81(2)(a) and (b) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation (EC) No 207/2009...