Aldi v EUIPO - Sky (SKYLITe) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-736/15 (19 October 2017)

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(EU trade mark — Opposition proceedings — Application for the EU figurative mark skylite — Earlier EU word mark SKY — Proof of use of the earlier mark — Article 15(1) and Article 42(2) and (3) of Regulation (EC) No 207/2009 — Rule 22(2) of Regulation (EC) No 2868/1995 — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Regulation No 207/2009)

Aldi GmbH & Co. KG, established in Mülheim an der Ruhr (Germany), represented by N. Lützenrath, U. Rademacher, C. Fürsen and N. Bertram, lawyers,

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Sky plc, established in Isleworth (United Kingdom), represented by J. Barry, Solicitor,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 October 2015 (Case R 2771/2014-4) relating to opposition proceedings between Sky and Aldi,

composed of D. Gratsias, President, A. Dittrich (Rapporteur), P.G. Xuereb, Judges,

having regard to the application lodged at the Court Registry on 17 December 2015,

having regard to the response of the intervener lodged at the Court Registry on 25 April 2016,

having regard to the response of EUIPO lodged at the Court Registry on 27 April 2016,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 22 February 2013, the applicant 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).

3 The goods in respect of which registration was sought are in, inter alia, Classes 9 and 18 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, for each of those classes, to the following description:

– Class 18: ‘Trunks and travelling bags; Boston bags; Elastic bags for clothing; Barrel bags; Gladstone bags; Athletic bags; Holders in the nature of wallets for keys; Bags made of imitation leather; Bags, pouches of leather; Bags for clothes; Wheeled shopping bags; Pouches, of leather, for packaging; Textile shopping bags; Net bags for shopping; Shopping bags; Leather shopping bags’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 59/2013 of 26 March 2013.

5 On 13 June 2013, the intervener, Sky plc, previously British Sky Broadcasting Group plc, filed a notice of opposition, pursuant to Article 41(1) of Regulation No 207/2009, to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.

6 The opposition was based on several earlier marks, including, in particular, the EU word mark No 006870992 SKY, registered on 8 August 2012 for goods and services within, inter alia, Classes 9 and 18, and corresponding, for each of those classes, in particular to the following description:

– Class 9: ‘Cases, containers, protective coverings and parts and fittings therefor, all for use with MP3 players, music storage devices, media storage devices and other consumer electronic devices’;

– Class 18: ‘Leather and goods made of leather and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; handbags, backpacks, school bags, beach bags, travelling bags, suitcases, trunks, haversacks, bags for campers, fur-skins, collars for animals, covers for animals, boxes of leather or leather board, attaché cases, pocket wallets, school satchels and briefcases, key cases (leatherwear) attaché cases, backpacks, beach bags, briefcases, canes, card cases, key cases, leather shoulder belts net bags, parasols, pocket wallets, purses, pouches, rucksacks, school bags, school satchels, sling bags, shopping bags, suitcases, garment bags, tote bags, travelling trunks, valises, vanity cases, umbrella covers, and wallets; none of the aforementioned being made from imitations of leather.’

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b), (4) and (5) of Regulation No 207/2009.

8 By letter of 24 February 2014, the applicant requested that the intervener produce proof of use of the earlier marks, pursuant to Article 42(2) and (3) of Regulation No 207/2009. By letter of 6 March 2014, EUIPO told the applicant that that request had not been taken into consideration because the earlier marks had not been registered for at least five years at the date of publication of the mark sought.

9 On 27 October 2014, the Opposition Division upheld the opposition on the basis of the earlier mark and rejected the application for registration of the EU mark for the goods referred to in paragraph 3 above.

10 On 30 October 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

11 By decision of 20 October 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. Making reference in particular to the earlier mark referred to in paragraph 6 above, it first of all held, in essence, that the request for proof of use made by the applicant by document of 24 February 2014 was inadmissible in so far as it referred to that earlier mark since, at the date of publication of the mark applied for, the earlier mark had been registered for less than five years, which is the period of time required by Article 42(2) of Regulation No 207/2009.

12 Next, the Board of Appeal, in the contested decision, held that, having regard to the degree, which was at least average, of the visual and aural similarity between the signs at issue resulting from the word ‘sky’, to the conceptual similarity between the marks to the extent that they share the concept of sky and to the identity of the goods at issue, there was a likelihood of confusion between the signs at issue for the goods at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

– order the applicant to pay the costs, including those incurred in the proceedings before the Opposition Division and before the Board of Appeal of EUIPO.

16 In support of the action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 42(2) and (3) and Article 15(1) of Regulation No 207/2009, read in conjunction with Rule 22(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 laying down detailed rules for the application of Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), second, infringement of Article 8(1)(b) of Regulation No 207/2009.

The first plea in law, alleging infringement of Article 42(2) and(3) and Article 15(1) of Regulation No 207/2009, read in conjunction with Rule 22(2) of Regulation No 2868/95

17 The applicant submits that, even though the marks relied on in support of its opposition had not been registered for at least five years at the date of the publication of the application for the mark sought, which is the period laid down in Article 42(2) and (3) of Regulation No 207/2009 and Article 15(1) of that Regulation, EUIPO was required, in this case, to apply those provisions read in conjunction with Rule 22(2) of Regulation No 2868/1995. Consequently, EUIPO should have required the intervener to produce proof of genuine use of the earlier mark. The application of Article 42(2) and (3) and of Article 15(1) of Regulation No 207/2009 was, exceptionally, necessary in the case of the repeated applications of an earlier mark which seek to circumvent or prolong the ‘grace period’ of five years for use of mark, as set out in the provisions of Regulation No 207/2009 and which, for that reason, appear to be ‘abusive’. That is the interpretation that the Boards of Appeal upheld in the cases that gave rise to the decisions of the fourth and second Boards of Appeal of EUIPO, in R 1785/2008-4, of 15 November 2011 (PATHFINDER) and R 1260/2013-2, of 13 February 2014 (KABELPLUS).

18 However, in the present case, between 1995 and 2009, the intervener developed a ‘practice of re-filing identical trade mark registrations’, by asking, on several occasions, for registration of the word sign ‘sky’ as an EU mark or a national mark, in particular for goods within Classes 9 and 18. Those fresh applications ‘clearly’ had the one sole purpose of extending ‘artificially’ the ‘grace period’ referred to in Article 42(2) and (3) and Article 15(1) of Regulation No 207/2009.

20 In that regard and in the first place, it should be recalled that, according to settled case-law, Article 42(2) of Regulation No 207/2009, as applicable at the time of the facts, only requires the opponent to produce, at the applicant’s request, proof of genuine use of the earlier mark ‘provided that at [the date of publication of the application for registration] the earlier Community mark was registered for not less than five years’. Consequently, where the earlier mark relied on in support of an opposition is registered for less than five years before the publication of the application for registration of an EU trade mark, proof of genuine use cannot still be required (see judgment of 16 May 2012, Wohlfahrt v OHIM — Ferrero (Kindertraum), T‑580/10, not published, EU:T:2012:240, paragraph 18 and the case-law cited).

21 In the present case, it is common ground that at the date of the publication of the application for registration of the mark sought, namely the 26 March 2013, the earlier mark, which had been registered on 8 August 2012, had not been registered for at least five years.

22 The Board of Appeal was therefore fully entitled to hold that the request for proof of use of the earlier mark was not admissible.

23 That conclusion is not called into question by the applicant’s argument that the latter provision applied, because the intervener operated a ‘practice of re-filing identical trade mark registrations’ to obtain the registration of the word sign SKY regarding, in particular, goods within Classes 9 and 18 as an EU mark or as a national mark, without ever having the intention of using them.

24 That argument raises the question of whether the request for proof of genuine use during the opposition procedure is admissible where the earlier mark on which the opposition is based was registered with the aim of artificially prolonging the period of five years laid down in Article 42(2) of Regulation No 207/2009. As a consequence of that approach, EUIPO would be obliged to take into account the bad faith of an opponent, such as it could have existed at the time when the application for registration of the earlier mark was filed.

25 Nevertheless, such an argument cannot succeed. In that regard, it should be recalled, as EUIPO correctly submitted, that a finding that a person acted with bad faith when filing the application for an EU mark is an absolute ground for invalidity within the meaning of Article 52(1)(b) of Regulation No 207/2009.

26 By contrast with the invalidity procedure, which allows the applicant for an EU mark to contest the validity of an earlier mark, and as follows unambiguously from Article 41(1) of Regulation No 207/2009, the aim of the opposition procedure is to give proprietors of rights the possibility of contesting an application for an EU mark on the basis of earlier rights which conflict with it. More specifically, according to the case-law, in the context of an opposition procedure, EUIPO is even required to presume that the earlier mark is valid (judgment of 8 May 2012, Mizuno v OHIM — Golfino (G), T‑101/11, not published, EU:T:2012:223, paragraph 22). In particular, according to that case-law, in the context of an opposition procedure, EUIPO cannot examine whether a mark fulfils the criteria that constitute an absolute ground for refusal, such as those laid down in Article 7(1) of Regulation No 207/2009 and referred to in Article 52(1)(a) of the regulation.

27 Similarly, in the opposition procedure, EUIPO also cannot examine whether the criteria that constitute a ground of invalidity, such as those referred to in Article 52(1)(b) of Regulation No 207/2009 are fulfilled, as regards the mark relied on in support of the opposition. Neither Article 41 nor Article 42 of Regulation No 207/2009, provide a procedural mechanism that allows the validity of an earlier mark to be contested having regard to the bad faith of the opponent.

28 Consequently, and contrary to the applicant’s submissions, EUIPO was not, in the present case, obliged to examine the question of whether, at the time of the application for registration of the earlier mark for the goods included in Classes 9 and 18, the intervener had acted in bad faith.

29 None of the references made by the applicant to the decisions of the Boards of Appeal of EUIPO adopted in other cases, such as decision R 1785/2008-4, of 15 November 2011 (PATHFINDER) and decision R 1260/2013-2, of 13 February 2014 (KABELPLUS), is capable of calling into question the conclusion set out in the previous paragraph.

30 First, the Board of Appeal must assess the present case on the basis of Regulation No 207/2009 only and not on the basis of a possible earlier decision-making practice. Secondly, and in any event, the Court is not bound by EUIPO’s decision-making practice (see judgment of 12 March 2014, Borrajo Canelo v OHIM — Tecnoazúcar (PALMA MULATA), T‑381/12, not published, EU:T:2014:119, paragraph 43 and the case-law cited).

31 As regards, ultimately, the alleged violation of Article 42(3) of Regulation No 207/2009, it suffices to recall that the earlier mark is not a national mark. It follows that Article 42(3) of Regulation No 207/2009 does not apply in the present case.

32 It follows from all the foregoing that the applicant’s argument on the question of whether EUIPO should have applied, in the present case, Article 42(2) and (3) of Regulation No 207/2009 and whether EUIPO was, therefore, required to ask the intervener to prove genuine use of the earlier mark, must be rejected.

33 In the second place, as regards the alleged violation of Article 15(1) of Regulation No 207/2009, it must be borne in mind that, under that provision, if, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the European Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark is to be subject to the sanctions provided for in that regulation, unless there are proper reasons for non-use.

34 In that regard, it must be recalled that the time period of five years, laid down in Article 15(1) of Regulation No 207/2009, is identical to the time period referred to in Article 42(2) of that regulation. Furthermore, it must be noted that the procedure referred to in the latter provision is one of the sanctions within the meaning of Article 15(1) of Regulation No 207/2009.

35 In the present case, as is clear from the considerations set out in paragraphs 20 to 32 above, EUIPO was not required to request the intervener to prove genuine use, since, at the time of filing the application for registration of the mark sought, the time period of five years laid down in Article 42(2) of Regulation No 207/2009 had not yet expired, and no derogation to that rule could be upheld in the present case.

36 That interpretation also applies as regards the application of Article 15(1) of Regulation No 207/2009.

37 It follows that the applicant’s argument that the latter provision was breached must be rejected.

38 In the third place, to the extent that the applicant seeks to show that there was a procedural error resulting from a failure to comply with Rule 22(2) of Regulation No 2868/1995, it must be pointed out that, as can be deduced from its wording, read in the light of the seventh recital of that regulation, Rule 22(2) of Regulation No 2868/1995 does not constitute a provision which implements Article 42(2) or (3) of Regulation No 207/2009.

39 As is clear from paragraphs 20 to 32 above, the facts giving rise to the contested decision do not fall within the scope of application of Article 42(2) or (3) of Regulation No 207/2009.

40 In those circumstances, Rule 22(2) of Regulation No 2868/1995 also does not apply and the applicant’s argument that there was a breach of that provision must therefore be rejected.

41 On the basis of the foregoing considerations, the first plea in law must be rejected as unfounded.

The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

42 By its second plea in law, the applicant claims, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by finding, incorrectly, that there was a likelihood of confusion between the signs at issue. In particular, the applicant calls into question the Board of Appeal’s findings as to the existence of visual, aural and conceptual similarity between the signs and the comparison of the goods at issue.

44 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the two 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.

45 According to 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. 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 covered (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).

46 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 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).

47 As regards the relevant public, the Board of Appeal held, in paragraph 25 of the contested decision, that the latter consisted of the general public in all the Member States. As is also clear from that paragraph, the relevant territory is, in the present case, that of the European Union. In paragraph 38 of the contested decision, the Board of Appeal held in essence that the level of attention of the general public was average.

48 Since they are not vitiated by error, those findings, which are not moreover contested by the applicant, must be upheld as regards the goods at issue.

49 As is clear from the whole of the contested decision, and, more specifically, paragraph 26, the Board of Appeal restricted itself, in its assessment of the likelihood of confusion, to the perception by the English-speaking public of the United Kingdom and Ireland.

50 The approach taken by the Board of Appeal referred to in paragraphs 47 and 49 above must be upheld. In the present case, the likelihood of confusion must be assessed from the point of view of the general public in the United Kingdom and Ireland with an average level of attention.

51 According to settled case-law, 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. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (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).

52 The applicant considers, in essence, that the Board of Appeal’s findings on the comparison between the goods at issue are erroneous.

54 In paragraph 27 of the contested decision, the Board of Appeal held that the goods within Class 9 covered by the mark applied for, namely ‘bags adapted for laptops; sleeves for laptops’were identical to ‘cases, containers, protective coverings and parts and fittings therefor, all for use with MP3 players, music storage devices, media storage devices and other consumer electronic devices’, covered by the earlier mark. According to the Board of Appeal, that is the case because the goods are all intended to protect electronic devices, target the same consumers and could have the same producer and the same distribution channels. In particular, according to the Board of Appeal, the goods covered by the mark applied for are included in the wider category of ‘protective coverings for consumer electronic devices’.

55 The applicant challenges those assessments. In its opinion, the mere fact that the goods at issue within Class 9 ‘cases, containers, protective coverings and parts and fittings therefor, all for use with MP3 players, music storage devices, media storage devices and other consumer electronic devices’as covered by the earlier mark, on the one hand, and the goods covered by the mark applied for that fall within the same class, namely ‘bags adapted for laptops; Sleeves for laptops’, on the other hand, serve to protect electronic devices, is insufficient to make them identical.The earlier mark covered only, according to it, ‘cases’, ‘containers’ and ‘protective coverings’ but not ‘bags’ which are included in the list of goods for the contested mark. Those ‘bags’ were, according to it, in addition to their protective function, also a means of transporting electronic devices, because they were normally equipped with a number of compartments, straps etc.

56 In that regard, it must be held that ‘protective coverings’ falling within Class 9 covered by the earlier mark, constitute a broad category which covers both ‘bags adapted for laptops’ and ‘sleeves for laptops’ covered by the mark applied for.

57 As regards the applicant’s argument that ‘bags’ within Class 9 covered by the mark sought were, in addition to their protective function, a means of transporting electronic devices which is normally equipped with a number of compartments, straps etc., which would exclude the identity of those goods with ‘protective coverings’, protected by the earlier mark, it must be held that the fact that those bags also serve as a means of transporting electronic devices does not take anything away from the fact that they also have a protective function and that, for that reason, they fall within the category of ‘protective coverings’ protected by the earlier mark. Consequently, the bags covered by the mark applied for can be regarded as being identical to the ‘protective coverings’ covered by the earlier mark. Furthermore, by stating that the goods at issue had, ‘beyond their protective function’, the nature of a means of transporting electronic devices, the applicant itself implicitly acknowledged that the bags covered by the mark applied for had a protective function.

58 As regards the argument that the ‘bags’ covered by the mark applied for could be equipped with other compartments, straps etc., it must be held that ‘protective coverings’, covered by the earlier mark could also have such accessories.

59 In those circumstances, the findings made by the Board of Appeal as regards the comparison of the goods within Class 9 must be upheld, and the applicant’s arguments that call those findings into question must therefore be rejected.

60 In paragraph 28 of the contested decision, the Board of Appeal recalled the findings of the Opposition Division, according to which most of the goods covered by the mark applied for and contained within Class 18 were identical and some were highly similar to the goods in the same class, as protected by the earlier mark. While agreeing with those findings, the Board of Appeal added that ‘bags made of imitation leather’ and ‘athletic bags’, which were included amongst the goods at issue within Class 18 were not only highly similar, but also identical to some of the other earlier goods. More specifically, the broader category of ‘bags made of imitation leather’, as covered by the mark applied for, included the different types of bags covered by the earlier mark. Similarly, ‘athletic bags’ covered by the mark applied for, on the one hand, and ‘sling bags’ included in the range of goods protected by the earlier mark, on the other hand, also overlapped.

61 The applicant disputes those findings in part. According to it, the goods ‘bags made of imitation leather’ covered by the mark applied for cannot be regarded as identical to the goods in Class 18 covered by the earlier mark since the latter explicitly excludes goods made of imitation leather. That difference in the material suffices to mean that the goods cannot be identical. That is because an important difference exists in terms of price, quality and durability between bags made of leather and those made of imitation leather. Furthermore, companies that manufacture bags made of leather will not regularly and simultaneously offer bags made of imitation leather, something of which the consumer is also aware.

62 ‘Athletic bags’ and ‘sling bags’ also cannot be identical, according to the applicant. While the distinctive feature of ‘sling bags’ is that they normally have a long strap so that the bag can be carried over the shoulder, what distinguishes ‘athletic bags’ is the fact that they are normally carried at a person’s side using two short grips. ‘Athletic bags’ are often very large and open and closed in part by two zips. Finally, the latter goods are solely intended for a specific sport, namely athletics.

63 As regards the goods within Class 18, it should be noted that the applicant only disputes the findings of the Board of Appeal relating to, first, ‘bags made of imitation leather’, as covered by the mark applied for and, secondly, the comparison made between ‘athletic bags’ designated by the mark applied for and ‘sling bags’, as covered by the earlier mark.

64 As regards the goods covered by the earlier mark other than ‘bags made of imitation leather’ and ‘athletic bags’, the Board of Appeal was fully entitled to conclude that there was an identity between those goods and goods within Class 18 covered by the earlier mark.

65 By contrast, as regards the Board of Appeal’s conclusion that ‘bags made of imitation leather’, as covered by the mark applied for, are identical to the goods covered by the earlier mark, it should be recalled that the specification of the goods within Class 18, as covered by the earlier mark, is followed by the restrictive note: ‘none of the aforementioned being made from imitations of leather’. For that reason, and contrary to what can be deduced from paragraph 28 of the contested decision, ‘bags made of imitation leather’, as covered by the mark applied for, are not identical to the goods within Class 18 covered by the earlier mark.

66 However, as EUIPO correctly submitted in its defence, ‘bags made of imitation leather’, as covered by the mark applied for, are, in any event, highly similar to ‘goods made of leather and not included in other classes’ covered by the earlier mark, given that imitation leather is intended to replace leather in the manufacture of goods corresponding to, specifically, in the present case, bags.

67 It is true that, as the applicant submits, there is a difference in terms of price, quality and durability between bags made of leather and those that are made of imitation leather. Furthermore, it cannot be excluded overall that a certain number of companies that produce leather bags do not usually simultaneously offer bags made from imitation leather.

68 All those arguments made by the applicant do not however take away from the fact that the goods in those materials have the same intended purpose. Moreover, all the goods in those materials can coincide not only at the level of distribution channels, but also at the level of producers. All manufacturers of leather bags do not exclude the manufacture of bags from imitation leather.

69 As regards the comparison between ‘athletic bags’ as covered by the mark applied for, and ‘sling bags’, as protected by the earlier mark, it is true that ‘sling bags’ often have a long strap to allow them to be worn on the shoulder, whilst a certain number of ‘athletic bags’ can only be held by hand, on one side of the body, by means of two short grips. However, the possibility of holding an athletic bag by hand is insufficient, in itself, to exclude an identity between the two categories of goods. A large number of ‘athletic bags’ also have a strap that allows them to be carried on the shoulder, whilst ‘sling bags’ also often have handles that allow them to be carried by hand.

70 Next, the fact that ‘athletic bags’ are often very large and open and close, in part, by two zips (see paragraph 62 above) is not capable of calling into question the existence of an identity between those goods and ‘sling bags’. It is true that those two categories of goods can have different sizes, given that those sizes are adapted to the intended purpose of those bags, namely the transport of objects for the purpose of, inter alia, sport. However, it cannot be established that ‘athletic bags’ or ‘sling bags’ are, generally speaking, of a particular size for each of those category of goods, which would make it possible to distinguish those goods from one another. As regards ‘athletic bags’ and ‘sling bags’, the difference in size is not therefore a decisive criteria enabling a distinction to be made between those goods. Therefore, the applicant’s argument alleging that there are differences in size must be rejected.

71 The same conclusion must be reached in respect of the applicant’s argument regarding the significance of the zips on the identity of the goods. ‘Sling bags’ can also have zips. As regards ‘athletic bags’ and ‘sling bags’, the absence or presence of zips also does not enable those goods to be distinguished from one another.

72 Finally, the applicant’s argument that ‘athletic bags’ are exclusively intended for a specific sport, namely athletics (see paragraph 62 above) is also not capable of calling into question the Board of Appeal’s conclusion regarding the identity of those goods with ‘sling bags’. The fact that the name of a sport, namely athletics, is an integral part of the name of those goods does not mean that those bags are intended only for the purpose of transporting and protecting objects connected with athletics. On the contrary, nothing prevents other objects from being transported in bags said to be for ‘athletics’. The intended purpose of those bags is therefore much broader. That is also the case as regards the intended purpose of ‘sling bags’. Therefore, if the intended purpose is taken into account, the category of ‘sling bags’ includes ‘athletics bags’ with the result that those categories of goods can be regarded as identical.

73 In any event, it follows from the considerations set out in paragraphs 69 to 72 above, that ‘athletics bags’, on the one hand, and ‘sling bags’, on the other hand, are highly similar goods.

74 The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. 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 the 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).

75 The assessment of 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).

76 As regards the visual comparison of the signs, the Board of Appeal held in paragraph 32 of the contested decision that the marks presented a degree of visual similarity that was at least average. In reaching that conclusion, it considered that the earlier mark was reproduced in the mark applied for, in which the element ‘sky’ played an ‘independent, distinctive and co-dominant role’. In addition, according to the Board of Appeal, in the mark applied for, the element ‘sky’ is placed at the beginning of the mark, which most attracts the attention of the consumer.

77 The applicant challenges those assessments. The applicant submits that it is wrong to conclude that there is a likelihood of confusion between the signs at issue on the basis of the identity of only three letters, and despite the presence of important differences which clearly prevail over those common factors. The application for registration of the mark applied for concerns a ‘word/figurative combination’ mark, of which the initial figurative element, namely a black square containing a wavy white line giving the mark applied for a particular graphic configuration, suffices to give a completely different overall impression, namely ‘s’ and ‘kylite’, as regards the mark applied for, and ‘sky’, as regards the earlier mark. By contrast, there is nothing to substantiate the theory of the perception of a ‘sky’ element in the mark applied for. The length of the signs, which is six letters in ‘kylite’ and only three in ‘sky’, also speaks against the similarity of the signs. In the applicant’s opinion, not only is the element ‘lite’ an element that ‘clearly outweighs the other letters in terms of length alone’, but, in the context of goods within Classes 9 and 18, that element, which corresponds to nothing in the earlier mark, would catch the consumer’s attention as being unusual or even strange. The epithet ‘lite’ is normally used for food that is low-calorie or low in fat, and not for goods within Classes 9 and 18. Consequently, the public would remember the element ‘lite’ as a primary feature of the mark applied for. Ultimately, on perceiving it, the public’s attention would therefore be attracted to the element ‘lite’ or, owing to the graphic configuration, to the element ‘kylite’.

79 At the outset it should be noted that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

80 In the first place, it must be recalled that it is true, as noted in paragraph 74 above, that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. However, when faced with a word sign, he will break it down into elements which, for him, have a concrete meaning or which resemble words known to him (see, to that effect, judgments of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 30 and the case-law cited, and of 29 January 2013, Fon Wireless v OHIM — nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 59 and the case-law cited).

81 In the present case, first, it must be noted that, while it is true that the mark applied for contains a figurative element made up of a wavy white line in a black square with rounded corners, it remains the case that that element will be perceived by the average consumer as a stylised ‘s’. The fact that that letter is placed before the letters ‘k’ and ‘y’ will lead the English-speaking part of the relevant public to perceive there a stylised representation of the word ‘sky’, which has a precise meaning in the English language. Thus, from the point of view of the average consumer, the mark applied for can, ultimately, be divided into two word elements, namely the terms ‘sky’ and ‘lite’, the second element at least resembling a word that the English-speaking consumer knows, namely the word ‘light’, of which it is an intentionally misspelled, but common, variation. With the exception of the letter ‘s’, all the letters making up the word element ‘skylite’ are stylised black capital letters. As both the Board of Appeal, in paragraph 31 of the contested decision, and the intervener observed, the stylisation of the letters of the mark applied for is only slight.

82 Secondly, it must be ascertained whether the mark applied for, as described in detail in paragraph 81 above, presents elements that have a distinctive character. Furthermore, the question arises as to what is the relative weight of the elements making up the mark applied for — in other words, whether there are dominant elements.

83 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio(61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47).

84 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition, and as an incidental point, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).

85 As regards the possible distinctive character or dominance of the terms ‘sky’ and ‘lite’, the following observations must be made.

86 First, the terms ‘sky’ and ‘lite’ are unusual for the designation of the goods at issue. As regards the element ‘sky’, it must be observed that it has no relationship with the goods at issue which are of normal distinctive character. As regards the element ‘lite’, it must be noted that, often, it designates a light version of foodstuffs which have reduced calories or fat. Since that meaning bears no relation with the goods in Classes 9 and 18, it must be held that there is also a normal distinctive character for the goods concerned. By contrast, the fact that the word ‘lite’ can have a connection with the goods at issue in that it can be used to express the idea that they weigh less, does not call into question the conclusion that has just been set out in the previous paragraph.

87 Second, given that both are unusual terms for designating those goods, it is impossible to distinguish between those two terms in the sense that one is dominant whilst the other is negligible.

88 In the second place, it must be recalled that, according to the case-law, as a rule, the consumer normally attaches more importance to the first part of signs (judgment of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81).

89 In the present case, as regards the mark applied for, even though it is the letter ‘s’ which is placed at the beginning of the element ‘skylite’, it is the term ‘sky’ which will be perceived by the average consumer as the initial part of that element. That is the case since the word ‘sky’ has a specific meaning in English.

90 It must be held that that initial element ‘sky’, on which the relevant public will focus more in its visual perception of the mark applied for, is the only word of which the earlier mark is constituted.

91 In that regard, it should be recalled that, according to the case-law, the fact that a mark consists exclusively of the earlier mark to which another word has been added is an indication that the two marks are similar (judgment of 12 November 2008, Ecoblue, T‑281/07, not published, EU:T:2008:489, paragraph 28).

92 In those circumstances and having regard to all the considerations set out in paragraphs 80 to 90 above, contrary to the applicant’s arguments, the mere coincidence of the word ‘sky’ in the signs at issue suffices for the conclusion to be reached that, owing to the overall impression given by the two marks at issue, those two marks are visually similar to at least an average degree.

93 None of the arguments advanced by the applicant enables the conclusion in paragraph 92 above to be called into question.

94 First, it is necessary to reject the applicant’s argument that the graphic representation of the sign at issue produces an overall impression enabling the sign to be divided into a figurative element made up of a wavy white line in a black square, on the one hand, and a word element ‘kylite’, on the other hand, which has the consequence that the likelihood of confusion with the earlier mark is excluded.

95 In that regard, it is necessary to refer to the considerations set out in paragraph 81 above. More specifically, first, the graphic representation of that figurative element is not so sophisticated that the consumer would not be able to recognise the letter ‘s’ within the mark applied for. Second, unless there is a particular reason that allows the contrary to be deduced, the average consumer breaks it down into comprehensible elements. In the present case, the consumer will recognise the word elements ‘sky’ and ‘lite’ in the mark applied for and will therefore be able to divide the element ‘skylite’ exactly into those two words. By contrast, breaking down the mark applied for in order to distinguish an ‘s’ from the term ‘kylite’ seems artificial.

96 Secondly, contrary to the applicant’s submissions, the length of the signs does not weigh against the similarity of the signs.

97 It is true that the marks at issue are not the same length. The mark applied for, ‘skylite’, consists of seven letters whereas the earlier mark consists of only three. However, as was noted in paragraph 88 above, as a rule, the consumer normally attaches more importance to the first part of signs. In the present case, the relevant public will focus more on the initial part, ‘sky’, in which it will recognise an English word that has a meaning, and not on the different length of the contested sign.

98 As regards, thirdly, the presence of the element ‘lite’, which is not present in the earlier mark, it is necessary to refer to paragraph 86. Although it is true that the element ‘lite’ is rather unusual in the context of goods within Classes 9 and 18, the graphic representation of that element does not at all change the visual impression created by the initial element ‘sky’ which is, for its part, at least equally strange for the designation of the goods at issue as the element ‘lite’. Finally, for that reason, contrary to the applicant’s submissions, the element ‘lite’ will not therefore be perceived by the average consumer as a principal characteristic of the mark applied for.

99 In paragraph 33 of the contested decision, the Board of Appeal held that, because the earlier mark and the first syllable of the mark applied for, namely the syllable ‘sky’, were pronounced in the same way, the marks at issue had, at least, a medium degree of aural similarity.

100 The applicant contests that finding. According to it, the mark SKY relied on in support of the opposition is not identifiable in the mark applied for. By taking into account only the consistency of the initial element of the mark applied for with the earlier mark, first, the Board of Appeal ignored the fact that the mark did not begin with ‘sky’, but with ‘ky’. Given the strong graphic configuration of the initial element ‘s’ and the dominance of the element ‘lite’, it should be assumed that the mark applied for will be pronounced ‘kylite’. Second, the strong phonetic element in the mark applied for, namely the element ‘lite’, has no equivalent in the earlier mark. Finally, the latter mark is extremely short, the consequence of which is that differences have much greater weight than in longer word signs.

102 Contrary to the applicant’s submissions, the mark applied for does not start, aurally, with a syllable pronounced ‘kaɪ’ according to the international phonetic alphabet published by the International Phonetic Association (written ‘ky’), but with a syllable pronounced ‘skaɪ’ (written ‘sky’). As has been observed in paragraphs 81 and 95 above, the graphic representation of the wavy white line in a black square with rounded corners does not exclude that that element is perceived as a single letter ‘s’. Consequently, contrary to the submissions made by the applicant, the consumer will not pronounce the mark applied for ‘kaɪlaɪt’ (written ‘kylite’), but ‘skaɪlaɪt’. The fact of saying ‘skaɪ’ and ‘laɪt’ will evoke in the mind of the English-speaking public concepts that are well-defined, namely those that are written as ‘sky’ and ‘light’.

103 In those circumstances, since the earlier mark taken as a whole and the first syllable of the mark applied for are pronounced in the same way, the Board of Appeal was fully entitled to hold that there was a medium degree of aural similarity between the signs at issue.

104 That finding is not called in question by the arguments relied on by the applicant.

105 First, as regards the applicant’s argument based on the strong graphic configuration of the initial element ‘s’ and the dominance of the element ‘lite’, it must be recalled, first, that the element consisting of a wavy line representing an ‘s’ is not particularly striking (see paragraph 95 above). Second, the element ‘lite’ does not have a dominant character within the mark applied for (see paragraph 87 above). Furthermore, the consumer will focus on the initial part of the signs and will therefore focus on the element pronounced ‘skaɪ’ which is identical in the two signs. In those circumstances, neither the graphic element ‘s’ nor the aural element ‘laɪt’ succeeds in creating an aural impression that allows the existence of a medium degree, at least, of similarity between those signs to be excluded.

106 Secondly, the fact that the earlier mark is very short, whereas the mark applied for is not, also cannot exclude their aural similarity. In that regard it should be observed that, in comparison with the earlier mark, the mark applied for only contains of one additional syllable. The presence of a second syllable alone does not have such an impact aurally that it can be concluded that there is a lack of similarity between the signs at issue. Given that it is the element ‘sky’ which carries the stress in the term ‘skylite’, it is that element which has greater weight aurally within that term rather than the last syllable ‘lite’. Two marks cannot be regarded as dissimilar when the word element of one of them (‘sky’) is included phonetically in the stressed part of the word elements of the other (‘skylite’).

107 The Board of Appeal held in paragraph 34 of the contested decision that the marks at issue were conceptually similar to the extent that, for the English-speaking consumer, they both refer to the notion of ‘sky’. On the other hand, the Board of Appeal considered that the term ‘skylite’ does not have any meaning in itself. By contrast, the English-speaking consumer will perceive that word as consisting of the words ‘sky’ and ‘lite’, which each have their own meaning.

108 The applicant challenges those assessments. It submits that the specific details of the graphic representation of the mark applied for have as a consequence, conceptually, that the consumer will not perceive the mark as ‘sky’ and ‘lite’. On the contrary, in the applicant’s opinion, he will distinguish, within the mark applied for, the purely made-up term ‘kylite’. Furthermore, even if there were a consistency with the word ‘sky’, which, moreover, does not exist in the present case, it would nevertheless be necessary to take into account the unusual meaning of the term ‘lite’, which has nothing to do with the goods in Classes 9 and 18, but which is used at most to describe foodstuffs with reduced calories or fat. Given that he would be used to associating that term with low-calorie foods, the consumer would give particular attention to the element ‘lite’, which he would perceive immediately and clearly.

109 The assessments made by the Board of Appeal in paragraph 34 of the contested decision must be upheld.

110 The consumer will perceive the term ‘skylite’ as consisting of the words ‘sky’ and ‘lite’, each of which, in English, has its own meaning. Whereas the term ‘sky’ designates the zone of the atmosphere and space viewed from earth, the word ‘lite’ is an intentionally misspelled, but common, variation of the word ‘light’. Since the earlier mark consists of the word ‘sky’, it must be held that there is a conceptual similarity.

111 In the light of the foregoing, it must be held that the opposing marks are conceptually similar.

112 The applicant’s other arguments do not call that conclusion into question.

113 First, a term like ‘kylite’ will not be evoked in the mind of the English-speaking public. That is precluded by the simple fact that the consumer would divide the elements of the mark applied for into parts that have a certain meaning or resemble words that have a certain meaning. The only elements capable of having an individual meaning within the mark applied for are the terms ‘sky’ and ‘lite’. The interpretation given by the applicant to the mark sought, namely that the latter contains the made-up word ‘kylite’, must be rejected as being artificial.

114 Secondly, the applicant’s argument that the meaning of the term ‘lite’, which is not usually used to designate goods within Classes 9 and 18 and which is used more often to describe foodstuffs with reduced calories or fat, which, ultimately, would lead the consumer to pay particular attention to that element, also cannot succeed.

115 In that regard, it is necessary to refer to the considerations set out in paragraph 86 above. Since the elements ‘sky’ and ‘lite’ are uncommon for the designation of the goods at issue, the consumer will only give particular attention to the term ‘lite’.

116 In the applicant’s opinion, taking the visual, aural and conceptual aspects into account, the Board of Appeal’s global assessment of the similarity of the signs is incorrect. The latter completely disregarded the fact that the goods included in the application for registration of the mark applied for — bags, attaché cases, etc. falling within Classes 9 and 18 — are goods that are normally bought ‘on sight’. According to the Court’s case-law, where the goods at issue are mostly bought ‘on sight’, the legal analysis of the likelihood of confusion places the aural similarity in the background. More specifically, in the judgment of 23 January 2008, Demp v OHIM — Bau How (BAU HOW) (T‑106/06, not published, EU:T:2008:14), the General Court held that when goods are purchased at self-service outlets, where the Class 9 and 18 goods at issue in the present case are offered for sale, the goods are normally perceived visually before purchase — although it cannot be ruled out that conversations about the relevant goods and trade marks may occur — since the goods, and hence also the trade marks, are on display in those shops. Furthermore, that oral conversation, if it takes place, will be with qualified retail assistants who are in a position to inform the customer about the various marks.

118 As regards the global assessment of the likelihood of confusion, it must be borne in mind that it implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 28 September 2016, The Art Company B & S v EUIPO — G-Star Raw (THE ART OF RAW), T‑593/15, not published, EU:T:2016:572, paragraph 37).

119 The average consumer only rarely has a chance to compare the various marks directly, so he must rely on his imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

120 In the present case, as is clear from paragraphs 51 to 72 above, with the exception of ‘bags made of imitation leather’ covered by the mark applied for, which are only highly similar to ‘goods made of leather and not included in the other classes’ covered by the earlier mark, the goods covered by the marks at issue within Classes 9 and 18 are identical. In any event, ‘athletics bags’ covered by the mark applied for are highly similar to ‘sling bags’ covered by the earlier mark.

121 It follows from paragraph 39 of the contested decision that the earlier mark had an average degree of distinctive character for goods included in Classes 9 and 18. That approach must be upheld. For these goods, the word ‘sky’ is devoid of meaning and is therefore unusual. In addition, it is common ground that the intervener has not claimed, nor proven, that the goods have a high level of distinctive character.

122 Finally, it is clear from paragraphs 92, 103 and 111 above, that the marks at issue are similar from a visual, aural and conceptual point of view.

123 Having regard to the considerations that appear in paragraphs 120 to 122, it must be held that the English-speaking part of the relevant public with an average level of attention could believe that the goods covered by the marks at issue come from the same undertaking, namely the intervener, or, as the case may be, from undertakings economically linked to it. Consequently, there is a likelihood of confusion between the marks in question for the goods at issue in the mind of the English-speaking part of the relevant public.

124 That conclusion cannot be called into question by the applicant’s argument that where the goods at issue are bought most frequently ‘on-sight’, the legal analysis of the likelihood of confusion would relegate the aural similarity to the background.

125 That argument is inoperative since the visual and aural similarity between the marks at issue is the same

126 It should also be recalled that the signs at issue in the present case are visually similar owing to the fact that the letters comprising the earlier mark are reproduced in their entirety at the start of the mark applied for. The fact that the single element of the earlier mark (‘sky’) is found at the beginning of the mark sought is a particular detail that could lead the average consumer to confuse the origin of even goods bought ‘on sight’, such as those at issue in the present case.

127 Having regard to all the foregoing considerations, it must be held that the Board of Appeal was fully entitled to hold that there was a likelihood of confusion in the mind of the English-speaking part of the relevant public between the mark applied for and the earlier mark, within the meaning of Article 8(1)(b) of Regulation No 207/2009, for the goods at issue.

128 Accordingly, the applicant’s pleas in law and, consequently, the application in its entirety must be dismissed.

129 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

130 In the present case, EUIPO and the intervener have applied for the applicant to be ordered to pay the costs of the present proceedings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

131 The intervener has also claimed that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before EUIPO. In that regard, it suffices to note that, since this judgment dismisses the action brought against the contested decision, paragraph 3 of the operative part of that decision continues to govern the costs incurred in the course of the opposition procedure and in the appeal proceedings before EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Aldi v EUIPO - Sky (SKYLITe) (EU trade mark - Opposition proceedings : Judgment) [2017] EUECJ T-736/15 (19 October 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T73615.html Cite as: EU:T:2017:729, [2017] EUECJ T-736/15, ECLI:EU:T:2017:729

Court of Justice of the European Communities (including Court of First Instance Decisions)