This article first appeared on World Trademark Review in June 2019. For further information please go to www.worldtrademarkreview.com.
Sky Ltd opposed KID-Systeme's application to register SKYFI in Classes 9 and 37 based on earlier SKY marks in same classes
Opposition Division found that there was a likelihood of confusion and Board of Appeal confirmed
General Court accepted that Sky had not filed evidence of its entitlement to file the opposition based on one of the rights relied on, but the opposition succeeded based on other rights owned by Sky
In KID-Systeme v European Union Intellectual Property Office (EUIPO) (Case T-354/18), the General Court has upheld the earlier decision of the EUIPO in favour of Sky Ltd's opposition to KID-Systeme GmbH's EU trademark application to register the trademark SKYFI in relation to Class 9 goods and Class 37 services.
The opposition was based on claims under Article 8(1)(b) of Regulation 207/2009 (now Article 8(1)(b) of Regulation 2017/1001), which prohibits registration of similar marks for identical or similar goods where there is a likelihood of confusion. Sky Ltd relied on word mark registrations for SKY covering Class 9 goods and Class 37 services.
The Opposition Division of the EUIPO found in favour of Sky on the above grounds. KID-Systeme appealed and the Board of Appeal upheld the decision. KID-Systeme appealed again, to the General Court. KID- Systeme's appeal incorporated both substantive claims (challenging the finding of likelihood of confusion under Article 8(1)(b)) and a smorgasbord of technical and procedural grounds. All grounds of appeal were rejected.
General Court decision
Substantive appeal grounds
KID-Systeme argued that the Board of Appeal was wrong in its assessment of the likelihood of confusion and should have found there was none. The court compared the marks and concluded that the Board of Appeal was correct in holding SKY and SKYFI to be similar, visually, aurally and conceptually. The court also considered the Board of Appeal right to find a likelihood of confusion, given the identity of the goods and services. The appellant's arguments included nothing to cast doubt on that conclusion.
Technical/procedural appeal grounds
KID-Systeme argued that Sky had not filed evidence of its entitlement to file the opposition. Sky was a licensee of one of the rights relied on in the opposition and had not filed evidence it was authorised by the proprietor to oppose. The court accepted this but rejected this ground of appeal because the opposition also succeeded based on other rights which were owned by Sky.
KID-Systeme had requested proof of use of Sky's marks, even though they had not been registered long enough to be subject to proof of use as at the relevant date. KID-Systeme argued that:
the rights Sky relied on were identical re-filings of marks previously filed;
the five-year grace period before they became subject to proof of use therefore did not apply; and
this should have been taken into account by the Board of Appeal.
The court rejected this argument and emphasised that the request for proof of use was inadmissible because the earlier rights were not yet subject to proof of use. The court explained that opposition proceedings were not the correct forum to examine the validity of the earlier rights, which could be challenged separately in invalidity proceedings.
KID-Systeme alleged that the Board of Appeal had misused its powers by basing its decision on a different earlier right from that relied on by the Opposition Division. The court rejected this argument because both rights were included in the opposition and the Board of Appeal had the power to carry out a new, full, examination of the merits of the opposition, based on any rights relied on in the opposition.
Other rejected grounds of appeal included:
an allegation that the Board of Appeal had refused to take into account KID-Systeme's request for oral proceedings (no evidence to show that the Board of Appeal should have concluded it would be expedient to hold oral proceedings);
an allegation that the Board of Appeal was wrong to review the earlier rights in a different order to that listed in the opposition (no requirement to examine the earlier marks in a particular order);
an allegation that KID-Systeme was denied a right to be heard in response to observations filed by Sky on a suspension request (no rule providing a right of response, given that Sky's observations had not introduced any new material); and
an allegation the Board of Appeal had made a manifest error in refusing a suspension request pending a challenge to one of Sky's earlier rights (the Board of Appeal had a broad discretion as to when to suspend proceedings and was justified in refusing the suspension request, in part because the opposition also relied on rights not under challenge).
The decision highlights the broad discretion of the EUIPO's Boards of Appeal and the unwillingness of the EU courts to disturb Board of Appeal findings, especially on hazily argued technical or procedural grounds. KID-Systeme's one minor success also provides a reminder that licensees must file evidence of their entitlement to oppose.