JUDGMENT OF THE GENERAL COURT (First Chamber)
5 May 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark SKYPE — 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‑183/13,
Skype Ultd, established in Dublin (Ireland), represented initially by I. Fowler, Solicitor, J. Schmitt, lawyer, and J. Mellor QC, and subsequently by A. Carboni and M. Browne, Solicitors,
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, intervening before the General Court, being
Sky plc, formerly British Sky Broadcasting Group plc, established in Isleworth (United Kingdom),
Sky IP International Ltd, established in Isleworth,
represented by R. Guthrie, D. Rose, V. Baxter, Solicitors, and T. Moody-Stuart, Barrister, and subsequently by R. Guthrie, D. Rose, Solicitors, T. Moody-Stuart, Barrister, and J. Curry, Solicitor,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 30 January 2013 (Case R 2398/2010-4) concerning opposition proceedings between, on the one side, British Sky Broadcasting Group plc and Sky IP International Ltd and, on the other, Skype Ultd,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen, President, I. Pelikánová (Rapporteur) and E. Buttigieg, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Registry of the General Court on 28 March 2013,
having regard to the response of OHIM lodged at the Court Registry on 4 July 2013,
having regard to the response of the interveners lodged at the Court Registry on 9 July 2013,
further to the hearing on 18 November 2014,
gives the following
Judgment
Background to the dispute
1 On 6 February 2004, the company to which the applicant, Skype Ultd, has succeeded filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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 Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the word sign SKYPE.
3 The services for which registration was sought fall within Class 38 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: ‘Providing voice over Internet protocol (VOIP) peer-to-peer communications, electronic transmission of data and documents over computer terminals and instant messaging services; providing a high speed access to area networks and a global computer information network’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 50/2004 of 13 December 2004.
5 On 14 March 2005, the interveners, British Sky Broadcasting Group plc, now Sky plc, and Sky IP International Ltd, filed, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), a notice of opposition to registration of the mark applied for in respect of the services listed in paragraph 3 above.
6 The opposition was based, in particular, on the earlier Community word mark SKY, which was filed on 30 April 2003 and registered on 14 October 2008, designating in particular the services falling under Class 38 and corresponding to the following description: ‘Telecommunications, including videoconferencing services and sharing of files, images, music, video, photos, drawings, audio-visual, text, documents and data; but excluding telegraph communications services’.
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 On 30 September 2010, the Opposition Division upheld the opposition in respect of all the goods and services in question, on the basis of Article 8(1)(b) of Regulation No 207/2009.
9 On 3 December 2010, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 30 January 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. In particular, it found that the services covered by the marks at issue were identical and that there was an average degree of visual, aural and conceptual similarity between the marks at issue. In the Board of Appeal’s view, the SKY brand enjoys a high degree of distinctiveness in the United Kingdom in respect of the telecommunication and online services in Class 38. Accordingly, the Board of Appeal found there to be a likelihood of confusion, even taking into account a possible higher degree of attention of the relevant consumer. Moreover, the conditions for establishing a reduction in the likelihood of confusion on account of a peaceful coexistence of the marks on the market were not fulfilled in this case.
Forms of order sought by the parties
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12 OHIM and the interveners, Sky plc and Sky IP International Ltd, contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
14 In support of its single plea, the applicant claims, first, that, contrary to the findings of the Board of Appeal, the signs at issue are not similar, second, that the mark applied for has itself acquired, through extensive use, a secondary meaning for the goods and services at issue, serving to counteract any similarity between the signs and, third, that the marks at issue have been coexisting on the market without confusion for many years.
15 OHIM and the interveners dispute the applicant’s arguments.
16 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 must not 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 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.
17 According to settled case-law, the risk that the public might believe that the goods or services at issue 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 perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (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, paragraphs 30 to 33 and the case-law cited).
18 Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 exist in part of the European Union (see, to that effect, judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 76 and the case-law cited).
The relevant public
19 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 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
20 The Board of Appeal took the view that the relevant public consisted of the public at large and the professional public in the whole of the European Union. Nevertheless, in the light of the principle recalled in paragraph 18 above, it confined its examination to the public of the United Kingdom only.
21 The applicant does not dispute that definition of the relevant public, but argues that the relevant consumer is circumspect and chooses the services covered by the mark applied for with care.
22 The Board of Appeal’s assessment — that the relevant public consists of the public at large and professionals — must be upheld. Moreover, the services covered by the marks at issue are made up, in particular, of computer services relating to software or to the creation or hosting of websites. While those services may be used on a daily basis by the end consumer, that consumer does not purchase them regularly and their price is relatively high. Furthermore, they are, in part, technical and specialised in nature.
23 In those circumstances, the applicant is correct to argue that the relevant consumer chooses the services covered by the marks at issue with care.
24 However, contrary to the applicant’s assertion, it cannot be assumed that the average consumer of voice over Internet protocol (VOIP) peer-to-peer communication services is, as a matter of principle, more circumspect and better informed than the average consumer of television services. Peer-to-peer communication services, in spite of their technical nature, are aimed at a general public and using them does not require specific technical expertise, beyond the ability to use a computer and the Internet. Accordingly, it should be assumed that the relevant consumer does not have greater technical expertise than the average end consumer.
Comparison of the services
25 According to settled case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods should be taken into account (see 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 37 and the case-law cited).
26 The Board of Appeal found that the services covered by the marks at issue were identical. That finding — which the parties have not moreover disputed — should be endorsed.
27 While the applicant has, moreover, attempted to base an argument on the fact that the services covered by the mark applied for, as are actually offered on the market, were significantly different to the services covered by the SKY mark, as are actually offered on the market by the interveners, it should be recalled, as OHIM argued during the hearing, that the comparison of the services covered by the marks at issue must be made on the basis of the lists of services as respectively registered or applied for.
Comparison of the signs
28 The global assessment of the likelihood of confusion, in terms of the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, 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 that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
The visual, phonetic and conceptual comparison
29 With regard to the visual comparison with the earlier mark SKY, the Board of Appeal took the view that, even though the mark applied for is written as one word, the relevant public would notice the three letters ‘sky’ common to the two marks, as they are located in the beginning of the sign. Accordingly, there is a medium degree of visual similarity.
30 On the phonetic level, the Board of Appeal took the view that the two signs were pronounced in one syllable (‘skaip’ and ‘skai’) and that the beginning of the marks therefore coincided, the only difference being in the final ‘p’ of the mark applied for. It found that there was a medium degree of phonetic similarity.
31 On the conceptual level, the Board of Appeal took the English word ‘sky’ to mean ‘the region of the atmosphere and outer space seen from the earth’. Although the term ‘skype’ has no meaning in English, the possibility remains that the relevant public will recognise within it the word ‘sky’, which corresponds to the beginning of the mark applied for. Therefore, there is a medium degree of conceptual similarity.
32 The applicant’s arguments relating to the three aspects of the comparison essentially revolve around two axes: (i) the Board of Appeal artificially split ‘skype’ into ‘sky’ and ‘pe’, even though it was a unitary word, and (ii) it did not take into account the fact that, since the marks at issue are relatively short signs, the differences have a greater weight and the impact of the beginning of the sign is reduced, as compared to longer signs.
33 OHIM and the interveners dispute the applicant’s arguments.
34 It must be held that the applicant’s arguments are not capable of undermining the assessment undertaken by the Board of Appeal, according to which the signs at issue are similar visually, phonetically and conceptually.
35 Indeed, even supposing, as the applicant appears to do, that the Board of Appeal unduly based its finding of similarity on the mere fact that the three letters ‘sky’ are reproduced in the beginning of the mark applied for, by disregarding the other relevant circumstances, it should be held that, in this case, a review taking into account all of those circumstances and, in particular, those relied on by the applicant, cannot lead to a different result.
36 The term ‘sky’ which makes up the earlier mark appears in full in the beginning of the mark applied for. It thus represents three fifths of the letters of the mark applied for and its sole syllable is fully heard in the mark applied for when it is pronounced. Contrary to the applicant’s assertions, the pronunciation of the vowel ‘y’ in ‘skype’ is not any shorter than it is in ‘sky’. That latter term remains clearly recognisable within ‘skype’ despite the fact that the mark applied for is written as one word, without there being any ‘artificial separation’, as the applicant claims. It is the very fact that the letters ‘sky’ are found in the beginning of the mark applied for that makes the term ‘sky’, which is a part of the basic vocabulary of the English language, easily identifiable therein.
37 Accordingly, the fact that the identical part of the signs at issue is found in the beginning of the mark applied for is merely one circumstance among others giving rise to similarity between the signs at issue. The mere fact, as the applicant emphasises, that the visual and phonetic differences are of greater importance in short signs — such as the signs at issue — is not sufficient, in this case, to counteract the similarity created by the elements mentioned above.
38 In that context, the applicant’s argument — that recognition, by the relevant public, of the element ‘sky’ in the term ‘skype’ is precluded, since the remaining element ‘pe’ does not have its own meaning — must be rejected. Although the separation, by the average consumer, of a word sign in word elements, which, for that consumer, have a specific meaning or which resemble words that he or she knows, may be assumed in those scenarios where each of the distinct elements has a meaning of its own (RESPICUR, paragraph 19 above, EU:T:2007:46, paragraph 58) and even though such a separation is precluded where there is no element that has a specific meaning (judgment of 11 November 2009 in Bayer Healthcare v OHIM — Uriach-Aquilea OTC (CITRACAL), T‑277/08, EU:T:2009:433, paragraph 55), it follows from the case-law that the recognition, inside a word element, of a word with a specific meaning is not subject to the requirement that the ‘remainder’ of that element also have such meaning (see, to that effect, judgment of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 53).
39 Similarly, the circumstance, relied on by the applicant, that the Court found, in the case giving rise to the judgment of 12 November 2009 in Spa Monopole v OHIM — De Francesco Import (SpagO) (T‑438/07, ECR, EU:T:2009:434, paragraph 24), that it is unlikely that the average consumer will break the sign SpagO down into two words, ‘spa’ and ‘go’, cannot prejudge the probability of the relevant public recognising the element ‘sky’ within the mark applied for in this case. That probability must be assessed in the light of the circumstances of the case, which by necessity differ from those of the case giving rise to the judgment in SpagO (EU:T:2009:434), with regard in particular to the concepts conveyed by the word elements making up the signs at issue. Therefore, having regard to the circumstances identified in paragraphs 36 to 38 above, the Board of Appeal was able to consider, without making any error of assessment, that the possibility cannot be ruled out that the relevant public will recognise the term ‘sky’ in the mark applied for, thus giving rise to a medium conceptual similarity between the two signs.
Likelihood of confusion
40 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and VENADO with frame and others, paragraph 18 above, EU:T:2006:397, paragraph 74).
41 In the present case, the Board of Appeal took the view that, having regard to the identity of the services, the medium degree of phonetic, visual and conceptual similarity of the signs and, for some goods and services, the high degree of distinctiveness of the earlier mark, there was a likelihood of confusion, for the relevant public in the United Kingdom, even taking into account a potentially higher level of attention on the part of the relevant public.
The high distinctiveness of the earlier mark, on account of its recognition by the public
42 As is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24; Canon, paragraph 46 above, EU:C:1998:442, paragraph 18; and 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20).
43 The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that, the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must 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, paragraphs 34 and 35 and the case-law cited).
44 In the present case, the Board of Appeal found that the earlier mark had a high level of distinctiveness, on account of its very large reputation in the United Kingdom, for ‘apparatus for recording, transmission or reproduction of sound and images’ in Class 9, ‘telecommunications’ in Class 38 and ‘entertainment’ in Class 41. It based its finding, in that regard, on a number of items of evidence supplied by the interveners, set out in paragraphs 25 to 31 of the contested decision. According to the Board of Appeal’s findings, it is clear from that evidence:
– that the interveners are the leading supplier of digital television in the United Kingdom, that the Sky group has a very wide and impressive reputation, and that the SKY brand is one of the most well-known brands in the United Kingdom and is regarded by consumers as being at the leading edge of digital media innovation;
– that the SKY CHANNEL service had an audience of 10.7 million households in Europe and that 84% of persons in the United Kingdom had heard of the SKY brand;
– that, in January 2004, more than 12 million households in the United Kingdom had access to the various television channels and that the total number of viewers in the United Kingdom for all SKY-branded channels exceeded 50 million in March 2004;
– that the interveners, which are listed among the major advertisers in the United Kingdom, made large financial investments in various media marketing, advertising and promoting the SKY brand;
– that, in addition to their core broadcasting services, the interveners have offered a broad range of SKY-branded goods and services, including telephony, Internet, e-mail and broadband services, and interactive entertainment, news, sports and film services;
– that the reputation of the SKY mark has been acknowledged by the United Kingdom Patent Office in a number of decisions.
45 It should be considered, having regard to all of those factors, that the Board of Appeal was correct in finding that the SKY mark had an enhanced distinctiveness in the United Kingdom, on account of the public’s recognition of it, for ‘apparatus for recording, transmission or reproduction of sound and images’ in Class 9, ‘telecommunications’ in Class 38 and ‘entertainment’ in Class 41. In particular, contrary to what the applicant argues, the Board of Appeal did not ‘overstate’ that recognition by the public.
46 The Board of Appeal was also correct in finding that the fact that the interveners’ extended range of products stems from their reputed traditional television broadcasting services does not preclude an enhanced distinctiveness of the trade mark ‘SKY’, acquired on account of its recognition by the relevant public, from being extended to other areas of activity, as long as those areas of activity were being developed by the interveners at the date of filing of the Community trade mark application, that is to say, 6 February 2004. As is clear from the evidence analysed by the Board of Appeal, such is the case of the goods and services identified in paragraph 45 above, in respect of which it found an enhanced distinctiveness on account of the recognition of the SKY mark by the relevant public.
The alleged high distinctiveness of the mark applied for, on account of its recognition by the public
47 The applicant argues that the mark applied for has itself acquired, through extensive use, a secondary meaning for the services referred to in paragraph 3 above, namely as a direct reference to the applicant, which serves to counteract any similarity between the signs at issue at issue, in the context of assessing the likelihood of confusion. In its view, that has occurred despite the fact that, at the date of filing of the Community trade mark application, that is to say, 6 February 2004, the services provided under the mark applied for had been on the market for only six months.
48 That argument must be rejected.
49 First, the alleged ‘secondary meaning’ of the mark applied for is in reality nothing other than the distinctiveness of the sign acquired through use, that is to say, a link established by consumers between that sign and the namesake applicant’s provision of the services covered. However, it is not a question of conceptual content being conveyed by the sign itself, which would be independent of the applicant. In addition, in the event that the term ‘skype’ had actually acquired a meaning of its own for identifying the services covered by the mark applied for, it would thus be a generic term, and therefore a descriptive one, for that type of service.
50 Second, according to settled case-law, it is the recognition by the relevant public of the earlier mark and not that of the mark applied for that must be taken into account when determining whether there is a likelihood of confusion between the two marks (see, by analogy, Canon, paragraph 40 above, EU:C:1998:442, paragraph 24; judgment of 3 September 2009 in Aceites del Sur-Coosur v Koipe, C‑498/07 P, ECR, EU:C:2009:503, paragraph 84).
The alleged weak distinctiveness of the earlier mark
51 In paragraphs 33 to 39 of the contested decision, the Board of Appeal took the view, first, that the term ‘sky’ was not descriptive of the television broadcasting services and goods pertaining to them and, second, that the evidence provided by the applicant to demonstrate that that term is widely used by third parties in relation to associated goods and services, is not capable of proving dilution of the SKY mark in the United Kingdom.
52 The applicant argues that the Board of Appeal failed to take into account the fact that the word ‘sky’ is highly evocative of television broadcasting services and that its use by third parties in connection with numerous goods and services in Classes 9, 38 and 42 has resulted in its ‘dilution’ for the services at issue, in such a way as to weaken the scope of protection that could be afforded to the term.
53 OHIM and the interveners dispute the applicant’s arguments.
54 With regard, first, to the alleged ‘dilution’ of the SKY mark, it must be noted that the applicant limits itself to the general and unsubstantiated allegations referred to in paragraph 52 above. In addition, it refers merely in an abstract way to the ‘evidence’ it provided, without indicating what that evidence is. However, it is not for the Court to research and identify which documents within the case file could serve as the basis of the applicant’s arguments (see, to that effect, judgment of 30 January 2007 in France Télécom v Commission, T‑340/03, ECR, EU:T:2007:22, paragraph 30).
55 As regards, second, the alleged inherently weak distinctiveness of the term ‘sky’, it does not appear inconceivable that, contrary to the opinion of the Board of Appeal, that term does have a descriptive character in respect of television broadcasting, by reason of its evocative character in relation to those services, at least in so far as they are transmitted by satellite. Nevertheless, in the present case, the Court does not have to state a view in that regard. First, supposing it were accepted, the inherently weak distinctiveness of the SKY mark for television broadcasting services and for the goods in Class 9 directly related to those services would be overridden by its enhanced distinctiveness for those same goods and products, on account of its recognition by the relevant public, as stated above. Second, the supposed weak inherent distinctiveness for some goods and services would not affect the distinctiveness of the SKY mark for the other goods and services covered by that mark. In those circumstances, the arguments which the applicant seeks to derive from the descriptiveness or evocativeness of the SKY mark are ineffective (see, to that effect, judgment of 9 September 2011 in Deutsche Bahn v OHIM — DSB (IC4), T‑274/09, EU:T:2011:451, paragraph 98).
56 Consequently, the applicant’s arguments must be rejected.
The alleged peaceful coexistence between the marks at issue
57 In paragraphs 51 to 54 of the contested decision, the Board of Appeal took the view that the conditions for taking coexistence into account as a factor which may reduce the likelihood of confusion had not been fulfilled.
58 The applicant claims that the marks at issue have coexisted on the market for several years without being confused, even appearing to the public together in advertisements for the applicant’s products on the interveners’ television channels, without infringement proceedings being brought by the interveners.
59 OHIM and the interveners dispute the applicant’s arguments.
60 In that respect, it should be recalled that, according to the case-law, the possibility cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning the examination of the relative grounds for refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (judgments in Aceites del Sur-Coosur v Koipe, paragraph 50 above, EU:C:2009:503, paragraph 82, and of 11 May 2005 in Grupo Sada v OHIM — Sadia (GRUPO SADA), T‑31/03, ECR, EU:T:2005:169, paragraph 86).
61 In this case, it should be noted, first, that the coexistence of the marks at issue in the United Kingdom can concern only peer-to-peer communication services and not the other services covered by the mark applied for. The applicant has not claimed to have developed its business as regards those other services, before the date of filing of its trade mark application. Coexistence concerning only one isolated and highly specific service among the services covered by the marks at issue cannot diminish the likelihood of confusion for the entirety of those services.
62 Second, at the date of the Community trade mark’s filing, that is to say, 6 February 2004, the applicant’s peer-to-peer communication service, launched in August 2003, had existed for six months. Even accepting the applicant’s claim that that service immediately saw great success following its launch, a period of coexistence of six months, concerning an activity that was not part of the interveners’ ‘core business’, was manifestly insufficient for assuming that the coexistence was based on the absence of a likelihood of confusion in the mind of the relevant public, a criterion which the applicant must show to exist. As the interveners were correct to emphasise during the hearing, the fact that they did not bring, before filing the Community trade mark application, infringement proceedings against the applicant could be based on a variety of reasons and would not necessarily mean that they believed there to be no likelihood of confusion between the marks at issue. It must therefore be held that the applicant has not shown that criterion to exist.
63 Third, the fact that, during a certain period in 2009 and 2010, the interveners agreed to advertise the applicant’s services on their television channels is manifestly not relevant for assessing the situation at the date of filing of the trade mark application, that is to say, 6 February 2004.
64 Consequently, the applicant’s argument based on a supposed peaceful coexistence between the marks at issue must be rejected.
Conclusion as regards the likelihood of confusion
65 The Board of Appeal took the view that, having regard to the identity of the services, the average degree of phonetic, visual and conceptual similarity of the signs and the high degree of distinctiveness of the earlier mark at least in respect of some of the relevant goods and services covered by it, the existence of a likelihood of confusion was confirmed, for the relevant public in the United Kingdom, even taking into account a higher level of attention on the part of the relevant public.
66 That assessment of the Board of Appeal must be approved. In particular, it follows from the foregoing considerations that the arguments of the applicant disputing the assessment of the likelihood of confusion must be rejected. Contrary to what the applicant claims, the signs at issue are visually, phonetically and conceptually similar. In addition, the alleged secondary meaning of the mark applied for cannot be taken into account. Moreover, there has been no peaceful coexistence between the signs at issue on the market, within the meaning of the case-law cited in paragraph 60 above, and, finally, a ‘dilution’ of the earlier trade mark has not been shown.
67 In the light of all the foregoing, the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
68 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the interveners.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders Skype Ultd to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Sky plc and Sky IP International Ltd.
Kanninen | Pelikánová | Buttigieg |
Delivered in open court in Luxembourg on 5 May 2015.
[Signatures]