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Monday, 29 December 2014

The SKYVolt's the limit, even if you forget the wind, sun and water ...

You can't get blood from a stone, but you might get a bolt from a SKYVolt. Stone Electrical Ltd v British Sky Broadcasting Group plc is a decision of the Controller of the Irish Patents Office dating back to last August, but again it's one of those somewhat overlooked rulings that is worth bringing to the attention of this weblog's trade mark-oriented readers. You can read the decision in full here.

In short, Stone applied to register the word-and-device mark depicted above, right, containing the text ‘SKYVolt Generators of power by Wind, Sun and Water’ for all goods and services applied for relating to the supply and installation of micro-generators powered by renewable energy in Classes 7, 9 and 37. British Sky Broadcasting Group Plc (BSkyB) opposed, citing a number of earlier Community trade marks, including the word SKY which was registered, although not used, for identical goods and services. Said BSkyB, Stone's sign, which included the word SKY in conjunction with a descriptive word to denote particular services (i) caused a likelihood of confusion and association with its own marks, (ii) took unfair advantage of, or caused detriment to, the distinctive character or reputation of its marks and (iii) amounted to passing off.  What's more, said BSkyB, its earlier marks were entitled to additional protection based on their renown and reputation.

Stone maintained that the parties' respective marks were not similar and that there was no likelihood of confusion. Further, since BSkyB operated in a fundamentally different economic sector (television broadcasting, broadband and phone), it could hardly be allowed to claim a monopoly over the word SKY that extended so far..

Dermot Doyle, for the Controller of Patents, dismissed the opposition and allowed the mark to proceed to registration. In his view:

* when comparing the marks, and even disregarding the purely descriptive phrase ‘Generators of power by Wind, Sun and Water’ element of Stone's mark, the marks were more dissimilar than similar -- particularly on a conceptual level.

* turning to assessment of the likelihood of confusion, post-dated evidence from Stone was admissible on the basis that it was necessary to gain a greater understanding of the context in which the average consumer would view the mark: this evidence was taken to show that the mark would be used in relation to the sale, installation and maintenance of significant pieces of electricity generating infrastructure. The average consumer was therefore someone with little knowledge of the goods, and who would therefore carry out extensive research and be reliant upon the advice of experts before making a purchase.

* the fact that the general public associated the trade mark SKY exclusively with BSkyB did not extend that association to any and all marks beginning with that word. In particular the average consumer would not disregard the ‘Volt’ element of Stone's sign and would understand the mark to relate to a specific brand, SKYVolt. This might mean that SKYVolt causes association in the sense of calling to mind the mark of the brand owners of SKY but not that they would associate it with BSkyB's business.

* no particular level of similarity has to be met in order to establish that a later mark takes unfair advantage of or causes detriment to an earlier mark. Even a link in a consumer's mind that is insufficient to cause confusion may be sufficient, if that link or connection relates to the essential function of a trade mark to act as a guarantee of origin distinguishing the goods or services of one undertaking from those of another. Where there is no such connection, unfair advantage cannot be taken, nor will it cause detriment to the distinctive character or the repute of the earlier mark. Here, while the evidence showed the earlier SKY marks enjoyed a reputation in Ireland that extended beyond the limited class of consumers of BSkyB’s goods, and indeed penetrated the consciousness of the wider public, the low-to-medium level of similarity between the parties' marks was insufficient to cause the relevant section of the public to establish a link or connection in trade between the marks.

* where passing off is raised in opposition proceedings, the Controller does not make a finding of fact but merely determines whether the basic ingredients of a passing-off action would exist if an applied-for sign were registered. Here, though, the basic ingredients of an action for passing off were not established: there was no likelihood of confusion or association between the respective marks, BSkyB lacked goodwill in relation to the goods and services at issue and Stone had due cause to adopt its sign. It was inconceivable that BSkyB could suffer loss or damage if SKYVolt was used in a normal and fair manner as a trade mark for the goods and services for which registration was sought.

Merpel laments the snail's-pace progress of this dispute. Stone's application and BSkyB's opposition both date back to 2009, but the hearing took place only in December 2013, the parties were informed of its outcome in January 2014 and the reasons for the dismissal of the opposition were not published until August 2014. Wouldn't it be lovely, she thinks, if the time-scale for what are, after all, often commercially crucial matters to be settled could be condensed into a far shorter period?

If you are wondering about reliance on post-dated evidence, adds the IPKat, there is good authority for it, albeit not from a court that has normally much to do with evidence-gathering on a direct basis.  Said Dermot Doyle at [44]:

"It is generally accepted that in order for any evidence filed in opposition proceedings to be considered relevant it must pre-date the application date. However, the possibility exists that evidence which post-dates the application date may be taken into account in order to gain a greater understanding of the circumstances surrounding a particular case. The Court [of Justice of the European Union] found in Alcon that it is possible, without inconsistency in reasoning or error of law, for material to be taken into account which, although subsequent to the date of filing the application, enables the drawing of conclusions on the situation as it was on that date".
The notion of post-dated evidence in IP proceedings is not confined to trade mark law. Back in 2012 it was considered in the context of patent law too: see this earlier Katnote here.

Sky Cats here
Skye Cats here

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