The hearing officer found that “Sky” did not retain an independent distinctive role in the application and consequently that there would be no confusion. The case demonstrates a somewhat strict approach and highlights that just because a mark is replicated at the start of an application, there is no guarantee that confusion will be found.

Background

Sky opposed a trade mark application for “SkyDuck” for various goods in class 9 such as “Power wires” and “Cell phone cases”. Sky relied on two of its earlier marks, a word mark for “SKY” and a logo mark:  (Series of 2), both covering class 9 goods (the earlier marks): The opposition was grounded on a likelihood of confusion only, and neither mark was subject to proof of use. 

Decision

In summary, the hearing officer found:

• the relevant goods to be identical or similar to varying degrees;
• the average consumer to be the general public, paying a medium degree of attention;
• the marks to be visually, aurally and conceptually similar to a medium degree (at least to the earlier “Sky” word mark);
• despite submissions to the contrary, that “Duck” was not descriptive of the goods at issue; 
• the earlier marks to have a medium degree of inherent distinctiveness; and
• the earlier marks to not have enhanced distinctive character via use (Sky’s evidence was held to be of no assistance since it demonstrated that the goods were sold under the trade marks of other companies). 

Considering these points, the hearing officer proceeded to assess whether there would be either direct or indirect confusion. Direct confusion involves the average consumer mistaking one mark for the other, while indirect confusion is where the average consumer realises the marks are not the same but puts the similarity down to the undertakings being the same or related.

In finding against a likelihood of direct confusion, the hearing officer found “I cannot identify any reason why the average consumer would mistake SkyDuck to SKY”.

In considering indirect confusion, the hearing officer took account of Sky’s submissions that “Sky” maintained an independent distinctive character within the application. In considering this principle, they noted three points established by case law:

1. There are situations in which the average consumer, while perceiving a composite mark as a whole, will also perceive that it consists of two signs one of which has a distinctive significance which is independent of the significance of the whole, and thus may be confused as a result of the identity or similarity of that sign to the earlier mark.
2. The principle does not apply where the average consumer would perceive the composite mark as a unit having a different meaning to the meanings of the separate components
3. Even where an element of the composite mark which is identical to the earlier trade mark has an independent distinctive role, it does not automatically follow that there is a likelihood of confusion. A global assessment still needs to be carried out. 

Taking these considerations into account, the hearing officer found that “Sky” and “Duck” did not form a unitary meaning and agreed that “the word SKY has an independent distinctive character” in the application. Despite this, they found that there was no confusion stating, “I do not consider that SKY is so distinctive that average consumers would assume that no one, other than the opponent, would use this word in their trade mark”.

The hearing officer seemed to take significance from the fact that the DUCK element was not descriptive and “will not be overlooked by the average consumer” so that SkyDuck would not be viewed “as a sub-brand or brand-extension of SKY”.

Finally, the hearing officer acknowledged that the opponent had provided evidence of sub-brands, for example, SKY SPORTS and SKY NEWS. However, it noted that Sky had not relied on these marks either individually or as a family. In any event, they noted that the structure of the application was different to these marks and its second element was not descriptive/allusive.  

Considering the above, the hearing officer refused the opposition.

Key takeaways

Even where an earlier mark is replicated at the start of an application and found to retain an independent distinctive role, it is not a guarantee that a likelihood of confusion will be found.

Relying on marks with a reputation can bolster a case even where there is identity between the relevant goods and services: it would have been interesting to see the result had Sky relied on its famous marks and potential damage such as dilution.

If arguments relating to a family of trade marks are to be raised, the relevant marks and argument need to be pleaded from the outset. 

Case details at a glance

Jurisdiction: UK
Decision level: UKIPO
Parties: Shi Liang (applicant) and Sky Limited (opponent)
Date: 03 March 2026
Citation: O/0179/26
Decision: dycip.com/ukipo-skyduck