MoWeather | Decision 2761560
Date Published: Sep 22, 2017
OPPOSITION No B 2 761 560
TWC Product and Technology LLC, 300 Interstate North Parkway, Atlanta Georgia 30339, United States of America (opponent), represented by Compagnie IBM France Sylvie Martin, IBM France Intellectual Property Department ZAC Meridia Immeuble, The Crown 21 Avenue Simone Veil CS 43338, 06206 Nice Cedex, France (employee representative)
a g a i n s t
Moji Co. Ltd, A216, Unit 3 Zone A1 Zhaowei Huadeng Plaza, No. 14 Jiuxianqiao Road
Chaoyang District, Beijing, Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).
On 15/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 761 560 is upheld for all the contested goods and services, namely:
Class 9: Computer programs [downloadable software]; pressure indicators; thermometers, not for medical purposes; temperature indicators; gas testing instruments; surveying apparatus and instruments; precision measuring apparatus; measuring instruments; meteorological instruments; air analysis apparatus.
Class 42: Weather forecasting; design of interior decoration; technical research; industrial design; packaging design; meteorological information; computer software design; dress designing; designing (graphic arts-); software as a service [SaaS].
2. European Union trade mark application No 15 348 436 is rejected for all the above goods and services. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and all of the services of European Union trade mark application No 15 348 436 , namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 12 204 657 ‘WEATHER’, European Union trade mark registration No 10 250 728 ‘THE WEATHER CHANNEL’, European Union trade mark registration No 6 516 496 , European Union trade mark registration No 1 526 987 ‘WEATHER.COM’, Danish trade mark registration No VR 001076 2012 ‘WEATHER CHANNEL’, Danish trade mark registration No VR 002933 2011 ‘WEATHER’ and Portuguese trade mark registration No 312 786 MNA . The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.
PRELIMINARY REMARKS (REPUTATION)
In the present case the opponent invoked, inter alia, Article 8(5) EUTMR.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
The notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.
On 09/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit to submit the evidence was 14/01/2017. Upon request made by the opponent it was extended until 14/03/2017.
Within the given time limit the opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.
SUBSTANTIATION
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards the following national earlier trade marks on which the opposition is based, that is, Danish trade mark registration No VR 001076 2012 ‘WEATHER CHANNEL’, Danish trade mark registration No VR 002933 2011 ‘WEATHER’ and Portuguese trade mark registration No 312 786 MNA .
On 09/09/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 14/01/2017. Upon request made by the opponent it was extended until 14/03/2017.
The opponent did not submit any evidence concerning the substantiation of the aforesaid earlier trade marks.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 204 657 ‘WEATHER’ and European Union trade mark registration No 10 250 728 ‘THE WEATHER CHANNEL’.
- The goods and services
With regard to European Union trade mark registration No 12 204 657 the goods on which the opposition is based are, inter alia, the following:
Class 9: Digital media featuring information in the fields of health and wellness; Surveying, cinematographic, optical, weighing, signalling, checking (supervision), life-saving and teaching apparatus and instruments; downloadable software, files, documents, audio and visual files, and educational materials in the fields of health and wellness; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
With regard to European Union trade mark registration No 10 250 728 the services on which the opposition is based are, inter alia, the following:
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; meteorological services; providing meteorological information, weather reports, warnings, weather maps, and alert information to others; providing information in the fields of meteorology, weather sciences, weather safety, via the Internet, wired and wireless electronic media.
The contested goods and services are the following:
Class 9: Computer programs [downloadable software]; pressure indicators; thermometers, not for medical purposes; temperature indicators; gas testing instruments; surveying apparatus and instruments; precision measuring apparatus; measuring instruments; meteorological instruments; air analysis apparatus.
Class 42: Weather forecasting; design of interior decoration; technical research; industrial design; packaging design; meteorological information; computer software design; dress designing; designing (graphic arts-); software as a service [SaaS].
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 9
Computer programs [downloadable software]; surveying apparatus and instruments are identically contained in both lists of goods (including synonyms), namely the applicant’s list and the opponent’s list (i.e. European Union trade mark registration No 12 204 657).
The contested pressure indicators; thermometers, not for medical purposes; temperature indicators; gas testing instruments; precision measuring apparatus; measuring instruments; meteorological instruments; air analysis apparatus are included in the broad category of, or overlap with, the opponent’s surveying, optical, weighing, signalling and checking (supervision) apparatus and instruments. Therefore, they are identical. The aforementioned comparison concerns European Union trade mark registration No 12 204 657.
Contested services in Class 42
The below comparisons concern the lists of services of the contested sign and European Union trade mark registration No 10 250 728.
The contested weather forecasting; meteorological information are included in the broad category of, or overlap with, the opponent’s meteorological services. Therefore, they are identical.
The contested computer software design is a synonym to the opponent’s design of computer software. Therefore, these services are identical.
The contested technical research; industrial design are included in the broad category of, or overlap with, the opponent’s scientific and technological services and research and design relating thereto. Therefore, they are identical.
The contested software as a service [SaaS] is similar to the opponent’s design and development of computer hardware and software, as they coincide in nature, purpose and provider.
The contested industrial design and the opponent´s industrial analysis and research services have the same nature and purpose because they may be provided by the same undertakings. Furthermore, they are complementary. Therefore, they are considered similar.
The opponent’s technological services and design relating thereto are design services of a technical nature. They are carried out by technical experts and designers for industry. They have the same nature and purpose as the contested services, design of interior decoration; packaging design, dress designing; designing (graphic arts -), which may be provided by the same undertakings in relevant fields. Furthermore, they are complementary. Therefore, they are considered to be similar.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar are directed at the public at large and professionals with specific professional knowledge or expertise.
The degree of attention may vary from average to above average, as some of these goods and services are specialised, rather expensive and purchased infrequently.
- The signs
WEATHER European Union trade mark registration No 12 204 657 THE WEATHER CHANNEL European Union trade mark registration No 10 250 728 | |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The coinciding element ‘WEATHER’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech, Polish and Slovak-speaking part of the public.
The earlier marks are word signs ‘WEATHER’ and ‘THE WEATHER CHANNEL’.
It must be recalled that the lower-case and upper-case letters used in the earlier marks, do not have any impact on the assessment of the signs’ similarity since the earlier marks are word marks and, thus, their protection relates to the respective word elements and not to the specific figurative or stylistic elements which the marks might have (21/09/2012, T-278/10, Western Gold, EU:T:2012:1257, § 44, 46).
As explained above, the word ‘WEATHER’, although this is an English word with a particular meaning, it is meaningless in Czech, Polish and Slovak. The equivalents for the aforesaid word in Czech, Polish and Slovak are respectively ‘počasí’, ‘pogoda’ and ‘počasie’. The remaining words, namely ‘THE’ and ‘CHANNEL’, have also no meaning. Therefore, they all (‘WEATHER’, ‘THE’ and ‘CHANNEL’) are distinctive with regard to the relevant goods and services.
The contested sign is a figurative mark consisting of the verbal element ‘MoWeather’ and some figurative elements that resemble Chinese characters. They are located just above the word ‘MoWeather’. The first and third letters in this word are written in upper-case characters, whereas the rest is written in lower-case letters. This makes the relevant public split it into two separate words, namely ‘Mo’ and ‘Weather’. With regard to the component ‘Weather’ the above assertions shall apply. The other component ‘Mo’ has also no meaning for the relevant public and is therefore distinctive for the relevant goods and services. The figurative element resembling a Chinese character will not be associated by the public with any particular meaning, as it is written in an alphabet that is incomprehensible and illegible for the relevant public. It is therefore of less importance.
In the above it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
The signs under comparison have no elements that could be considered clearly more dominant or distinctive than other elements.
Visually, as far as both earlier marks and the contested sign are concerned they coincide in ‘WEATHER’. However, they differ in the first two letters ‘MO’ of the contested sign and its figurative element being the Chinese letters. Furthermore, taking into account European Union trade mark registration No 10 250 728 and the contested sign, they also differ in the additional words ‘THE’ and ‘CHANNEL’.
Therefore, they are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WEATHER’, present identically in all three signs under comparison. The pronunciation differs however in the in the sound of the first two letters ‛MO’ of the contested mark, which have no counterparts in the earlier marks. It should be noted that the figurative elements of the contested sign will not be pronounced. Furthermore, with regard to European Union trade mark registration No 10 250 728 and the contested sign, the signs also differ in the additional words ‘THE’ and ‘CHANNEL’.
Therefore, they are aurally similar to an average degree (i.e. European Union trade mark registration No 10 25 728 and the contested sign) and similar on an above average degree (i.e. European Union trade mark registration No 12 204 657 and the contested sign).
Conceptually, none of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent claimed that the earlier trade mark enjoys reputation but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
- Global assessment, other arguments and conclusion
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
As concluded above, the goods are identical and the services are partly identical, and partly similar. Visually the signs under comparison are similar and aurally the signs are partly similar to an average degree (i.e. European Union trade mark registration No 10 25 728 and the contested sign) and similar to the degree above average (i.e. European Union trade mark registration No 12 204 657 and the contested sign). The conceptual comparison is not possible.
The similarity between the signs relates to the fact that the entire wording ‘WEATHER’ of the earlier marks is encompassed in the contested sign. Although more attention is usually given to the beginning of a sign, it has already been pointed out by the case-law of the Court that, generally, it does not much matter whether the common element is the first or second element of the mark. The protection against likelihood of confusion applies in both directions: not only is the owner of the earlier mark protected against the fact that the more recent mark will be understood as referring to the goods covered by the earlier mark, but vice versa. As explained above, the additional figurative element being the Chinese letters is of less importance.
The differences between the signs cannot overcome the visual and aural similarities between them, whereas there are important similarities between the earlier marks and the significant part of the verbal element of the contested sign, that is, ‘WEATHER’.
Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the Czech, Polish and Slovak-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 204 657 and European Union trade mark registration No 10 250 728. It follows that the contested trade mark must be rejected for all the contested goods and services.
As the earlier rights (European Union trade mark registration No 12 204 657 and No 10 250 728) lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) EUTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
André Gerd Günther BOSSE | Michal KRUK | Judit |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.