W | Decision 2561077 - WHISBI TECHNOLOGIES, S.L. v. Weebly, Inc.

Date Published: Oct 1, 2017

OPPOSITION No B 2 561 077

Whisbi Technologies, S.L., C/ Tarragona, 110, 08015 Barcelona, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Weebly Inc., 460 Bryant Street, Suite 100, San Francisco CA 94107, United States of America (applicant), represented by Mitscherlich Patent- und Rechtsanwälte PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 561 077 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 913 215, namely against all the goods and services in Classes 9, 35 and 42. The opposition is based on European trade mark registration No 11 737 434. The opponent invoked Article 8(1)(b) EUTMR.

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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Data processing equipment and computers, recorded computer programmes and recorded computer operating programs, software that is downloadable digitally or onto magnetic data carriers.

Class 38: Telecommunications and communications via global computer networks and the Internet.

Class 42: Scientific end technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

The contested goods and services are the following:

Class 9: Computer software, namely, software and software development tools and applications for designing, creating, hosting, customizing, modifying, maintaining and updating websites and web pages for others on a global computer network, mobile devices and social media sites and applications; Downloadable software for use by others to customize, modify, maintain and update websites and web pages on a global computer network, mobile devices and social media sites and applications; Interactive multimedia computer program for use by others in designing, creating, modifying, customizing and updating websites and web pages on a global computer network, mobile devices and social media sites and applications; Computer e-commerce software to allow users to perform electronic business transactions via a global computer network, mobile devices and social media sites and applications; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; 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; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus.

Class 35: Advertising, marketing and promoting the products and services of others; Advertising and directory services, namely, promoting the products and services of others by providing a web page featuring links to the websites and web pages of others; Promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; Promoting the goods and services of others by providing a website featuring product information, reviews, discount vouchers, rebates, price-comparison information and the locations or websites from which products or services may be purchased; Business monitoring and consulting services, namely, tracking web sites and applications of others to provide information and analysis regarding traffic patterns, usability, navigability, performance and effectiveness of such sites and recommendations for improving performance, effectiveness and the return on investment of such sites; Business services, namely, advertising, promotion and marketing for others in the nature of email blast campaigns which customers can use to design and send email advertising and promotional campaigns and to manage such campaigns; Advertising; Business management; Business administration; Office functions.

Class 42: Providing temporary use of online non-downloadable software for designing, creating, hosting, customizing, modifying, maintaining and updating websites and web pages for others on a global computer network, mobile devices and social media sites and applications; Application services provider (ASP) featuring software for use in designing, creating, hosting, customizing, modifying, maintaining and updating websites and web pages of others on a global computer network, mobile devices and social media sites and applications; Cloud computing featuring software for use by others in designing, creating, customizing, modifying, maintaining and updating websites and web pages on a global computer network, mobile devices and social media sites and applications; Computer services, namely, cloud hosting provider services; Providing virtual computer systems and virtual computer environments through cloud computing; Consulting services in the field of cloud computing; Developing and hosting a server on a global computer network for the purpose of facilitating e-commerce transactions; Providing on-line non-downloadable software for supporting and managing the creation and sending of bulk electronic mail which customers can use to design and send email advertising and promotional campaigns and to manage such campaigns; Providing temporary use of online non-downloadable software for use by others to customize, modify, maintain and update websites and web pages on a global computer network, mobile devices and social media sites and applications; Computer services, namely, hosting and maintaining an online web site for others to make information available online; Computer services, namely, creating and maintaining websites and web pages for others; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. Although some of the goods and services concerned are likely, by their degree of sophistication and their cost, to be the subject of a more careful purchasing decision, that is not the case for all the goods and services. Therefore, it is considered that the degree of attention displayed by the relevant public may vary from average to high, depending on the goods and services concerned. 

3. The signs

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 earlier trade mark is figurative and consists of a black rectangle incorporating a device element consisting of the white stylised letter ‘W’ surrounded by a blue circle with a yellow dot. This device is followed by the verbal elements ‘WHISBI’ and ‘DECK’, written in standard uppercase letters in white and yellow colour, respectively. The letter ‘W’ in the earlier mark may not necessarily be perceived as such by all the relevant consumers due to its particular stylisation. However, in order to examine the best scenario for the opponent, the analysis will proceed on the assumption that it is a representation of the letter ‘W’.

The contested sign is figurative and consists of the single letter ‘W’, written in a standard computer font in black with a white contour.  

The letter ‘W’ contained in both signs stands for a letter of the Latin alphabet. It has no straightforward and/or descriptive or weak meaning in relation to the relevant goods and services and its inherent distinctiveness is normal. Therefore, the distinctiveness of the contested sign is normal. As regards the word elements ‘WHISBI’ and ‘DECK’ included in the earlier mark they have no (descriptive and/or weak) meaning in relation to the relevant goods and services and their inherent distinctiveness is also normal. This being the case in spite of the fact that the word ‘deck’ exists in English and has a meaning (a lower or upper area of a vehicle, ship or a bus, a flat wooden area next to a house, a set of playing cards, etc. see Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english). This is because none of the meanings describes any specific feature or characteristic of the relevant goods and services.

In addition, as regards the distinctive elements of the signs, it should be mentioned that the black rectangle and blue circle and a dot of the earlier mark are less distinctive than the remaining elements, as it they are simple geometric shapes and their role is mostly ornamental.

The marks have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs have a different structure and layout. The contested sign is a short sign and consists of a single letter, written in a standard font in black colour with a white contour. The earlier mark is a complex mark containing many elements, namely the device element consisting of the rather stylised letter ‘W’ with a blue circle and a dot around it, the distinctive word combination ‘WHISBI DECK’, presented together in a rectangular background. The distinctive word elements ‘WHISBI DECK’, which will certainly not be overlooked in the earlier mark have no counterparts in the contested mark. The only coincidence in the marks is in the letter ‘W’, which however, is depicted differently in both signs and is just one element amongst many others in the earlier trade mark.

Contrary to the arguments of the opponent, although the letter ‘W’ appears in the beginning of the earlier trade mark, its impact in the overall visual impression of the earlier mark is not such that it would stand out amongst the many other co-dominant elements therein. Instead, it is highly likely that it is seen as the abbreviation of the verbal element ‘WHISBI’ that follows it, in which case it will have a somehow subordinate and dependent role as compared to ‘WHISBI’. This is also reinforced by the fact that both the letter ‘W’ and the element ‘WHISBI’ are in white colour. Consequently, in view of all these findings and taking into account the different length of the signs, their different structure as well as the different representation and role of the letter ‘W’ in both signs, it is considered that the signs are not visually similar.

Aurally, the earlier sign will be pronounced as ‘WHISBI DECK’ or, much less likely, as ‘W WHISBI DECK’. The contested sign will be pronounced as ‘W’. Therefore, the marks are aurally not similar or, at best, aurally similar to a limited degree. This is because there is only a minimal aural resemblance between the earlier mark and the contested sign, and that resemblance is restricted to the very first letter of the earlier mark, wherein it is followed by the sound of ten other letters.

Conceptually, as mentioned above, both signs contain the letter ‘W’. The verbal element ‘whisbi’ of the earlier mark has no meaning in the relevant territory. However, the element ‘deck’ included in the earlier trade mark has a meaning in relation to part of the territory and this constitutes a conceptual difference between the signs in relation to the English-speaking part of the public. Although theoretically, there is a certain conceptual link between the signs on account of the common letter ‘W’, especially in relation to the relevant public which will not find any other meaningful concepts in the signs, this conceptual link is not sufficient for establishing conceptual similarity between the signs. This is because the impact of this concept within the earlier mark is blurred by the remaining verbal elements therein – as mentioned above they are inherently distinctive, longer, written in a normal font and, in spite of the fact that they may lack any concept, they will be perceived as primary indicators of origin. In addition, in view of the representation of ‘W’ and ‘WHISBI’ in the earlier mark (both in white), the letter ‘W’ will most likely be perceived as conceptually subordinate to the word ‘WHISBI’ that follows it. Therefore, in view of all the above findings, it is considered that the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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 mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods and services are assumed to be identical to the opponent’s goods and services and they are directed both at the public at large and at a professional public. Depending on the particular circumstances and characteristics of the goods and services, the degree of attention of the relevant public may vary from average to high.

In the present case, the signs are visually and conceptually not similar. They are aurally not similar or, at best, aurally similar to a limited degree. However, this limited similarity at the aural level (if present) is not sufficient to conclude that the signs are likely to lead to a likelihood of confusion or association, even in relation to identical goods and services. This is because the contested sign is sufficiently removed from the earlier mark and any existing similarity is diluted in the overall impression created by the signs.

 

Considering all the above, in particular the lack of visual and conceptual similarity and, at most, the limited level of aural similarity, there is no likelihood of confusion on the part of the public, even assuming that the goods and services are identical. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘W’ will not be perceived as a letter. This is because, as a result of this, that element will be seen as purely figurative and that part of the public will perceive the signs as being dissimilar.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marzena MACIAK

Liliya YORDANOVA

Gueorgui IVANOV

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.