OPPOSITION No B 2 761 545

TWC Product and Technology LLC,  300 Interstate North Parkway, Atlanta Georgia 30339 United States of America (opponent), represented by Sylvie Martin Compagnie Ibm France, 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, The People's Republic of China (applicant), represented by Sakellarides Law Offices,  Adrianou Str. 70, 10556  Athens, Greece (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 761 545 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 15 348 451 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 348 451, namely against all the goods and services in Classes 9 and 42. The opposition is based on, inter alia, European Union trade mark registration No 12 204 657 ‘WEATHER’ and European Union trade mark registration No 10 250 728 ‘THE WEATHER CHANNEL’. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) 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.

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 registrations No 12 204 657 and No 10 250 728.  

1. The goods and services

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

EUTMR No 12 204 657 ‘WEATHER’

Class 9: Digital media featuring information in the fields of health and wellness; Surveying, cinematographic, optical and weighing 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; recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 42: Design and development of computer hardware.

EUTMR No 10 250 728 ‘THE WEATHER CHANNEL’

Class 38: Telecommunications; broadcasting; transmission. 

Class 39: Transport; packaging and storage of goods; travel arrangement; providing information in the field of travel via the Internet, wired and wireless electronic media.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing information in the fields of recreation via the Internet, wired and wireless media; production and distribution of cable, television, radio, satellite, terrestrial, Internet, broadband, and wireless programmes featuring meteorology, weather sciences, weather safety, travel, health, and recreation; online publications in the fields of meteorology, weather sciences, weather safety, travel, health, and recreation. 

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.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; providing information in the field of health 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

Surveying apparatus and instruments are identically contained in both lists of goods.

The contested computer programs [downloadable software] include, as a broader category the opponent’s downloadable software (in the fields of health and wellness). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pressure indicators;  thermometers, not for medical purposes; temperature indicators;  gas testing instruments; precision measuring apparatus; measuring instruments; meteorological instruments; air analysis apparatus have some relevant points in common with the opponent’s weighing apparatus and instruments in the EUTMR No 12 204 657. These goods may serve the same purpose which is measuring, checking/testing. They can have the same distribution channels and relevant public. Therefore, they are similar.

Contested services in Class 42

The contested weather forecasting; meteorological information overlap with the opponent´s providing meteorological information, weather reports, warnings, weather maps, and alert information to others of the EUTMR No 10 250 728. They are identical. 

Computer software design; technical research are identically contained in the lists of services (including synonyms).

Software as a service [SaaS] is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. These services are provided by the same undertakings and distributed through the same channels as the opponent’s design and development of computer software. They target the same public and can be complementary, or in competition. The services are therefore highly similar.

The contested industrial design and the opponent´s industrial analysis and research services in the EUTMR No 10 250 728 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 by technical experts- 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.

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 found to be identical and similar to different degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high, depending on the level of expertise of the relevant public.

3. The signs

1) EU 12 204 657  WEATHER                      2) EU 10 250 728            THE WEATHER CHANNEL
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 earlier marks are word mark ‘WEATHER’ and ‘WEATHER CHANNEL’, and the contested sign is a figurative mark in rather standard typeface ‘MoWeather’ in black colour.

The common 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 Spanish and Italian-speaking part of the public.

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).

All of the signs are meaningless in Spanish and Italian. These signs do not contain elements that could be considered clearly more distinctive, or more dominant (in case of the contested mark) than other elements.

Account is 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).

Visually and aurally, the signs coincide in ‘WEATHER’ and differ in the beginning of the contested sign, ‘Mo’, which has no counterpart in the earlier marks. The marks   also differ in the wording ‘THE’ and  ‘CHANNEL’ only present in earlier mark 2.  

Therefore, the signs are similar to an average degree.

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.

4. 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 marks enjoy enhanced distinctiveness 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.

5. Global assessment, other arguments and conclusion

The goods and services are identical and similar to different degrees.

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.

Considering all the above, there is a likelihood of confusion on the part of the Spanish and Italian-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.

Even a high level of attention for some of the goods and services would not eliminate the likelihood that the consumer will think that the contested mark is in some way economically linked to the earlier mark, because the signs have the same distinctive element and refer to strictly related products and services, all belonging to the same specific field. In this respect, account should be taken of the fact that even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T- 443/12, ancotel, EU:T:2013:605, § 54), given that only rarely would they have the chance to make a direct comparison between the different marks, but will often have to place their trust in the imperfect image of them that they have retained in their minds.

Therefore, the opposition is well founded on the basis of the opponent’s EUTMR No 12 204 657 and EUTMR 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 65 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) and Article (5) 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.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Erkki MÜNTER

Birgit FILTENBORG

Francesca CANGERI SERRANO

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.