CANCELLATION No 12 166 C (INVALIDITY)
Wetter.com GmbH, Reichenaustrasse 19 a, 78467 Konstanz, Germany (applicant), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 Munich, Germany (professional representative)
a g a i n s t
TWC Product and Technology, LLC, 300 Interstate North Parkway, 30339 Atlanta Georgia, United States of America (EUTM proprietor), represented by Sylvie Martin, IBM France Intellectual Property Department, ZAC MERIDIA, Immeuble The Crown, 21 Avenue Simone Veil CS 43338, 06206 Nice Cedex, France (employee representative).
On 02/03/2017, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 12 204 657 is declared invalid for all the contested goods and services, namely:
Class 9: Signalling, checking (supervision), life-saving and teaching apparatus and instruments; magnetic data carriers.
Class 38: Telecommunications.
Class 41: Cultural activities.
Class 42: Industrial analysis and research services; design and development of computer software.
3. The European Union trade mark remains registered for all the uncontested goods and services, namely:
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 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
Class 35: Advertising; business management; business administration; office functions.
Class 41: Education relating to health and wellness; entertainment; sporting activities.
Class 42: Design and development of computer hardware.
Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
4. The EUTM proprietor bears the costs, fixed at EUR 1 150.
REASONS
The applicant filed an application for a declaration of invalidity against European Union trade mark No 12 204 657 ‘WEATHER’ (word mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely:
Class 9: Signalling, checking (supervision), life-saving and teaching apparatus and instruments; magnetic data carriers.
Class 38: Telecommunications.
Class 41: Cultural activities.
Class 42: Industrial analysis and research services; design and development of computer software.
The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the mark is exclusively formed by an English word that indicates a characteristic or the subject matter of the contested goods and services and it refers to the decision of the Fourth Board of Appeal of 19/10/2015, R730/2015-4 in which the Board confirmed the descriptiveness of the German term ‘WETTER’ (weather in English) for the same goods and services as those contested in these cancellation proceedings.
The EUTM proprietor argues that the term is ambiguous and vague and it provides no clear and direct indication regarding the contested goods and services. It is not a normal way of expressing an attribute of the contested goods and services. The EUTM proprietor moreover claims that it has made usage of the mark across the European Union and that the mark, even if it was considered descriptive, would be eligible for registration in view of the fact that it acquired distinctiveness through use. It does not provide any evidence to support this claim and states that it will be provided if the examiner requires so.
The applicant maintains its position.
ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR
According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.
Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.
As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.
However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.
Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).
Descriptiveness – Article 7(1)(c) EUTMR
Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.
It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 25).
By prohibiting the registration as EU trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).
According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested EUTM is registered (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 24).
In accordance with the same case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (PAPERLAB, loc. cit., paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (11/04/2008, C-344/07 P, Focus, EU:C:2008:222, § 21).
The existence of such a relationship must be assessed, firstly, in relation to the goods covered by the contested EUTM and, secondly, in relation to the perception of the relevant public (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30).
In the present case, the contested goods and services are the following:
Class 9: Signalling, checking (supervision), life-saving and teaching apparatus and instruments; magnetic data carriers.
Class 38: Telecommunications.
Class 41: Cultural activities.
Class 42: Industrial analysis and research services; design and development of computer software.
These goods and services target public at large (in particular services in Classes 38 and 41 and also goods in Class 9) and professionals in the respective fields (goods in Class 9 and services in Class 42). The attentiveness of these consumers will vary between average (for example as regards magnetic data carriers) to higher (for example in relation to industrial analysis and research services).
As the contested mark consists of an English word, the relevant public is to be found amongst English-speaking consumers in the European Union, at least, the public in the United Kingdom, Ireland and Malta.
The word ‘WEATHER’ is a commonly used English word that will be understood as ‘condition of the atmosphere in one area at a particular time’ (online Collins dictionary). The meaning of this word has not changed since the filing of the contested mark (11/04/2012).
At the outset, the Cancellation Division notes that there is no reason to depart from the findings of the Fourth Board of Appeal in the case R 730/2015-4 of 19/10/2015 regarding the German term ‘WETTER’.
As regards magnetic data carriers, as correctly argued by the applicant, they may contain information about the weather conditions, weather data related to a particular area, forecasts, statistics etc. Therefore, the mark describes a potential subject matter of these goods.
Signalling apparatus and instruments may be directly transmitting information about weather conditions, such as road signs equipped with sensors and giving information to drivers depending on the weather conditions, showing the wind direction and strength, temperatures, ice on the road etc. These apparatus and instruments may also trigger alarms depending on weather situations. Checking apparatus and instruments include devices that check and measure weather conditions. The contested mark thus describes the purpose or functionality of these goods. The same applies to life-saving apparatus and instruments. As regards teaching apparatus and instruments that include devices used for meteorological studies, ‘weather’ may indicate their purpose and subject matter.
The contested telecommunication services encompass broadcasting of radio and television programmes including programmes about weather conditions and weather forecasting. It also includes webhosting of chatrooms and portals dedicated to weather. Therefore, the contested mark describes the purpose and subject matter of these services.
The contested cultural activities include exhibitions, conferences, gatherings, art shows etc., all of which may be weather oriented, with focus on topics such as weather alterations in the context of climate change etc. Therefore, also in relation to these services, the contested mark describes their subject matter and purpose.
Finally, the contested industrial analysis and research services may deal with weather research and analysis, a common field of research with a vast range of applications. The contested mark thus describes the focus and the subject matter of these services. Software is indispensable for weather forecasting and other research and analysis regarding weather. Therefore, the term ‘weather’ describes the purpose and subject matter of design and development of computer software that include design and development of software for weather forecasting and other weather related operations.
Considering all the above, the Cancellation Division concludes that there is a sufficiently direct and specific relationship between the contested mark and all the contested goods and services and consumers will immediately perceive this connection.
The EUTM proprietor argues that the term ‘weather’ is ambiguous and vague. The Cancellation Division does not see how the term ‘weather’ could be vague and ambiguous. On the contrary, it has a very specific meaning, as explained above, and consumers, both average consumers and professionals, will grasp this meaning immediately.
Moreover, it argues that ‘weather’ is not a normal way of expressing an attribute of the contested goods and services. It gives examples such as computer software. However, it is beyond doubt that consumers, upon encountering the term ‘weather’ on software (or, as is the case of the contested services, design and development of software), they will immediately assume that the term is an indication of the purpose of the software, that is, weather-related software, be it forecasting software, weather statistics or analysis etc.
Considering all the above, it is concluded that the EUTM consists exclusively of an indication that may serve, in trade, to designate a characteristic of the contested goods and services, the same situation already existed at the time of filing of the contested mark, and, therefore, the mark has been registered contrary to the provision of Article 7(1)(c) EUTMR.
Since Article 7(1) EUTMR makes it clear that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a European Union trade mark (28/06/2011, T-487/09, ReValue, EU:T:2011:317, § 80; 17/04/2013, T-383/10, Continental, EU:T:2013:193, § 71-72; 12/06/2013, T-598/11, Lean Performance Index, EU:T:2013:311, § 52), it is no longer necessary to consider, in the present case, the applicant’s arguments alleging breach of Article 7(1)(b) EUTMR.
Acquired distinctiveness
The EUTM proprietor claims that the mark became distinctive through its use across the European Union.
In this case, it was incumbent upon the EUTM proprietor to demonstrate to the Cancellation Division that its EUTM had acquired distinctive character in the part of the European Union where the absolute ground for refusal arose, that is, among the English-speaking population of the EU, either before the date of filing of the mark (11/04/2012) or between the date of registration (06/02/2014) and the application for declaration of invalidity (02/12/2015).
The EUTM proprietor did not submit any evidence to demonstrate that the mark acquired distinctiveness. It stated that it would file evidence of usage ‘if the examiner requires so’. However, the party itself has an obligation to provide, on its own motion, evidence to support all the claims that it deems necessary. The EUTM proprietor had the possibility to file all relevant forms of evidence to substantiate its claim and any documents that were not submitted will not be taken into consideration, nor will they be requested by the Office.
Since the EUTM proprietor did not demonstrate that the mark had acquired distinctiveness through use, this claim must be dismissed.
Conclusion
In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods and services.
COSTS
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
|
María Belén IBARRA DE DIEGO |
Michaela SIMANDLOVA |
Carmen SÁNCHEZ PALOMARES |
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 Cancellation 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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.