OPPOSITION No B 2 713 702

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

Wetter.com GmbH, Reichenaustraße 19 a, 78467 Konstanz, Germany (applicant), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 713 702 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 103 833 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 103 833 for ‘WETTER’. The opposition is based on European Union trade mark registration No 12 204 657 for ‘WEATHER’. The opponent invoked Articles 8(1)(a), (b) and 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.

1. The goods and services

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

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 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.

The contested goods and services are the following:

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 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.

Contested goods and services in Classes 9, 25, 35, 41, 42 and 45

All the contested goods and services are identically contained in both lists of goods and services.

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 are partly directed at the public at large, for example clothing in Class 25 and some are more specialised goods and services directed at business customers with specific professional knowledge or expertise, such as design and development of computer hardware in Class 42.

The public’s degree of attention may vary from average to above average, depending on the price, specialised nature, or terms and conditions of the purchased goods and services. Some of the goods/services are not very frequent purchases, their price could also be high and some of the services can have severe consequences for someone’s properties or safety or have consequences on a legal level.

3. The signs

WEATHER	WETTER
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 words ‘WEATHER’ and ‘WETTER’ are both meaningful in certain territories, for example, in those countries where German is spoken and understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public. Even though the earlier mark ‘WEATHER’ is composed of an English word, also due to its aural similarity with the contested sign’s ‘WETTER’, the Opposition Division is of the opinion that it will be understood by at least a substantial part of the German consumers and more in particular those that are more acquainted with the English language. If a significant part of the relevant public for the goods and services at issue may be confused about the origin of the goods and services, it will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods and services are likely to be confused.

The opponent also filed some evidence to prove that the German-speaking public speaks and understands well the English language. It filed, inter alia, an article from the Wikipedia website with a list of countries by English-speaking population and mentioning that Germany has 70% of English speakers; an extract from an EU Commission Study: ‘English is clearly the most commonly used language in the EU’; an article titled: ‘Do Germans speak English’; and two documents from the website ‘http://languageknowledge.eu’ from which it appears that English is the second language spoken in Germany and Austria with 40,64% of the Austrians and 31,93% of the German public speaking English. In the light of the foregoing, there is no room for doubts that this term will be understood by a substantial part of the German-speaking part of the public.

The word ‘WEATHER’ refers to ‘the condition of the atmosphere in one area at a particular time, for example if it is raining, hot or windy’ (see Collins English Dictionary online).

According to the applicant, as pointed out in its observations of 23/02/2017, the word ‘WEATHER’ is ‘a well-known word of the everyday English language and describes a state of the atmosphere at a particular place and time as regards heat, cloudiness, dryness, sunshine, wind, rain, etc.’ and the English-speaking consumers will not perceive it as an indication of origin. It also argues that this element has a low degree of distinctive character, due to its clear and direct connection with the goods and services in question.

In this regard, the Opposition Division finds that the word ‘WEATHER’ is not descriptive with respect to the goods and services at stake and as such it is normally distinctive. The mere fact that it is a word used in the everyday English language does not automatically prevent it from becoming a trade mark as long as all the necessary conditions required by the respective regulation are met. Furthermore, the Opposition division cannot see any direct link or association with any of the characteristics of the relevant goods and services which could lead to a conclusion that ‘WEATHER’ is a descriptive or a weak element. Even though this word could in a certain way be allusive for some goods, such as digital media featuring information in Class 9, since the opponent has limited these goods to the health and wellness fields, there is no valid reason to see why the word ‘WEATHER’ would be descriptive or allusive for these goods and the same applies for the remaining goods and services, especially for education in Class 41 in relation to which the same limitation has been made.

According to the applicant a cancellation procedure is pending and the applicant further mentions that weather data can be stored on the earlier magnetic data carriers; however, the Opposition Division finds that no such goods are listed anymore (after cancellation decision C 12 166) among the opponent’s goods, nor are the other goods also referred to by the applicant such as signalling, checking (supervision), life-saving and teaching apparatus and instruments in Class 9 and services such as cultural activities in Class 41.

As can be seen from the outcome of this decision (C 12 166), some of the goods and services are refused in the earlier mark, namely those for which the Cancellation Division finds that the word ‘WEATHER’ is descriptive, based on Article 7(1)(c) EUTMR, namely signalling, checking (supervision), life-saving and teaching apparatus and instruments; magnetic data carriers in Class 9; telecommunications in Class 38; cultural activities in Class 41 and industrial analysis and research services; design and development of computer software in Class 42. With respect to the goods and services on which the earlier mark is now deemed to be based, the word ‘WEATHER’ is, however, normally distinctive.

The applicant’s argument that ‘WEATHER’ is descriptive for the earlier education relating to health and wellness in Class 41, as the weather has an impact on human’s health, is too far-fetched in the Opposition Division’s view as there is too much of a mental leap required to reach this association. Likewise, the same consideration applies to the opponent’s services in Class 42, namely design and development of computer hardware, which, contrary to the applicant’s opinion, are not likely to be immediately perceived as intended for improving weather forecast. Finally, the applicant asserts that there is a link between the opponent’s goods in Class 25, because the weather plays an important role in relation to the selection of clothing and clothing, footwear and headgear are usually bought and worn according to the weather conditions. The Opposition Division does not deny the fact that the weather has an impact on how people are dressed, nevertheless this does not refer to any specific characteristics of the given goods, such as their kind, purpose or geographical origin.  

Therefore, all the above mentioned applicant’s arguments have to be set aside.

Visually, the signs coincide in the sequence of letters ‘W-E-*-T-(*)-E-R’. On the other hand, they differ in the third and additional fifth letter ‘A’ and ‘H’, of the earlier mark versus the third letter ‘T’ in the middle of the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘W-E-*-T-(*)-E-R’, present identically in both signs. Also the sound of the second and third letters ‘EA’ of the earlier mark is identical or at least closely similar to the sound of the second letter ‘E’ in the contested sign. Furthermore, both signs are pronounced in two syllables /WEA-THER/ versus /WE-TTER/. The pronunciation differs mainly in the sound of the double letter ‘T’ in the contested sign, which has a tougher sound than the combination of letters ‘TH’ in the earlier mark that is softer. However, as this sound falls in the middle of the marks and is surrounded by letters that are similar or identical in sound, its impact is less. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs as a whole will be perceived, at least by a substantial part of the German-speaking part of the public, as referring to the same concept of ‘weather’, one being the German-language equivalent of the English word of which the earlier mark is composed, the signs are conceptually identical.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness, but did not file any evidence in order to prove such a claim.

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 on which the present examination is focused. Therefore, the distinctiveness of the earlier mark must be seen as normal.

In its submissions of 23/02/2017, the applicant argues that the earlier trade mark as a whole has a low degree of distinctiveness for the relevant goods and services. However, following the analysis of the signs’ elements and their distinctiveness carried out in section c) of this decision, and in the absence of convincing arguments and evidence submitted in this regard, this applicant’s argument must be set aside.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The goods and services at issue have been found identical and the level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to an average degree, aurally similar to a high degree and, from a conceptual point of view, they are even identical.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Therefore, also in case of the goods and services where the attention of the relevant public may be higher than average, especially given the conceptual identity and the high phonetic similarity between the signs, likelihood of confusion cannot safely be excluded in respect of the goods and services that have been found to be identical.

Even more, regarding the contested sign, it is conceivable that the relevant consumer will perceive it as being a sub-brand of the opponent, configured according to the place (territory) where the goods and services are put on the market. It is quite possible for an undertaking to use sub-brands, that is to say signs that derive from a principal mark. The targeted public may regard the goods and services designated by the trade marks as belonging to the same undertaking offering them in different countries, even more taking into account that the goods and services are entirely identical. 

Considering all the above, there is a likelihood of confusion (including likelihood of association) on the part of the German-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. Furthermore, as outlined above, there is no need to establish that all actual or potential consumers of the relevant goods and services of the German-speaking part of the public are likely to be confused.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 204 657. It follows that the contested trade mark must be rejected for all the contested goods and services.

Finally, 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 Articles 8(1)(a) and 8(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

Martin MITURA

Chantal VAN RIEL

Saida CRABBE

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.