OPPOSITION No B 2 951 666

Windyty, SE, Strakonická 1199/2d, 150 00, Praha 5 - Hlubočepy, CZ (opponent), represented by Harber IP S.r.o., Na bělidle 64/3, 150 00, Prague 5 - Smíchov, Czech Republic (professional representative)

a g a i n s t

Kamenev Igor Vaclavovich, Fruktovaya 5-2-136, 117556, Moscow, Russia (applicant), represented by Zivko Mijatovic & Partners, Avenida Fotógrafo Francisco Cano 91A, 03540 Alicante, Spain (professional representative).

On 27/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 951 666 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 692 618 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 692 618, . The opposition is based on, inter alia, European Union trade mark registration No 15 177 165,  . 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.

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 15 177 165.

1. The goods and services

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

Class 9: Computer hardware; Computer software; Computer programs for meteorological and climatic measuring and monitoring; Computer digital maps; Computer application software for mobile telephones; Computer programmes for data processing; Data processing equipment and accessories (electrical and mechanical); Computer software for creating searchable databases of information and data.

Class 38: News agencies; Transmission of data, messages or information via telecommunications equipment, computers, mobile phones; Audiovisual communication services; Publication and transmission of information via information and telecommunications equipment and networks, mobile phones, satellites; Transferring and disseminating information and data via computer networks and the Internet; Exchange and dissemination of information and messages via telecommunications networks, data networks, information or communications or electronic technology; Online chatrooms/discussion groups on the internet and mobile phone networks; Providing telecommunications services, electronic bulletin boards; Provision of access to on-line services; web portal services providing user access to a global computer network; Communication by mobile phones and computer communication; Message sending; Email service; Computer aided transmission of messages and images; Dissemination of electronic publications in electronic form via computer and telecommunications networks, via mobile phones, satellites, data network services; Rental of information and communications space; Short messiging services and mobile multimedia messiging services (MMS); Providing access to online information services and databases; Transferring, providing or retrieving information from computer databases; On-line information services; Searching for locations of objects and entities via computer or communication or telecommunications equipment or telephone; Providing access to databases; Provision of access to an electronic on-line network for information retrieval; Providing access to Internet forums.

The contested goods and services are the following:

Class 9: Downloadable computer software applications, in particular downloadable computer applications software for weather forecasting; software for tablet computers; software for mobile phones; application software for smart phones; application software for mobile phones; application software for social networking services via internet.

Class 45: Online social networking services; online social networking services accessible by means of downloadable mobile applications.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 9

The contested downloadable computer software applications, in particular downloadable computer applications software for weather forecasting; software for tablet computers; software for mobile phones; application software for smart phones; application software for mobile phones; application software for social networking services via internet are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

Contested services in Class 45

The contested online social networking services; online social networking services accessible by means of downloadable mobile applications are similar to the opponent’s online chatrooms/discussion groups on the internet and mobile phone networks in Class 38. These services all relate to the technical management of forums, chatrooms and social networking and therefore they have a similar nature. They can originate from the same companies and target the same public. Furthermore, they are complementary.

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 are directed at the public at large and at professionals with a specific professional knowledge or expertise. The degree of attention is average.

As the goods and services of both marks target the public at large and professionals, the assessment of the likelihood of confusion will be assessed against the perception of the part of the public that is more prone to confusion, namely the general public.

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 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 common element ‘WINDY’ 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 non-English-speaking part of the public, such as the Czech- and Spanish-speaking part of the public.

The earlier mark is a figurative sign consisting of the verbal element ‘WINDYTY’ in sentence case letters. To the left of this verbal element is a figurative element of two white bows inside a black square with rounded corners.

The verbal element ‘WINDYTY’ has no meaning for the relevant public and is, therefore, distinctive. The figurative element with the bows in a black square is rather an abstract element and therefore, distinctive.

The contested mark is a figurative sign, consisting of a large circle diagram or radar screen, like a wind rose, a graphic tool used by meteorologists to measure wind. Above this circle are three small dots and below the circle is one dot. Under this single dot is the verbal element ‘Windy’ in black, standard, sentence case letters.

For the relevant general public, the figurative element of the circle will not be perceived with any meaning. Therefore, it is distinctive.

The three small dots above the circle and the small dot below the circle are less distinctive figurative elements of a purely decorative nature.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The figurative element of the contested trade mark overshadows the verbal element of the mark by virtue of its central position and size. Therefore, the figurative element is the visually dominant element of the contested trade mark.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘Windy’, present in the beginning of the distinctive verbal element ‘Windyty’ of the earlier mark and form the entire distinctive verbal element in the contested sign. However, the marks differ in the last letters ‘ty’ following the letters ‘Windy’ in the earlier mark, and in the stylisation of the marks, whereof the large circle in the contested sign is distinctive and also dominant.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WINDY’, present in both signs, and distinctive for the relevant public. These letters are placed in the beginning of the verbal element of the earlier mark. The pronunciation differs in the sound of the last two letters ‛TY’ of the verbal element of the earlier mark, which have no counterparts in the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the general 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 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods and services are partially identical and partially similar. The degree of attention is average.

The signs are visually and aurally similar to an average degree. They coincide in five letters of the single verbal element in both marks, constituting the entire verbal element of the contested sign and the first five out of seven letters in the earlier mark. The degree of distinctiveness of the earlier mark is normal. Even though the coinciding element ‘WINDY’ is not the dominant element of the contested sign, it should be emphasized that a verbal element usually has a stronger impact on the consumer than the figurative element, as described above.

Taking into account all the circumstances of the case, the differences between the marks are not sufficient to counterbalance the similarities between them. The relevant public could be mistaken regarding the origin of the goods and services that are identical.

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).

For the relevant public, it is even highly conceivable that the consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Czech- and Spanish-speaking, and general, 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, it is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 177 165. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right, European Union trade mark registration No 15 177 165 leads 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).

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.

The Opposition Division

Janja FELC

Lena FRANKENBERG GLANTZ

Loreto URRACA LUQUE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.