OPPOSITION No B 2 332 263
Facebook, Inc., 1601 Willow Road, Menlo Park, California 94025, United States of America (opponent), represented by Carlos Polo & Asociados, Profesor Waksman, 10, 28036 Madrid, Spain (professional representative)
a g a i n s t
Binetix LLC, 58 Kniaz Boris I Str., 1463 Sofia, Bulgaria (applicant), represented by Atanas Kostov, "Tsoko Kableshkov" str. Nє10 fl.2, 4000 Plovdiv, Bulgaria (professional representative).
On 30/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 332 263 is partially upheld, namely for the following contested goods and services:
Class 9: Carriers for digitized data; Computer software for commercial purposes (not for social networks); USB flash drives; Electronic publications, downloadable; Interface programs for computers; sleeves for laptops and tablet computers; Cd roms; Computer software for commercial purposes (recorded, not for social networks); Recorded computer programs for commercial purposes (not for social networks); Computer programs for commercial purposes (downloadable software, not for social networks); Monitors [computer programs]; Mouse mats; Downloadable image files for commercial purposes (not for social networks); Laptop and tablet bags.
Class 35: Advertising (not for social networks); Office functions; Marketing services; Sales campaigns; Online advertising on a computer network for commercial purposes (not for social networks); Assistance in management of business activities; Commercial information for corporate clients; Dissemination of advertising matter for commercial purposes (not for social networks); Provision of commercial information; Data search in computer files for commercial purposes (not for social networks).
Class 38: Telecommunications, wireless broadcasting, telecommunications routing and junction services for commercial purposes (not for social networks); Providing telecommunications connections to a global computer network for commercial purposes (not for social networks); Electronic mail, electronic bulletin board services (telecommunications services) for commercial purposes (not for social networks); Message sending, wire service, information about telecommunication for commercial purposes (not for social networks); Cellular telephone communication, Communications by fiber [fibre] optic networks, Communications by computer terminals for commercial purposes (not for social networks); Communications by telegrams and telephone intended for commercial purposes (not for social networks); Rental of access time to shared computing resources for commercial purposes (not for social networks); Rental of telephones, modems, telecommunication equipment and message sending apparatus for commercial purposes (not for social networks); Computer aided transmission of messages and images for commercial purposes (not for social networks); Transmission of telegrams and digital files for commercial purposes (not for social networks); Cable television broadcasting and satellite transmission for commercial purposes (not for social networks); Providing access to databases for commercial purposes (not for social networks); Providing access to distribution services and resources for commercial purposes (not for social networks); Radio broadcasting, exchanging messages for commercial purposes (not for social networks); Telex and telephone services for commercial purposes (not for social networks); Videoconferencing services for commercial purposes (not for social networks); Voice mail services, intended for commercial purposes (not for social networks).
Class 42: Design and development of computer software for commercial purposes (not for social networks); Computer system analysis; Recovery of computer data; Installation of computer software for commercial purposes (not for social networks); Computer software consultancy; Computer programming for commercial purposes (not for social networks); Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data [not physical conversion]; Information technology [IT] consultancy; Web site design consultancy; Updating of computer software for commercial purposes (not for social networks); Hosting computer sites (web sites) for commercial purposes (not for social networks); Provision of search engines for the Internet; Computer software design for commercial purposes (not for social networks); Computer system design for commercial purposes (not for social networks); Development of new products for commercial purposes (not for social networks); Software as a service (SaaS) for commercial purposes (not for social networks); Creating and maintaining websites for commercial purposes (not for social networks); Server hosting for commercial purposes (not for social networks); Computer virus protection services.
2. European Union trade mark application No 12 303 988 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely the following:
Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Cash registers; Alarms; Altimeters; Ammeters; Anemometers; Antennas; Anticathodes; Intercommunication apparatus; Apparatus for remote-controlled recording; Pressure measuring apparatus; Speed measuring instruments; Distance measuring apparatus; Testing apparatus not for medical purposes; Speed checking apparatus for vehicles; Weighing apparatus and instruments; Electronic notebooks; Voltmeters; Time recording apparatus; Sensors and detectors; Smoke detectors; Speaking tubes; Electric installations for the remote control of industrial operations; Fuses; Electro-dynamic apparatus for the remote control of signals; Electronic tags for goods; Thermionic valves; Electronic display boards; Sound alarms; Warning buzzers; Signs, luminous; Buzzers; Measuring instruments; Jigs [measuring instruments]; Meters; Measuring instruments, Electric and Electronic; Water level indicators; Quantity indicators; Electric loss indicators; Pressure indicators; Theft prevention installations, electric and electronic; Gas testing instruments; Observation instruments; Integrated circuits; Electrical cables; Smart cards [integrated circuit cards]; Compasses [measuring instruments]; Compasses [measuring instruments]; Laptop computers; Computer keyboards; Computer memory devices; Converters, electric; Metal detectors for industrial or military purposes; Mouse [computer peripheral]; Vehicles (Navigation apparatus for -) [on-board computers]; Navigational instruments; Ohmmeters; Integrated circuits; Integrated circuits; Wrist rests for use with computers; Fire alarms; Switchboxes [electricity]; Switchboards; Central processing units and microprocessors (processors); Distribution boards (electricity, electronics); Electric couplings; Electric couplings; Couplers [data processing equipment]; Junction boxes [electricity]; Taximeters; Transistors [electronic]; Transponders; Transformers (electricity, electronics); Voting machines; Remote control apparatus; Readers [data processing equipment]; Integrated circuit chips.
Class 35: Business management (not for social networks); Business administration; Arranging subscriptions to telecommunication services for commercial purposes (not for social networks); Administrative processing of orders for commercial purposes (not for social networks); Business auditing; Efficiency experts; Public relations for commercial purposes (not for social networks); Document reproduction for commercial purposes (not for social networks); Payroll preparation; Advertising columns preparation (not for social networks); Market research; Business investigation; Economic forecasting; Personnel management consultancy; Advisory services for business management; Consultancy relating to business organisation; Business management and organization consultancy; Business management consulting; Personnel recruitment; Commercial advice for corporate clients; Demonstration of goods; Telephone answering for unavailable corporate subscribers (not for social networks); Production of advertising films for commercial purposes (not for social networks); Corporate marketing research; Business research; Business consulting services; Psychological testing for the selection of personnel; Radio commercials; Distribution of samples; Outdoor advertising (not for social networks); Advertising by mail order; Systemization of information into computer databases; Procurement services for others (purchasing goods and services for other businesses, not via social networks); Business auditing; Compilation of information into computer databases; Compilation of statistics; Drawing up statements of account; Word processing; Television commercials; Telemarketing services; Transcription of messages; Business appraisals; Business inquiries; Commercial administration of the licensing of the goods and services of corporate clients; Sponsorship search; Computerised file management for commercial purposes (not for social networks); Relocation services for businesses; Invoicing.
Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware for commercial purposes (not for social networks); Graphic design; Handwriting analysis [graphology]; Energy auditing; Mechanical research; Physics [research]; Engineering services; Quality control; Clinical trials; Consultancy in the design and development of computer hardware; Consultancy in the field of energy-saving; Scientific research; Industrial design; Research of new products for commercial purposes (not for social networks); Technical research; Laboratory (Scientific -) services; Digitisation of documents (scanning and indexing).
Class 45: Professional background investigations (not for social networks).
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 303 988. The opposition is based on the following six earlier rights:
- European Union trade mark registration No 9 151 192 for the word mark ‘FACEBOOK’ registered for goods and services in Classes 9, 35, 36, 38, 41, 42 and 45 (hereinafter ‘Earlier Mark 1)’;
- European Union trade mark registration No 9 151 168 for the figurative mark ‘’ registered for goods and services in Classes 9, 35, 36, 38, 41, 42 and 45 (hereinafter ‘Earlier Mark 2’);
- European Union trade mark registration No 5 585 518 for the word mark ‘FACEBOOK’ registered for services in Classes 35, 41, 42 and 45 (hereinafter ‘Earlier Mark 3’);
- European Union trade mark registration No 4 535 381 for the word mark ‘FACEBOOK’ registered for services in Classes 35 and 38 (hereinafter ‘Earlier Mark 4’);
- European Union trade mark registration No 9 776 618 for the word mark ‘FACEBOOK’, registered for goods and services in Classes 9, 16, 35 and 36 (hereinafter ‘Earlier Mark 5’) and
- European Union trade mark registration No 10 782 555 for the word mark ‘FACEBOOK’ registered for goods and services in Classes 16, 40, 42 and 45 (hereinafter ‘Earlier Mark 6’).
The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
PRELIMINARY REMARKS
(1) On the basis of the opposition and the admissibility of European Union trade mark registration No 10 782 597 ‘’ and of European Union trade mark registration No 6 455 687 ‘FACEBOOK’
According to Article 41(1)(a) EUTMR, the proprietors of earlier marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks may give notice of opposition (on the grounds of Article 8(1) and 8(5) EUTMR) to registration of a European Union trade mark application, within a period of three months following the publication of the application.
The notice of opposition has to be filed in writing and must contain, in order to be admissible, the indications and elements laid down in Rule 15(1), (2) (a)-(c) EUTMIR (inter alia, a clear identification of the earlier mark or earlier right on which the opposition is based). Furthermore, it must be noted that the opponent can only complete or extend the notice of opposition, on its own initiative, during the three-month opposition period following the publication of the European Union trade mark application concerned.
In the notice of opposition filed on 28/03/2014, the opponent indicated as the basis of the opposition the six European Union trade mark registrations mentioned in the ‘Reasons’ section above. However, in its further observations of 01/04/2015, it indicates that the opposition was also based on European Union trade mark registration No 10 782 597 ‘’ and on European Union trade mark registration No 6 455 687 ‘FACEBOOK’.
Since this other two trade marks were not claimed as a basis of the opposition during the three-month opposition period and, as indicated above, the opposing party cannot extent the basis of the opposition once the opposition period has expired, the opposition must be rejected as inadmissible, as far as it is based on these European Union trade mark registrations.
For the sake of completeness, it is also noted that on page two of its submissions of 01/04/2015 the opponent did not mention Earlier Mark 5 as being one of the earlier marks on which the opposition is based. In the absence on an explicit restriction of the basis of the opposition, the Opposition Division will consider the opposition as based on the six earlier marks indicated in the notice of opposition and listed in the ‘Reasons’ section above.
(2) On the scope of protection of the contested EUTM application
Before proceeding to the examination of the opposition, the Opposition Division finds it appropriate to address the opponent’s claims in relation to the scope of protection of the contested EUTM, namely the amendment of the specification by adding the term not for social networks.
The EUTM application was filed on 13/11/2013 for a wide range of goods and services in Classes 9, 35, 38, 42 and 45.
On 10/03/2014, the applicant filed a request for the amendment of the specification of goods and services (hereinafter ‘First Limitation’) and provided the new list of the goods and services only in the first language of the application, namely Bulgarian. In essence, by the First Limitation, the applicant deleted some of the goods and services for which protection was initially sought under the EUTM application and restricted other goods and services by adding the term not for social networks. For example the terms computer software in Class 9 and advertising in Class 35 have been amended in the First Limitation to computer software for commercial purposes (not for social networks) and respectively to advertising (not for social networks).
On 05/03/2015, the Office informed the opponent of the restriction of the contested trade mark and gave it a time limit until 10/05/2015 to state whether or not it maintains the opposition.
The opponent replied on 10/03/2015 and stated, among other things, that it maintains the opposition. It also argued that the Office should not have accepted the First Limitation essentially for the following reasons: (i) the limitation is ‘immaterial for the examination of the opposition since it is artificial and will not be reflected in the market place because the applicant will lose control over the use which can be made by third parties of the goods/services at hand and it cannot be excluded a priori that said goods and services will be, in fact, used for social networking purposes’, (ii) even if the applicant’s goods/services were not offered directly in the area of social networking that would not prevent specialists, distributors, retailers and consumers in that field from using, offering, advertising, marketing, licensing and selling the goods/services in the area of social networking, (iii) the amendment maintains products and services such as telecommunications, scientific and technological services and research and design relating thereto which collide directly with the core business of an undertaking operating in the field of social networking.
On 11/06/2015 the Office informed the opponent that the First Limitation has been re-examined and confirmed that the list of goods and services remains unchanged.
On 03/07/2015, the applicant submitted a further request for the amendment of the specification of goods and services by deleting a number of goods and services in Classes 9, 35, 38, 42 and 45 (hereinafter ‘Second Limitation’). On 18/11/2015, the Office informed the applicant that the Second Limitation was partially accepted (namely for Classes 9 and 45 only) since for the remaining classes the request concerned services that were no longer contained as such in the specification (because they had been amended by the First Limitation). For example the term advertising in Class 35 had been restricted by the First Limitation to advertising (not for social networks). However, by the Second Limitation the applicant requested the deletion of the term advertising in Class 35 and not of the term advertising (not for social networks). By means of the same communication, the applicant was given a time limit of two months to submit any observations in reply.
On 26/02/2016, the Office informed the parties that in the absence of any response from the applicant, the specification of the goods and services of the contested EUTM application has been amended in accordance with the acceptable part of the Second Limitation and that the proceedings will continue on the basis of that list. By means of the same communication, the opponent was set a time limit until 01/05/2016 to inform the Office whether or not it maintains the opposition.
The opponent replied on 29/02/2016 and, inter alia, specified that the opposition is maintained.
Despite the Office’s clarifications regarding the First Limitation, the opponent went to great lengths to argue that the First Limitation should not have been accepted, in essence by reiterating its previous arguments. In its letter of 18/12/2015 and in further communications (for example of 16/09/2016 and 28/11/2016) it also contended that the specification of the contested EUTM application following the First Limitation is not clear and precise enough and introduces a wide margin of uncertainty and requested the Office to deliver an interlocutory decision stating the reasons why the First Limitation has been accepted despite its arguments.
It is true that, as the opponent claims, the goods and services for which protection of a trade mark is sought should be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of protection sought (Article 28(2) EUTMR).
In this regard it is noted that a description of goods and services is sufficiently clear and precise when its scope of protection can be understood from its natural and usual meaning. ‘Natural and usual meaning’ refers to the inherent definition of a term, in other words how the term is commonly understood. In the context of a correct classification, this should in principle be enough to allow for an unambiguous scope of protection.
Furthermore, according to the Office’s practice, in order to be acceptable a restriction must, inter alia, be comprehensible and give a sufficiently clear and precise indication of the goods or services to be excluded from the list or a sufficiently clear and precise indication of the goods and services that remain after the restriction.
In the case at hand, and after having carefully analysed the opponent’s arguments, the Opposition Division considers that the First Limitation complies with the above mentioned criterion insofar as the addition of the term not for social networks is concerned and that the specification of the contested EUTM application meets the requirements of Article 28(2) EUTMR as set out above.
Taking the example of the term computer software, it is noted that although software by nature (a set of instructions that enables a computer to perform a task) is the same, there are many types of computer software with very specific purposes. The field of application of computer software for social networks is not the same as that of other types of software, for instance software for apparatus that diagnose diseases. It follows that the exclusion of computer software for social networks from the category of computer software is an acceptable restriction as it gives a sufficiently clear and precise indication of the goods that remain after the restriction.
The opponent’s arguments that the applicant ‘attempted, unsuccessfully, to avoid clashing with the opponent’s goods and services’, that the limitation ‘is immaterial for the examination of the opposition and ‘artificial’ because the applicant will ‘lose control over the use which can be made by third parties’ or that ‘the amendment of the specification is not acceptable for the opponent since it maintains goods and services which collide directly with the core business of an undertaking in the field of social networks’ cannot lead to a different conclusion. As stated above, it is Office practice to accept a restriction as long as it is comprehensible and indicates, in a sufficiently clear and precise manner, the goods or services to be excluded from the list or the goods and services that remain after the restriction. Conflicts with prior registered trade marks do not constitute valid reasons for refusing a limitation of the specification of a trade mark application, as the opponent puts forward. For such situations, the EUTMR foresees a different solution under Article 8 Relative grounds for refusal. Finally, any actual or intended use not stipulated in the list of goods/services is not relevant for the purposes of the present proceedings which are not concerned with an assessment of actual confusion or infringement.
Accordingly, the Opposition Division will consider in its examination of the present opposition the list of the contested goods and services as amended following the First and Second Limitations:
Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Carriers for digitized data; Cash registers; Computer software for commercial purposes (not for social networks); USB flash drives; Alarms; Altimeters; Ammeters; Anemometers; Antennas; Anticathodes; Intercommunication apparatus; Apparatus for remote-controlled recording; Pressure measuring apparatus; Speed measuring instruments; Distance measuring apparatus; Testing apparatus not for medical purposes; Speed checking apparatus for vehicles; Weighing apparatus and instruments; Electronic notebooks; Voltmeters; Time recording apparatus; Sensors and detectors; Smoke detectors; Speaking tubes; Electric installations for the remote control of industrial operations; Fuses; Electro-dynamic apparatus for the remote control of signals; Electronic tags for goods; Thermionic valves; Electronic publications, downloadable; Electronic display boards; Sound alarms; Warning buzzers; Signs, luminous; Buzzers; Measuring instruments; Jigs [measuring instruments]; Meters; Measuring instruments, Electric and Electronic; Water level indicators; Quantity indicators; Electric loss indicators; Pressure indicators; Theft prevention installations, electric and electronic; Gas testing instruments; Observation instruments; Integrated circuits; Interface programs for computers; Electrical cables; sleeves for laptops and tablet computers; Smart cards [integrated circuit cards]; Cd roms; Compasses [measuring instruments]; Compasses [measuring instruments]; Computer software for commercial purposes (recorded, not for social networks); Laptop computers; Computer keyboards; Computer memory devices; Recorded computer programs for commercial purposes (not for social networks); Computer programs for commercial purposes (downloadable software, not for social networks); Converters, electric; Metal detectors for industrial or military purposes; Mouse [computer peripheral]; Monitors [computer programs]; Vehicles (Navigation apparatus for -) [on-board computers]; Navigational instruments; Ohmmeters; Integrated circuits; Integrated circuits; Mouse mats; Wrist rests for use with computers; Fire alarms; Switchboxes [electricity]; Switchboards; Central processing units and microprocessors (processors); Distribution boards (electricity, electronics); Electric couplings; Electric couplings; Couplers [data processing equipment]; Junction boxes [electricity]; Taximeters; Transistors [electronic]; Transponders; Transformers (electricity, electronics); Voting machines; Remote control apparatus; Downloadable image files for commercial purposes (not for social networks); Laptop and tablet bags; Readers [data processing equipment]; Integrated circuit chips.
Class 35: Advertising (not for social networks); Business management (not for social networks); Business administration; Office functions; Arranging subscriptions to telecommunication services for commercial purposes (not for social networks); Administrative processing of orders for commercial purposes (not for social networks); Business auditing; Efficiency experts; Public relations for commercial purposes (not for social networks); Document reproduction for commercial purposes (not for social networks); Payroll preparation; Advertising columns preparation (not for social networks); Market research; Business investigation; Economic forecasting; Personnel management consultancy; Advisory services for business management; Consultancy relating to business organisation; Business management and organization consultancy; Business management consulting; Marketing services; Personnel recruitment; Sales campaigns; Online advertising on a computer network for commercial purposes (not for social networks); Assistance in management of business activities; Commercial information and advice for corporate clients; Demonstration of goods; Telephone answering for unavailable corporate subscribers (not for social networks); Production of advertising films for commercial purposes (not for social networks); Corporate marketing research; Business research; Business consulting services; Psychological testing for the selection of personnel; Radio commercials; Distribution of samples; Dissemination of advertising matter for commercial purposes (not for social networks); Outdoor advertising (not for social networks); Advertising by mail order; Systemization of information into computer databases; Procurement services for others (purchasing goods and services for other businesses, not via social networks); Business auditing; Compilation of information into computer databases; Compilation of statistics; Drawing up statements of account; Word processing; Television commercials; Telemarketing services; Transcription of messages; Provision of commercial information; Business appraisals; Business inquiries; Commercial administration of the licensing of the goods and services of corporate clients; Data search in computer files for commercial purposes (not for social networks); Sponsorship search; Computerised file management for commercial purposes (not for social networks); Relocation services for businesses; Invoicing.
Class 38: Telecommunications, wireless broadcasting, telecommunications routing and junction services for commercial purposes (not for social networks); Providing telecommunications connections to a global computer network for commercial purposes (not for social networks); Electronic mail, electronic bulletin board services (telecommunications services) for commercial purposes (not for social networks); Message sending, wire service, information about telecommunication for commercial purposes (not for social networks); Cellular telephone communication, Communications by fiber [fibre] optic networks, Communications by computer terminals for commercial purposes (not for social networks); Communications by telegrams and telephone intended for commercial purposes (not for social networks); Rental of access time to shared computing resources for commercial purposes (not for social networks); Rental of telephones, modems, telecommunication equipment and message sending apparatus for commercial purposes (not for social networks); Computer aided transmission of messages and images for commercial purposes (not for social networks); Transmission of telegrams and digital files for commercial purposes (not for social networks); Cable television broadcasting and satellite transmission for commercial purposes (not for social networks); Providing access to databases for commercial purposes (not for social networks); Providing access to distribution services and resources for commercial purposes (not for social networks); Radio broadcasting, exchanging messages for commercial purposes (not for social networks); Telex and telephone services for commercial purposes (not for social networks); Videoconferencing services for commercial purposes (not for social networks); Voice mail services, intended for commercial purposes (not for social networks).
Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer software and hardware for commercial purposes (not for social networks); Computer system analysis; Recovery of computer data; Graphic design; Handwriting analysis [graphology]; Energy auditing; Mechanical research; Physics [research]; Engineering services; Installation of computer software for commercial purposes (not for social networks); Quality control; Clinical trials; Computer software consultancy; Computer programming for commercial purposes (not for social networks); Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data [not physical conversion]; Information technology [IT] consultancy; Consultancy in the design and development of computer hardware; Web site design consultancy; Consultancy in the field of energy-saving; Scientific research; Updating of computer software for commercial purposes (not for social networks); Hosting computer sites (web sites) for commercial purposes (not for social networks); Provision of search engines for the Internet; Computer software design for commercial purposes (not for social networks); Computer system design for commercial purposes (not for social networks); Industrial design; Research and development of new products for commercial purposes (not for social networks); Software as a service (SaaS) for commercial purposes (not for social networks); Creating and maintaining websites for commercial purposes (not for social networks); Server hosting for commercial purposes (not for social networks); Technical research; Computer virus protection services; Laboratory (Scientific -) services; Digitisation of documents (scanning and indexing).
Class 45: Professional background investigations (not for social networks).
SECTION A: PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the six European Union trade marks on which the opposition is based.
In the present case the contested trade mark was published on 02/01/2014.
Earlier Marks 1 and 2 were registered on 17/12/2010, Earlier Mark 3 on 25/05/2011, Earlier Mark 4 on 22/06/2011, Earlier Mark 5 on 02/11/2011 and Earlier Mark 6 on 03/10/2012. Therefore, the request for proof of use is inadmissible.
SECTION B: REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
- Reputation of the earlier trade marks
According to the opponent, the earlier trade marks have a reputation in the European Union.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 13/11/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:
Earlier Mark 1
Class 9: Computer software development tools; computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks.
Class 35: Marketing, advertising and promotion services; market research and information services; promoting the goods and services of others via computer and communication networks; facilitating the exchange and sale of decorating supplies, cleaning preparations, toiletries, cosmetics, candles, pharmaceuticals, small items of metal hardware, machines and machine tools, hand tools, consumer electronics, computers, computer peripherals, telephones, cameras, CD's and DVD's, household electric machines, vehicles, cycles, jewellery, clocks and watches, printed matter, leather goods, handbags, purses and wallets, furniture, housewares, household or kitchen utensils and containers, textiles, clothing, footwear, headgear, haberdashery, floor coverings, games and playthings, gymnastic and sporting equipment, foodstuffs, drinks, alcoholic beverages and candy via computer and communication networks; online retail store services featuring online delivery of digital media, namely images movies, musical and audiovisual works and related merchandise; charitable services, namely promoting public awareness about charitable, philanthropic, volunteer, public and community service and humanitarian activities; buyer to supplier matching services rendered through an online computerized network; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.
Class 36: Financial transaction processing services, namely clearing and reconciling financial transactions via computer and communication networks; electronic processing of bill payment data for users of computer and communication networks; electronic funds transfer services; bill payment services; financial exchange services, namely, providing a virtual currency for use by members of an online community via computer and communication networks; providing information regarding economic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.
Class 38: Providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online communications links which transfer web site users to other local and global web pages; facilitating access to third party web sites via a universal login; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, audio and video images; providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; providing access to computer databases in the fields of social networking, social introduction and dating; providing an online forum for the buying and selling of products and materials and exchanging of sourcing data via a computerized network; electronic transmission of bill payment data for users of computer and communication networks.
Class 41: Providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photosharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; electronic publishing services for others; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks; arranging and conducting competitions for video gamers and computer game players; Contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community service and humanitarian activities and sharing of creative work product; providing information regarding news, cultural and academic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.
Class 42: Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites.
Class 45: Social introduction, networking and dating services; providing social services and information of a social nature in the field of personal development, namely self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities; providing information regarding social and political matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.
Earlier Mark 2
Class 9: Computer software development tools; computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks.
Class 35: Marketing, advertising and promotion services; market research and information services; promoting the goods and services of others via computer and communication networks; facilitating the exchange and sale of decorating supplies, cleaning preparations, toiletries, cosmetics, candles, pharmaceuticals, small items of metal hardware, machines and machine tools, hand tools, consumer electronics, computers, computer peripherals, telephones, cameras, CD's and DVD's, household electric machines, vehicles, cycles, jewellery, clocks and watches, printed matter, leather goods, handbags, purses and wallets, furniture, housewares, household or kitchen utensils and containers, textiles, clothing, footwear, headgear, haberdashery, floor coverings, games and playthings, gymnastic and sporting equipment, foodstuffs, drinks, alcoholic beverages and candy via computer and communication networks; online retail store services featuring online delivery of digital media, namely images movies, musical and audiovisual works and related merchandise; charitable services, namely promoting public awareness about charitable, philanthropic, volunteer, public and community service and humanitarian activities; buyer to supplier matching services rendered through an online computerized network; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.
Class 36: Financial transaction processing services, namely clearing and reconciling financial transactions via computer and communication networks; electronic processing of bill payment data for users of computer and communication networks; electronic funds transfer services; bill payment services; financial exchange services, namely, providing a virtual currency for use by members of an online community via computer and communication networks; providing information regarding economic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.
Class 38: Providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online communications links which transfer web site users to other local and global web pages; facilitating access to third party web sites via a universal login; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, audio and video images; providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; providing access to computer databases in the fields of social networking, social introduction and dating; providing an online forum for the buying and selling of products and materials and exchanging of sourcing data via a computerized network; electronic transmission of bill payment data for users of computer and communication networks.
Class 41: Providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photosharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; electronic publishing services for others; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks; arranging and conducting competitions for video gamers and computer game players; Contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community service and humanitarian activities and sharing of creative work product; providing information regarding news, cultural and academic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.
Class 42: Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites.
Class 45: Social introduction, networking and dating services; providing social services and information of a social nature in the field of personal development, namely self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities; providing information regarding social and political matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.
Earlier Mark 3
Class 35: Advertising; business management; business administration; office functions; advertising and information distribution services, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet; compilation and management of on-line computer databases and on-line searchable databases.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing an online directory information service featuring information regarding, and in the nature of, collegiate life, general interest, classifieds, virtual community, social networking, photo sharing, and transmission of photographic images.
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; legal services; computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; and computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; providing use of software applications through a website; data transmission and instant messaging services.
Class 45: Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals; introduction and social networking services.
Earlier Mark 4
Class 35: Providing an online directory information service featuring information regarding, and in the nature of, collegiate life, classifieds, virtual community and social networking.
Class 38: Telecommunications; providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking.
Earlier Mark 5
Class 9: Magnetically encoded gift cards; software for the exchange of gift cards and virtual currency; computer software; interactive software; downloadable tokens of value; gift cards (encoded or magnetic); nonprinted publications; data, information, audio, video and other media and multimedia, all being readable or downloadable from the Internet or via mobile communications devices; podcasts and webcasts.
Class 16: Stickers; posters; decals; printed matter; publications; magazines; books; pamphlets; manuals; printed guides; catalogues; photographs; stationery; pictures; diaries; calendars; photograph albums; prints; writing instruments; personal organizers; address books; note books; office requisites.
Class 35: Incentive award programs to promote the sale of products and services of others; promoting the goods and services of others by facilitating an incentive award program that provides coupons, rebates, and discounts to individuals who identify their location online; promoting the goods and services of others by providing a web site enabling users to identify their location in exchange for coupons, rebates, and discounts; physical and online retail store services featuring decorating supplies, cleaning preparations, toiletries, cosmetics, candles, pharmaceuticals, small items of metal hardware, machines and machine tools, hand tools, consumer electronics, computers, computer peripherals, telephones, cameras, CD's and DVD's, household electric machines, vehicles, cycles, jewellery, clocks and watches, printed matter, leather goods, handbags, purses and wallets, furniture, housewares, household or kitchen utensils and containers, textiles, clothing, footwear, headgear, haberdashery, floor coverings, games and playthings, gymnastic and sporting equipment, foodstuffs, drinks, alcoholic beverages, candy online delivery of digital media, namely images, movies, musical and audiovisual works and related merchandise; electronic processing of bill payment data for users of computer and communication networks; information, consultancy and advisory services, all relating to the aforesaid, including such services provided online from a computer network or via the internet.
Class 36: Pre-paid gift card services, namely issuing gift card certificates that may be redeemed for goods or services; prepaid card, gift card, and stored value card services; administration of a gift card program for enabling participants to obtain goods and services through use of a card; providing gift-card-based currency transfer and exchange services; providing electronic funds transfer services via electronic and optical communications networks; providing virtual currency for use via electronic and optical communications networks; providing a payment network allowing merchants to accept and process gift cards from other merchants; financial services, namely, enabling transfer of funds and purchase of products and services offered by others, all via electronic communication networks; clearing and reconciling financial transactions via electronic communication networks; providing a wide variety of payment and financial services, namely electronic, optical or downloadable gift card services, issuing credit cards and lines of credit, processing and transmission of bills and payments thereof, payment services, and providing guaranteed payment delivery; redemption of gift cards; exchanging electronic, optical or downloadable gift cards or stored value cards for money or other stored value cards.
Earlier Mark 6
Class 16: Cards, namely business cards and non-magnetically encoded identity cards.
Class 40: Printing services.
Class 42: Business card and identity card design services.
Class 45: Facilitating social and business networking through the provision of data for use on business and identity cards.
In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.
On 01/04/2015 the opponent filed a copious amount of evidence in order to demonstrate the reputation of the earlier marks and its claims under Article 8(5) EUTMR.
The Opposition Division notes that the evidence was provided in a clearly structured manner and will hereinafter refer to the documents submitted by using the inventory numbering system specified in the document titled ‘List of exhibits’.
The evidence comprises the following:
EXHIBIT A
Exhibit A1
Printouts from the website www.internetworldstats.com, dated 04/07/2012 and showing the number of Facebook users in the world, the Facebook usage and Facebook statistics by world geographic regions between 31/03/2011 and 31/03/2012. For Europe the documents display a number of Facebook users between 200,260,360 (in March 2011) and 232,835,740 (in March 2012) and a Facebook penetration (namely the ratio of Facebook users in relation to the total number of estimated population in each world region, expressed as a percentage) between 24.5% (in March 2011) and 28.5% (in March 2012).
Exhibit A2
Printouts from the website http://news.yahoo.com, dated 05/07/2013 featuring an article entitled ‘Number of active users at Facebook over the years’, showing, inter alia, how the number of active users at Facebook has grown from 1 million at the end of 2004 to 1.11 billion in March 2013.
EXHIBIT B
Exhibit B1
Certifications issued by the Chambers of Commerce in Mallorca, Alicante, Bilbao, Seville, Barcelona, Madrid and Valencia, between December 2010 and March 2011, certifying the high degree of well-known character, prestige and reputation of the opponent’s trade marks (‘FACEBOOK’, , , ), with corresponding English translations. For example, the certificate of the Chamber of Commerce of Bilbao of 21/12/2010 states that ‘as a result of a survey conducted among Biscayan enterprises, in the Historic Territory of Biscay, there is a sufficient and proven degree of awareness of the trade mark ‘FACEBOOK’ of the United States company Facebook Inc. to permit appreciating its well-known character in the sector of advertising, communication, social networking, etc.’.
Exhibit B2
Fifty-one decisions taken by different bodies recognising the reputation/well-known character of the ‘FACEBOOK’ marks, as follows:
2.1 Twenty-one EUIPO decisions
2.1.1 The decision of EUIPO’s Opposition Division of 18/10/2011, ruling on opposition No B 1 727 620 and refusing the registration of EUTM application 9 104 092 ‘’ for services in Classes 35, 38 and 41 (document in Spanish and its English translation).
2.1.2 The decision of EUIPO’s Opposition Division of 09/01/2012, ruling on opposition No B 1 775 686 and refusing the registration of EUTM application No 9 361 304 ‘’ for services in Classes 38 and 41.
2.1.3 The decision of EUIPO’s Opposition Division of 03/12/2012, ruling on opposition No B 1 814 238 and refusing the registration of EUTM application No 9 695 396 ‘’ for goods and services in Classes 9, 35, 38, 41, 42 and 45.
2.1.4 The decision of EUIPO’s Opposition Division of 21/12/2012, ruling on opposition No B 1 890 923 and refusing the registration of EUTM application No 9 716 077 ‘Partybook’ for services in Classes 35, 38, 41, 42 and 45.
2.1.5 The decision of EUIPO’s Opposition Division of 30/04/2013, ruling on opposition No B 1 994 667 and refusing the registration of EUTM application No 9 635 591 ‘E-Healthbook’ for services in Class 38.
2.1.6 The decision of EUIPO’s Opposition Division of 30/08/2013, ruling on opposition No B 2 035 932 and refusing the registration of EUTM application No 10 427 227 ‘’ for services in Classes 35, 38 and 41 (document in Spanish and its English translation).
2.1.7 The decision of EUIPO’s Opposition Division of 11/09/2013, ruling on opposition No B 2 035 494 and refusing the registration of EUTM application No 10 755 965 ‘WINE-BOOK’ for goods and services in Classes 9 and 42.
2.1.8 The decision of EUIPO’s Opposition Division of 08/11/2013, ruling on opposition No B 1 926 446 and refusing the registration of EUTM application No 10 160 133 ‘facebook’ for goods in Class 12.
2.1.9 The decision of EUIPO’s Opposition Division of 12/11/2013, ruling on opposition No B 2 077 439 and refusing the registration of EUTM application No 10 705 507 ‘’ for services in Classes 35, 38, 41 and 45.
2.1.10 The decision of EUIPO’s Opposition Division of 29/11/2013, ruling on opposition B 1 965 022 and refusing protection of the international registration No 1 073 886 ‘COMPANYBOOK’ in respect of the European Union for goods and services in Classes 9, 35, 38, 41, 42 and 45.
2.1.11 The decision of EUIPO’s Opposition Division of 19/12/2013, ruling on opposition No B 2 145 582 and refusing the registration of EUTM application No 11 310 679 ‘’ for services in Classes 35, 38 and 42.
2.1.12 The decision of EUIPO’s Opposition Division of 15/05/2014, ruling on opposition No B 1 879 090 and refusing the registration of EUTM application No 9 784 323 ‘’ for services in Classes 41 and 45.
2.1.13 The decision of EUIPO’s Cancellation Division of 21/05/2014, ruling on invalidity proceedings No 8211 C and declaring invalid in its entirety the European Union trade mark registration No 9 120 049 ‘facemba’.
2.1.14 The decision of EUIPO’s Opposition Division of 20/06/2014, ruling on opposition No B 2 269 341 and refusing the registration of EUTM application No 11 964 541 ‘faceBUSKS’ for services in Classes 35, 38 and 41.
2.1.15 The decision of EUIPO’s Opposition Division of 30/06/2014, ruling on opposition No B 1 880 056 and refusing the registration of EUTM application No 9 926 577 ‘LOVEBOOK’ for services in Classes 35, 38, 42 and 45.
2.1.16 The decision of EUIPO’s Opposition Division of 25/08/2014, ruling on opposition No B 2 240 870 and refusing the registration of EUTM application No 11 806 627 ‘’ for services in Classes 38, 42 and 45.
2.1.17 The decision of EUIPO’s Opposition Division of 12/11/2014, ruling on opposition No B 2 220 120 and refusing the registration of EUTM application No 11 713 096 ‘’ for services in Class 41.
2.1.18 The decision of EUIPO’s Opposition Division of 17/12/2014, ruling on opposition No B 2 106 857 and refusing the registration of EUTM application No 11 015 179 ‘FACETUBE’ for services in Classes 38, 42 and 45.
2.1.19 The decision of EUIPO’s Opposition Division of 28/01/2015, ruling on opposition No B 1 923 450 and refusing the registration of EUTM application No 10 001 791 ‘’ for goods and services in Classes 9, 35, 38, 41 and 42.
2.1.20 The decision of EUIPO’s Opposition Division of 12/02/2015, ruling on opposition No B 2 035 510 and refusing the registration of EUTM application No 10 755 973 ‘’ for goods and services in Classes 9 and 42.
2.1.21 The decision of EUIPO’s Opposition Division of 12/02/2015, ruling on opposition No B 2 307 208 and refusing the registration of EUTM application No 12 207 312 ‘’ for services in Classes 35, 41 and 45.
2.2 Twelve decisions of the Spanish Patent and Trade Mark Office (‘SPTO’)
2.2.1 The decision of the SPTO dated 18/10/2011, refusing the registration of trade mark application No 2 974 434 ‘