OPPOSITION No B 2 631 995

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

Laurent Dana,  55 Boucle des Epillets, 77700 Magny Le Hongre, France (applicant), represented by Ipsilon, Le Centralis, 63, Avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative).

On 06/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 631 995 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 538 482 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 538 482. The opposition is based on, inter alia, European Union trade mark registration No 4 535 381. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 4 535 381, for which the opponent claimed repute in the European Union.

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.

The Opposition Division will first examine the reputation claimed by the opponent for the earlier mark.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has 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 07/09/2015. Therefore, the opponent was required to prove that the trade mark 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:

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.

In order to determine the mark’s 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 mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 19/10/2016 the opponent submitted the following evidence:

Exhibit 0:

An excerpt from https://facebook.com/people/Joy-Mypettybook/100009051214903, dated 17/10/2016, showing the contested mark, in Spanish, with photos of dogs and paws. Not translated.

Exhibit A1:

Development of subscribers of ‘FACEBOOK’ in Europe and worldwide between 2011 and 2012 from the website www.internetworldstats.com, dated 04/07/2012.

Exhibit A2:

Numbers of active users of Facebook over the years 2004 (1 million) to March 2013 (1,11 billion), from the website http://news.yahoo.com/number-active-users-over-230449748.html, dated 05/07/2013.

Exhibit A3:

Numbers of active users of Facebook 4th quarter 2014 (1,35 billion), from the website www.statista.com, dated 01/04/2015.

Exhibit B1:

Certifications issued by the Chambers of Commerce in Valencia, Barcelona, Madrid, Mallorca, Sevilla, Bilbao, Alicante, issued between December 2010 and January 2011 and certifying the high degree of well-known character, prestige and reputation of the opponent’s trade mark, with corresponding English translations. For example, the certificate of the Chamber of Commerce of Bilbao of 21/12/2010 states that the earlier trade mark enjoys a well-known character in the sector of advertising, communication, social networks, etc.

Exhibit B2:

Decisions by different bodies which recognise the reputation/well-known character of the ’FACEBOOK’ mark, in particular the following:

Decisions by EUIPO’s Opposition Division of:

2.1        18/10/2012, B 1 727 620, partly translated into English, regarding the EUTMA 9 104 092‘ ’.

2.2        19/12/2013, B 2 145 582, regarding the EUTMA 11 310 679‘ ’.

2.3        29/11/2013, B 1 965 022, EUTMA 1 073 886 ‘COMPANYBOOK’.

2.4        12/11/2013, B 2 007 439, EUTMA 10 705 507 ‘’.

2.5        08/11/2013, B 1 926 446, EUTMA 10 160 133 ‘FACEBOOK’.

2.6        11/09/2013, B 2 035 494, EUTMA 10 755 965 ‘WINE-BOOK’.

2.7        30/08/2013, partly translated into English, regarding the EUTMA 10 427 227 ‘ ’.

2.8        30/04/2013, B 1 994 667, regarding EUTMA 9 635 591 ‘E-healthbook’.

2.9        21/12/2012, B 1 890 923, regarding EUTMA 9 716 077 ‘Partybook’.

2.10        03/12/2012, B 1 814 238, regarding EUTMA 9 695 396

2:11        09/01/2012, B 1 775 686, regarding EUTMA 9 361 304 ‘’.

2:12        15/05/2014, B 1 879 090, regarding EUTMA 9 784 323,’’.

2:13        25/08/2014, B 2 240 870, regarding EUTMA 11 806 627 ‘’.

2:14        28/01/2015, B 2 240 870, regarding EUTMA 11 806 627 ‘’.

2:15        12/02/2015, B 2 035 510, regarding EUTMA 10 755 973 ‘’.

2:16        12/02/2015, B 2 307 208, regarding EUTMA 12 207 312  ’.

2:17        30/10/2015, B 2 160 458, regarding EUTMA 11 454 717 ‘’.

2:18        30/10/2015, B 2 373 887, regarding EUTMA 12 630 976 ‘’.

2:19        18/12/2015, B 2 496 548, regarding EUTMA 12 856 829 ‘DIZAOBOOK’.

2:20        22/01/2016, B 2 183 930, regarding EUTMA 11 524 295 ‘’.

Decisions by the Second Board of Appeal of:

2:21        28/01/2016, case No R890/2015-2, regarding EUTMA 9 789 389 ‘seniorbook’.

2:22        16/06/2016, case No R2027/2015-2, regarding EUTMA 12 837 142 ‘’.

Also some decisions, inter alia, by WIPO:s Arbitration Center, Spanish and French Courts, the Spanish PTO, the German PTO, the Portuguese PTO and the Bulgarian PTO confirming the reputation/well-known character of the ‘FACEBOOK’ mark.

Exhibit B3:

Copies of trade mark registrations in various countries around the world which protect the trade mark ‘FACEBOOK’.

Exhibit B4:

Print/online references which declare the reputed character and fame of the earlier marks worldwide including EU.

4:1        Four references to Facebook in Wikipedia of 28/06/2011, 14/06/2012, 11/06/2013 and 24/03/2015, which affirms that it had more than 600 million active users 2011, 900 million active users May 2012, one billion as of September 2012 and over 1,3 billion users as of June 2014.

4:2        A reference to an article published on fastcompany.com of 26/04/2011 in which Facebook appears at number 1 in the ranking of the world’s most innovative companies of 2010.

4:3        Information from the independent web socialmediatoday.com of 21/06/2011 referring to an article published on 09/10/2010 which indicates that 57% of the US population has a Facebook account and that Facebook dropped from 550 to 540 million users worldwide in the third quarter 2010.

4:4        A reference to an article published on businessinsider.com which affirms that the Facebook portal has more than 600 million users as of 05/01/2011.

4:5        An article published on abcnewsgo.com, dated 21/06/2011 entitled ‘ABC News Joins Forces With Facebook’.

4:6        An interview published on time.com of 18/12/2007 (website extract 21/06/2011) with Mark Zuckerberg, founder of Facebook.

4:7        An article published on znet.com, dated 28/02/2011 (website extracet 21/06/2011), entitled ‘The Social Network won three Oscars, out of eight’. This movie is about the story of the founders of Facebook social network.

4:8        An article published on channel4.com, dated 21703/2010 (website extract 21/06/2011), affirming that there are 24 million Facebook users in the UK; almost the same number of people as voted in the last general election.

4:9        A reference to an article published in the digital version of The New York Times, updated on 27/05/2011 (website extract of 21/06/2011), affirming that Facebook, the world’s largest social network, announced I July 2010 that it had 500 million users around the world and other facts.

4:10        A reference from website http://mashable.com of 25/08/2006 (website extract of 21/06/2011) publishing a complete biography of Facebook.

4:11         A reference from the website http://techcrunch.com of 25/04/2010 (website extract of 21/06/2011) stating, among other things, that Facebook has around 500 million users.

4:12        An article published on thisislondon.co.uk relating to an article of 22/10/2008 in the London Evening Standard referring to Facebook (website extract from 21/06/2011).

4:13        An article published on bbc.co.uk of 15/02/2011 (website extract of 21/06/2011), entitled ‘Facebook boss Mark Zuckerberg answers mobile rumours’.

4:14        A reference from the website http://royal.pingdom.com, posted on 19/03/2010 (website extract of 21/06/2011) which ranks the international site rankings for Facebook, Google and Twitter in different countries, such as Spain, France and Germany.

4:15        An article published on dailyfinance.com of 27/07/2010 (website extract of 21/06/2011) suggesting that Google is developing a potential Facebook rival.

4:16        A reference from thenextweb.com.uk of 21/06/2011, referring to an article of 27/12/2010 publishing the following information: Hitwise has released a report showing that, for the first time ever, Facebook received more UK internet visits than Google’s UK search portal on Christmas Day, accounting for 10.50 % of all UK internet visits on that day.

4:17        A reference from comScore.com of 05/04/2011 publishing the following information: Facebook ranks as top display ad publisher in Q1 2011. Popular social networking site Facebook.com led all online publishers in Q1 with 346 billion display and impressions, representing 31.2 percent market share. Facebook’s market share has increased 15 percentage points from 16.2 percent in Q1 2010.

4.18 An article published on the website finance.yahoo.com of 02/11/2011 (website extract of 11/09/2011) on ‘The most powerful people, 2011’, in which Mark Zuckerberg, the founder of ‘Facebook’ is listed.

4.19 Extract from the book ‘The Facebook Effect’ by David Kirkpatrick, edition of June 2010.

4.20 Extract from Google’s Adplanner Top 1000 most-visited sites in April 2010 of 27/05/2010 and in July 2011 of 06/06/2012, both showing Facebook ranked as No 1.

4.21 Extract from Business Week of 13/08/2008. Facebook, No 1 Globally.

4.22 Time magazine article Time’s 2010 Person of the year of 27/12/2010 (cover page with the picture of Mark Zuckerberg and the title ‘Facebook’s Mark Zuckerberg’, an article about Mark Zuckerberg and statistics about Facebook).

4.23 Facebook statistics and timeline from the website facebook.com of 04/11/2011.

4.24 ComScore press release of 12/08/2008, ‘Social Networking Explodes Worldwide as Site Increase their Focus on Cultural Relevance’.

4.25 ComScore press release of 15/04/2009 ‘Facebook Ranks as Top social networking in the majority of the European Countries’ with a list of different European countries, such as United Kingdom, France, Italy, Spain, Germany, Belgium, Sweden, Denmark, Finland, Netherlands, Austria, Ireland and Portugal.

 

4.26 Time magazine issue dated 31/05/2010 ‘Facebook … and how it’s redefining privacy’.

4.27 Article from the UK newspaper The Telegraph dated 07/07/2011 ‘One in nine people now have a Facebook account as 750 million across the world have signed up to it’.

4.28 Study ‘Europe Digital Year in Review 2010’, of February 2011, by ComScore referring to, within others ‘time spent on different websites (Facebook: 11.7 %)’.

4.29 Article from the webpage socialbankers.com entitled ‘Facebook is globally closing in to 700 million users’, dated 30/06/2011.

4.30 Extract from the French TV website http://envoye-special/france2.fr about reportage ‘Planète Facebook’, broadcast on 25/02/2010.

4.31 Extract from Wikipedia of 13/09/2011 ‘The Social Network’, a 2010 drama film about the founding of the website ‘Facebook’.

4.32. Extract from the website Box Office Mojo for the film ‘The Social Network’. Documents showing that Facebook has been the subject of radio programmes in France.

4.33 Articles ‘relating to the fame of Facebook in England’ from the Telegraph, The Guardian, The Financial Times, BBC News Website and The Mail in the UK in the period between November 2005 and November 2011.

4.34 Article from the German magazine Stern of 03/09/2009 entitled ‘Generation Facebook, Wie sich Millionen Deutsche im Internet vernetzen’.

4.35 Extracts of 10/11/2011 from the website amazon.co.uk regarding books about ‘Facebook, such as ‘The Accidental Billionaires’ about the foundation of Facebook which was, according to the amazon website, published on 30/09/2010.

4.36 Extracts of 10/11/2011 from Amazon.de, Amazon.it, Amazon.es: selections of books on Facebook.

4.37 Publication of the ‘Top 100 Most valuable global brands 2010’ by Millward Brown.

4.38 ‘BrandZ top 100 most valuable global brands 2011’ by Millward Brown.

4.39 Article from the newspaper The Wall Street Journal entitled ‘Is Facebook worth $100 billion?’ dated 14/07/2011.

4.40 Article from the newspaper The Telegraph – ‘Facebook could turn over $1billion this year’, dated 07/07/2009.

4:41 Extracts from muyInternet.com of 16/04/2012, in Spanish, translated, about how to create advertising on Facebook.

4:42 Extracts from muyinternet.com, dated 13/05/2010, ‘Facebook surpasses Yahoo! In advertising for the first time’

4:43 Extracts from muyinternet.com dated 11/05/2011, ‘Facebook surpasses Google in advertising revenues’.

4:44 Extract from muyintemet.com, dated 25/06/2011 ‘Facebook tries a new type of advertising’.

4:45 Extract from muyinternet.com, dated 18/01/2011 ‘Ads in Facebook in 2010 create 1.860 billion euros’.

4:46 Extract from muyinternet.com, dated 13/08/2010, ‘Facebook and AOL may become allies for online advertising’.

4:47 Extract from muyinternet.com. Dated 16/08/2010, ‘Facebook buys Chai Labs, an online publications company.

4:48 Extract from socialmediamegic.com dated 16/04/2012, ‘Almost a Billion users! Facebook and Your Business’

4:49 Extract from socialmediamagic.com, dated 16/04/2012, ‘Researching a Creating Effective Facebook Adverts’.

4:50 Study ‘The 2011 Breakaway Brands’, of September 2011, by Bergesen/Lee of Landor Associates.

4.51 An extract from yourdictionary.com, defining the word ‘friend’ inter alia as ‘…someone adding a person they know on Facebook’.

4:57 Extracts, inter alia,  from telegraph.co.uk, dated 25/02/2014, ‘Mobile World Congress 2014: Facebook’s Mark Zuckerberg explains WhatsApp acquisition’ and ibnlive.in.com, dated 25/02/2014, ‘MWC 2014: Mark Zuckerberg shares his long-term vision for WhatsApp, Internet’, theguardian.com, dated 23/02/2014, ‘Mark Zuckerberg goes to Barcelona to make mobile friends’, elpais.com, dated 25/02/2014, ‘Zuckerberg: “WhatsApp is already worth more than we paid for it”, elpais.com, dated 20/02/2014, ‘Facebook acquires WhatsApp for 19 billion dollars’, elmundo.es, dated 11/03/2014, ‘Historic record at the Mobile World Congress, cincodias.com, dated 16/01/2014, ‘Mark Zuckerberg, founder of Facebook, the star of the Mobile World Congress’, abc.es, dated 25/02/2014, ‘MWC 2014: Zuckerberg asserts that WhatsApp is worth more than we paid for it’, expansion.com, dated 16/01/2014, ‘The founders of Facebook and WhatsApp, guest star at the Mobile World Congress’.

4:58 Publication of the ‘BrandZ Top 100 Most valuable global brands 2014’ by Millward Brown.

Exhibit B 5

Selection of articles and references relating to the fame and rapid popularity of Facebook, in particular in Spain.

5.1 Results of a Google search, dated 21/06/2011, for pages in Spain in relation to Facebook, which obtained 11 860 000 000 hits (only 100 prints of the four first screenshots are included), and also a reference to Facebook in Wikipedia, which affirms that it has more than 120 million active users in the world.

5.2 An article from the blog of Juan Antonio Galindo, CTO at FactoryWeb.es on 23/07/2011 (partial translation).

5.3 Information from the independent website http://liboh.es which says that Facebook is the largest social network in existence and currently the seventh most visited one on Earth (partial translation).

5.4 Reference to an article published in the newspaper EI País affirming that around 200 000 profiles are recorded in Facebook every day as well as other data (partial translation).

5.5 An article published on elmundo.es on 24/10/2007 affirming that Facebook is the new pearl of the network with 49 million active users (partial translation).

5.6 An article published on ElCorreoGallego.es on 30/12/2007 stating that Facebook is the most widely visited social network after MySpace and that, in 2007, it surpassed 50 million users (partial translation).

5.7 An article published on mallorcaconfidencial.com on the organisation of a Facebook account for Rajoy (24/01/2009), organised by EI Mundo (partial translation).

5.8 A reference on elmundo.es on 01/09/2008 stating that Facebook has more than 100 million members around the world and its market value is USD 16 billion (partial translation).

5.9 Cover of the Spanish magazine EI jueves (unknown date) with the heading: ‘Crazy about Facebook’.

5.10 An article on elpais.com published on 21/06/2007 titled ‘Facebook, a new phenomenon’ (partial translation).

5.11 An article published on elpais.com on women as the protagonists of the new social uses of the internet (partial translation).

5.12 An article published on elpais.com about the Facebook platform which ‘continues rocking the web’s world’ (05/07/2007).

5.13 An article published on elpais.com entitled ‘The Spanish innovate in Facebook’ (19/02/2008) which affirms that Facebook is something more than a social network, a business and now considered the new Google, so much so that many American youths navigate more on Facebook than on the rest of the network.

5.14 A reference from Ciberpais (weekly supplement of El Pais) stating that Facebook is one of the principal internet service providers together with Google and eBay (26/06/2008).

5.15 A reference from Ciberpais (weekly supplement of El Pais) saying that 190 million people use My Space and Facebook (15/05/2008).

5.16 A reference from Ciberpais (weekly supplement) speaking of the ‘Facebook era’ (17/04/2008).

5.17 A reference from the website ojointernet.com affirming that Facebook is the fastest-growing social network and it is now the largest in the world with 132 million single visitors in June. Facebook’s growth is above 153% of its annual base (13/08/2008) (partial translation).

5.18 A reference from the independent website ojointernet.com stating that ‘British Intelligence looks for personnel on Facebook’.

 

5.19 A reference from the independent website ojointernet.com stating that ‘Facebook may be bought by the Mormons’, who made an offer of USD 7 billion.

5.20 A reference from the independent website ojointernet.com on the integration of Microsoft Live Search into Facebook.

5.21 A reference from the independent website ojointernet.com giving information about the opening of a new Facebook office in Paris and stating that the social network continues with its plans of consolidation in Europe.

 

5.22 A reference from the independent website ojointernet.com stating ‘Facebook surpasses 150 million users’ and that, if Facebook were a country, it would be the eighth most populous, ahead of Japan, Russia and Nigeria.

5.23 A reference from the independent website ojointernet.com stating that ‘Facebook is now bigger than Myspace worldwide’ and that in November 2008 it had 200 million visits, and in December 222 million visits, including a chart with the constant growth of the number of users from December 2007 to December 2008.

5.24 A reference from the website actualidadterra.es on Facebook’s announcement of the launch of its Spanish version, indicating that Facebook is the most widely visited social network after MySpace (08/02/2008).

5.25 A reference from the website actualidadterra.es affirming that the Facebook phenomenon is extending like wildfire, that it is a mass phenomenon with 200 000 new users every day, and that it has just become one of the companies with the most value on the network.

5.26 News published on genbeta.com that Facebook is the best social network in 2008, having an overwhelming victory with 69% of the votes, and that Facebook is taking over worldwide.

5.27 Various documents of January 2009 relating to the possibility of communicating with Mariano Rajoy on Facebook.

5.28 News published on the website es.blackberry.com of 29/01/2009 stating that Facebook is now available for BlackBerry smartphones.

5.29 An article dated 05/03/2011, published in the newspaper EI Mundo, entitled ‘An investment fund skyrockets Facebook’s value to 46.5 billion’.

5.30 An article dated 12/04/2011, published in the newspaper El Pais (partial translation).

 

5.31 Articles from El Pais, El Mundo and El Periodico in Spain.

5.32 Extract from the newspaper Expansión entitled ‘Twitter, Facebook and LinkedIn, the network boom’ dated 28/06/2011. This extract states: ‘Social networks are revolutionizing the communications market all over the world, and Spain is not an exception. Facebook currently has more than 600 million users, almost 16 million in Spain. In mid-2007, the company created by Mark Zuckerberg launched versions in French, German and Spanish in order to boost their expansion outside the US’.

5.33 Article from the newspaper IPMARK entitled ‘Facebook is at the top of the ranking of social networks in Spain’ dated 05/07/2011.

5.34 Extract from the newspaper El Pais, entitled ‘Facebook has more than 15 million users in Spain’, dated 28/06/2011.

5.35 Article from the website liboh.es, dated 11/10/2007. An extract states that Facebook is the largest existing social network, the greatest exponent of the web 2.0 for many, and it is currently the seventh most visited site on Earth.

5.36 Article from the newspaper Europa Press, entitled ‘Facebook has 750 million users’, dated 27/06/2011 (translation).

5:37 Article from the newspaper El Mundo on 18/05/2012, entitled ‘Facebook debuts on Wall Street with a record number of ‘friends’.

5:38 Article from the newspaper El Pais on 19/05/2012, ‘Facebook marks a milestone on the Stock Exchange despite a not very brilliant debut’.

5:39 Article from the newspaper El Mundo of 09/06/2013, ‘The jump forward in evolution by Twitter and Facebook’.

Exhibit B 6:

Examples of the opponent invoking its FACEBOOK marks against third-party trade marks.

Exhibit B 7

Results of searches in Alexa (the web information company) for the website facebook.com, 2011-2013 and 2015. It states that FACEBOOK is the second most popular site in the world.

Exhibit B 8

CD-ROM including journals and magazines related to Facebook in France.

8.1 152 articles from the French newspaper Les Echos (partial translation).

8.2 201 articles from the newspaper La Tribune (partial translation).

 

8.3 Books and articles which explain to businessmen how to use Facebook to do business.

8.4 Documents showing that Facebook has been the subject of radio programmes in France 2007-2010, partial translations.

8.5 Selection of books on Facebook published in France between 2008 and 2011 (partial translations).

Exhibit B 9

CD-ROM including articles from various magazines of the fame of FACEBOOK all over the world, inter alia The New York Times, Rolling Stone, Washington Post, Los Angeles Times, Fortune, Time, Financial Times, Business Week and books about Facebook, listed on Amazon.com. Also a report from Liquid agency Brand Marketing, ‘Brand Impact Study/Report 2011’.

Exhibit B 10

Document entitled ‘Observatoire des Réseaux Sociaux’ (Social Network Observatory) released in October 2010.

Exhibit B 11

Document entitled ‘Informe de Resultados Obervatorio de Redes Sociales’ (Social Network Observatory, Report on results) released in February 2011, ‘The Cocktail Analysis report on the Observatory of Social Networks’

Exhibit B 12

‘Observatoire des réseaux sociaux’ (in French): dated November 2012 (partial translation).

Exhibit B 13

Extract from interbrand.com and bestglobalbrands.com, ‘Best global brands 2012’, dated 01/03/2013 and ‘Best global brands 2013’, dated 21/10/2013, ‘Best global brands 2014’, dated 24/03/2015. The trade mark Facebook is ranked No 69 in 2012, No 52 in 2013 and No 29 in 2014.

Exhibit B 14

A blog article from blog.nielsen.com, ‘Social Media Report 2012: Social Media Comes of Age’.

Exhibit C

A study made by FaberNovel Inc., a management consulting firm, entitled ‘Facebook the Perfect Startup’.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and that it is generally known by the public in the European Union, and in particular in Spain and France, where it enjoys a consolidated position as the name of a popular social networking website. Not only the overwhelming numbers of users but also website entries, decisions of national authorities and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public, in particular in Spain and France.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking, whereas there is no or little reference to the remaining services.

2. The signs

FACEBOOK	MYPETTYBOOK
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 comparison will focus on France and Spain.

The earlier mark is a word mark, ‘FACEBOOK’. It has no specific meaning as such, for the French- and Spanish-speaking public.

The contested sign is also a word mark, ‘MYPETTYBOOK’. It has no meaning as such for the relevant public.

Visually, the signs are similar to the extent that they coincide in the element ‘-BOOK’. They differ in the elements ‘FACE-’ of the earlier mark and ‘MYPETTY-’ of the contested sign.

Therefore, the signs are visually similar, at least to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘-BOOK’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛FACE’ of the earlier sign which have no counterparts in the contested mark, and in the letters ‘MYPETTY’ of the contested sign, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar, at least to a low degree.

Conceptually, both signs consist of English words. They are not basic English words and are not likely to be understood by the average consumer in Spain and France. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar to the extent that they have in common the element –‘BOOK’.  

Therefore, the assessment of 8(5) EUTMR will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As regards the degree of similarity between the signs required under Article 8(5) EUTMR, the Court has held that it differs from that required under Article 8(1)(b) EUTMR. Whereas the implementation of the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the implementation of the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 27, 29 and 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58 and 66).

In the present case, the signs are similar insofar as they have the letters ‘BOOK’ in common. The differing verbal elements of the signs, ‘FACE’ respectively ‘MYPETTY’, do not alter this finding. Moreover, for the relevant public, the coinciding letters do not constitute a meaningful element or part of a meaningful element in either of the signs and, consequently, none of the elements of the marks has a higher degree of distinctive character than the others. Furthermore, the earlier mark is inherently distinctive for the goods concerned and, moreover, enjoys a high degree of recognition and reputation for the abovementioned services.

The opposition is directed against the following goods and services:

Class 9:         Computer software; Electronic publications, downloadable; Communication software; Magnetic, optical or electronic membership cards; Computer games (programs).

Class 35:         On-line advertising on a computer network; Online business networking services; Advertising, marketing and promotion services for businesses; Compilation and systemisation of information into computer databases; Providing of a searchable online database for bringing together pet owners; Business research and investigation services; Retailing of computer software via global electronic or computer communications networks; Retailing of computer software for hand-held mobile digital electronic devices and other electronic apparatus; Compilation of information into computer databases; Data search in computer files for others.

Class 38: Telecommunications services, namely electronic transmission of data,    messages and information between and among computers, mobile and handheld devices and wired and wireless communication devices; Telecommunication services, namely, enabling users to transmit messages, comments, multimedia content, videos, movies, films, and photos, audio content, animation, pictures, images, text, information, and other user-generated content via a global computer network and other computer and communications networks; Providing of online forums, discussion forums and electronic bulletin boards allowing users to publish, search for, view, share, review, evaluate and comment on topics of interest in connection with pets; Providing access to computer, electronic and online databases; Audio, text, video and multimedia broadcasting services over computer and electronic communications networks, namely uploading, posting, displaying, tagging and electronically transmitting data, audio, and video; Providing of access to computer databases in the field of pets; Providing access to computer databases in the field of social networking; Electronic transmission of computer software via global electronic or computer communications networks; Providing of connection services and access to electronic or computer communications networks for transmitting and receiving computer software; Communication by computer terminals; Communication via a global computer network; Electronic mail, electronic receiving and sending of messages; Providing of access to webpages and websites; Transmission of data or audiovisual images via a global computer network; Providing of access to online platforms allowing users to access and download computer software.

Class 42: Design, installation, maintenance and updating of computer software, operating system software, utility software; Hosting of virtual communities allowing registered users to organise groups, events, participate in discussions, collect information and resources and participate in social networking and hobbies; Hosting of digital content online; Hosting an interactive website and online non-downloadable software for uploading, downloading, posting, showing, displaying, tagging, sharing and transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; Providing of a website offering non-downloadable software in connection with pets and hobbies; Providing of non-downloadable software allowing users to search for, locate and communicate with other users via electronic communications networks in order to organise outings and events in connection with pets; Providing online computer databases and online searchable databases in the fields of business and professional networking; Application service provider (ASP) services; Providing information from searchable indices and databases of information, including text, electronic documents, databases, graphics and audio visual information, by means of global computer information networks or other communications networks; Computer services in the nature of customized web pages featuring user-defined information, personal profiles, audio and images; Computer programming; Computer services, namely, on-line personalized information services; Providing software; Design and development of computer software for others; Creating and maintaining websites that provide an on-line community for advertising and marketing; Hosting of an online community (website) allowing registered users to share information, photographs and audio and video content and to communicate and cooperate with one another, to form groups and to participate in social networking, consultancy and technical assistance with regard to troubleshooting of computer software and hand-held mobile digital electronic devices and other electronic apparatus; Providing of search engines for acquiring information via an electronic or computer communications network; Multimedia and audio-visual software consulting services; Computer programming; Support and consultation services for developing computer systems and databases; Creation and management of web sites; Design and development of web-sites featuring multimedia materials; Hosting web sites.

Earlier European Union trade mark No 4 535 381 has shown reputation, inter alia in Spain and France for providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking.

There is a connection between the opponent’s services in Class 38 and all the contested goods and services in Class 9, 35, 38 and 42. These goods and services are closely related, since the contested goods and services are all related to computers, computer software or telecommunications, as is the opponent’s reputed services. The contested goods and services and the opponent’s services can be said to belong to broadly similar commercial areas. Some have a much closer link and some are even identical. Nevertheless, it can be said that there is at least some degree of connection between the services for which the earlier mark is reputed and all the contested goods and services.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers in Spain and France will be likely to associate it with the highly reputed earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent primarily claims the following:

1. There is a potential taking of unfair advantage of the distinctiveness and reputation of the earlier trade marks (free-riding). Due to the similarity between the signs and the identity between the applied for goods and services and the earlier mark’s goods and services, the use of the trade mark application ‘MYPETTYBOOK’ would obtain an unfair benefit of the distinctiveness and reputation of the earlier marks because consumers would/could believe that the services offered under the contested mark are in some way related to the opponent’s company and so it would take advantage of their image. Thus, the use of the contested mark takes/will take unfair advantage of the distinctive or reputed character of the ‘FACEBOOK’ trade mark, and the mere association of the contested mark with the positive qualities of the earlier mark gives rise to an evident exploitation and unfair benefiting by the trade mark application.

2. The use of the contested mark would also imply an evident detriment to the reputation of the earlier marks (tarnishing). It can be seen as a step beyond blurring in that the mark is not merely weakened but actually degraded by the link which the public makes with the later mark. Contrary to the opponent’s wishes its FACEBOOK trade marks could be associated through this new application ‘MYPETTYBOOK’ with a specific content and to connotations with which it does not want to be associated.

3. Finally, the opponent argues that the use of the contested mark for the goods and services applied for would be detrimental to the distinctive character of the earlier marks (dilution by blurring). The proliferation of marks containing the word BOOK, as in the present case, would dilute the distinctive character of the earlier marks because there is a high risk that consumers will no longer be able to immediately link BOOK with the opponent’s reputed goods and services, which would lead to a weakening of the distinctive character of the earlier mark.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade marks and be detrimental to the distinctive character and repute of the earlier trade marks. 

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods and services:

Class 9:         Computer software; Electronic publications, downloadable; Communication software; Magnetic, optical or electronic membership cards; Computer games (programs).

Class 35:         On-line advertising on a computer network; Online business networking services; Advertising, marketing and promotion services for businesses; Compilation and systemisation of information into computer databases; Providing of a searchable online database for bringing together pet owners; Business research and investigation services; Retailing of computer software via global electronic or computer communications networks; Retailing of computer software for hand-held mobile digital electronic devices and other electronic apparatus; Compilation of information into computer databases; Data search in computer files for others.

Class 38: Telecommunications services, namely electronic transmission of data,    messages and information between and among computers, mobile and handheld devices and wired and wireless communication devices; Telecommunication services, namely, enabling users to transmit messages, comments, multimedia content, videos, movies, films, and photos, audio content, animation, pictures, images, text, information, and other user-generated content via a global computer network and other computer and communications networks; Providing of online forums, discussion forums and electronic bulletin boards allowing users to publish, search for, view, share, review, evaluate and comment on topics of interest in connection with pets; Providing access to computer, electronic and online databases; Audio, text, video and multimedia broadcasting services over computer and electronic communications networks, namely uploading, posting, displaying, tagging and electronically transmitting data, audio, and video; Providing of access to computer databases in the field of pets; Providing access to computer databases in the field of social networking; Electronic transmission of computer software via global electronic or computer communications networks; Providing of connection services and access to electronic or computer communications networks for transmitting and receiving computer software; Communication by computer terminals; Communication via a global computer network; Electronic mail, electronic receiving and sending of messages; Providing of access to webpages and websites; Transmission of data or audiovisual images via a global computer network; Providing of access to online platforms allowing users to access and download computer software.

Class 42: Design, installation, maintenance and updating of computer software, operating system software, utility software; Hosting of virtual communities allowing registered users to organise groups, events, participate in discussions, collect information and resources and participate in social networking and hobbies; Hosting of digital content online; Hosting an interactive website and online non-downloadable software for uploading, downloading, posting, showing, displaying, tagging, sharing and transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; Providing of a website offering non-downloadable software in connection with pets and hobbies; Providing of non-downloadable software allowing users to search for, locate and communicate with other users via electronic communications networks in order to organise outings and events in connection with pets; Providing online computer databases and online searchable databases in the fields of business and professional networking; Application service provider (ASP) services; Providing information from searchable indices and databases of information, including text, electronic documents, databases, graphics and audio visual information, by means of global computer information networks or other communications networks; Computer services in the nature of customized web pages featuring user-defined information, personal profiles, audio and images; Computer programming; Computer services, namely, on-line personalized information services; Providing software; Design and development of computer software for others; Creating and maintaining websites that provide an on-line community for advertising and marketing; Hosting of an online community (website) allowing registered users to share information, photographs and audio and video content and to communicate and cooperate with one another, to form groups and to participate in social networking, consultancy and technical assistance with regard to troubleshooting of computer software and hand-held mobile digital electronic devices and other electronic apparatus; Providing of search engines for acquiring information via an electronic or computer communications network; Multimedia and audio-visual software consulting services; Computer programming; Support and consultation services for developing computer systems and databases; Creation and management of web sites; Design and development of web-sites featuring multimedia materials; Hosting web sites.

        

        

As seen above, the earlier trade mark was found to have a reputation for:

Class 38: Providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking.         

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

• The applicant could be intended to use the mark for an online and social community network related to pets.
• The contested trade mark will take a ‘free-ride’ on the investment that Facebook, Inc. has made in promoting and building-up goodwill for its mark. The applicant’s goods and services will be stimulated just because it includes an element of the earlier marks FACEBOOK, which is the suffix BOOK.
• The applicant would exploit, without paying any financial compensation, the marketing effort that Facebook, Inc. has expended in order to create and maintain the image of its FACEBOOK marks.
• The relevant public may, even without confusing the origin of the goods and services experience an attraction towards the applicants goods and services by the mere fact that the trade mark shares the distinctive element that formed the reputed marks FACEBOOK, which is BOOK with the well-known earlier marks FACEBOOK (including the figurative Facebook mark) and the same structure ‘XXX+BOOK’ and will be used for goods and services related with the goods and services for which the earlier marks are reputed.
• The mere association of the contested mark with the positive qualities of the earlier mark gives rise to an evident exploitation and unfair benefiting by the applied trade mark.
• Additionally, there is a clear risk that consumers may believe that the services offered under the contested mark are related to Facebook, Inc.

In the present case, taking into account the nature of the goods and services applied for in Classes 9, 35, 38 and 42, which consist of both goods and services addressed to the general public and of goods and services that target a more specialised public (for instance the support and consultation services for developing computer systems and databases in Class 42), the relevant public is the average European consumer, in particular the Spanish and French-speaking public.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In the present case, it has been held that the signs at issue are similar to the extent that they coincide in the ending ‚-BOOK‘, which is distinctive in France and Spain, and that this will create a link between the marks in the mind of the consumer. Given that there is, at least, some connection between the goods and services in question, it seems inevitable that the image of the earlier mark and the characteristics that it projects will be transferred to the applicant’s goods and services if they are marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s FACEBOOK mark in the mind of consumers in France and Spain. This may lead to an unacceptable situation in which the applicant is allowed to take a ‘free ride’ on the investment of the opponent in promoting and building up a goodwill for his marks, as it may stimulate the success of the applicants goods and services to an extent which it is disproportionately high in comparison with the size of its promotional investment.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the repute of the earlier trade mark at least in France and Spain.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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.

The Opposition Division

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Plamen IVANOV

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.