PinMyRide | Decision 2103987 – Pinterest, Inc. v. Maryme GMBH

OPPOSITION No B 2 103 987

Pinterest, Inc., 808 Brannan Street, San Francisco, California 94103, United States of America (opponent), represented by Baker & McKenzie LLP, 100 New Bridge Street, London EC4V 6JA, United Kingdom (professional representative)

a g a i n s t

Maryme GmbH, Invalidenstraße 115, 10115 Berlin, Germany (applicant), represented by (F200) Asg Rechtsanwälte Gmbh, Friedrichstr. 200, 10117 Berlin, Germany (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 103 987 is partially upheld, namely for the following contested services:

Class 35: Data-processing services; Management and compilation of computerised databases; Collating of data in computer databases; Advertising and marketing; Price comparison services; Providing information and consultancy for consumers in trade and business affairs (consumer consultancy); Providing information and consultancy for consumers in trade and business affairs (consumer consultancy); Rental of advertising space; Business management, consultancy and advisory services; Office functions; Presentation of goods on communications media, for retail purposes; Electronic data storage, advertising; Organizational and business administration consulting; Compiling and collating of data in computer databases; Professional business consultancy, including via the Internet; Arranging of trading and economical contacts, also over the Internet; Arranging of contracts, for others, for the buying and selling of goods; Arranging of contracts, for others, for the providing of services; Presentation of companies on the Internet and other media; Presentation of goods and services on communication media; Updating and maintenance of data in computer databases; Systematic ordering of data in computer databases; Collating of data in computer databases; Marketing, advertising and promotional services; Market research and information services; 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; Retailing and wholesaling, including via the Internet, relating to consumer electronics, computers, computer peripheral devices, telephones, cameras, CDs and DVDs.

Class 38: Providing access to a worldwide computer network; Providing telecommunications connections to a global computer network; Broadcasting and transmission of text, messages, information, sound, images and data; Providing electronic transmission of voice, data and information through the Internet; Electronic transmission of news, information, messages or images; Providing multiple use access to global computer information networks for the transfer and dissemination of a wide range of information; Communication services for access to information, text, sound, images and data via communication and computer networks; Information transmission via electronic communications networks; Providing Internet chatrooms by transmitting virtual discussion forums established via text messages; Electronic mail, message sending and receiving services; Electronic transmission of messages, data and documents; Internet connection services for residential consumers and for commercial entities; Cellular telephone communication; Telecommunications; Telecommunications by means of platforms and portals on the Internet; Leasing of access time to global computer networks; Web messaging; Providing telecommunication facilities for the placing of orders for products and services via electronic data communication; Data transmission and reception services via telecommunications means; Telecommunication routing and junction services; Delivery of digital music by telecommunications; Telecommunications, Namely personal communications services; Telecommunication access services; Delivery of digital audio and/or video by telecommunications; Arranging access to databases on the Internet; Access to a telecommunications network portal, in particular by computer, telephone or television; Providing access to computer, electronic and online databases; 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; Providing access to information regarding social and political matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audiovisual information, via computer and communications networks.

Class 42: Computer services, namely providing software for creating virtual communities for registered users to organise 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), namely, hosting computer software applications of others; Application service providers (ASPs), namely providing software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information via communications 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; Social services and providing information in relation to personal and social services rendered by others to meet the needs of individuals, in the field of personal development, namely self-improvement, self-fulfilment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities.

2. European Union trade mark application No 10 804 144 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 10 804 144 for the word mark ‘PinMyRide’. The opposition is based on European Union trade mark registration No 10 634 004 for the word mark ‘PIN’. The opponent invoked, after a limitation in its observations dated 02/04/2015, Article 8(1)(b) and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The goods and services

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

Class 9: Computer hardware; Computer software; Computer software applications; Computer software that enables internet users to create, bookmark, annotate, and publicly share data, information and multimedia content; Downloadable software in the nature of a mobile application; Downloadable software via the internet and wireless devices; Downloadable software to facilitate online advertising, business promotion, connecting social network users with businesses and for tracking users and advertising of others to provide strategy, insight, marketing, and predicting consumer behavior; Electronic publications; Laptops; Tablets; Mobile phones; Handheld computing devices; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Fire-extinguishing apparatus; none of the aforesaid goods included or in connection with postal, freight or courier services or electronic mail services.

Class 35: Advertising and promotional services; Advertising and marketing services, namely promoting the products and services of others; Business data analysis; Business monitoring and consulting services, namely, tracking users to provide strategy, insight, marketing guidance, and for analyzing, understanding and predicting consumer behavior and motivations, and market trends; Business management; Business administration; Office functions; none of the aforementioned services included or in connection with postal, freight or courier services or electronic mail services.

Class 38: Electronic bulletin board services; Telecommunications; none of the aforementioned services included or in connection with postal, freight or courier services or electronic mail services.

Class 42: Providing a website featuring technology that enables internet users to create, bookmark, annotate, upload, organize, and publicly share data, information and multimedia content; Computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking services in the field of general interest; Providing a website featuring non-downloadable software; Hosting an interactive website and online non-downloadable software for uploading, posting, showing, displaying, tagging, sharing and transmitting messages, comments, multimedia content, photos, pictures, images, text, information, and other user-generated content; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; none of the aforementioned services included or in connection with postal, freight or courier services or electronic mail services.

Class 45: Online social networking services; Providing a social networking website for entertainment purposes and general interest purposes; Legal services; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals; none of the aforementioned services included or in connection with postal, freight or courier services or electronic mail services.

The contested services are the following:

Class 35: Data-processing services; Management and compilation of computerised databases; Collating of data in computer databases; Advertising and marketing; Price comparison services; Providing information and consultancy for consumers in trade and business affairs (consumer consultancy); Providing information and consultancy for consumers in trade and business affairs (consumer consultancy); Rental of advertising space; Auctioneering; Business management, consultancy and advisory services; Office functions; Presentation of goods on communications media, for retail purposes; Electronic data storage, advertising; Organizational and business administration consulting; Compiling and collating of data in computer databases; Professional business consultancy, including via the Internet; Arranging of trading and economical contacts, also over the Internet; Arranging of contracts, for others, for the buying and selling of goods; Arranging of contracts, for others, for the providing of services; Presentation of companies on the Internet and other media; Presentation of goods and services on communication media; Updating and maintenance of data in computer databases; Systematic ordering of data in computer databases; Collating of data in computer databases; Marketing, advertising and promotional services; Market research and information services; Online retail store services featuring online delivery of digital media, namely images movies, musical and audiovisual works and related merchandise; 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; Retailing and wholesaling, including via the Internet, relating to decorating supplies, cleaning preparations, cosmetics, candles, pharmaceutical preparations, consumer electronics, computers, computer peripheral devices, telephones, cameras, CDs and DVDs, household electric machines, vehicles, bicycles, jewellery, clocks and watches, printed matter, leather goods, handbags, purses and wallets, furniture, household goods, household or kitchen utensils and containers, textiles, clothing, footwear, headgear, haberdashery, floor coverings, games and playthings, gymnastic and sporting articles, foodstuffs, beverages, alcoholic beverages and confectionery.

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

The terms ‘in particular’ and ‘including’, used in the applicant’s list of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and the opponent’s lists of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that, according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The opponent’s list of goods and services contains the limitation none of the aforementioned goods/services included or in connection with postal, freight or courier services or electronic mail services. As the contested services are not limited in any way, this limitation will have no impact on the comparison and will therefore not be mentioned further.

Contested services in Class 35

Advertising, marketing and promotional services; business management, consultancy and advisory services; office functions are identically contained in both lists of services (including synonyms).

The opponent’s office functions are the internal day-to-day operations of an organisation, including administration and support services in the ‘back office’. They mainly cover activities that assist with the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, the compilation of information into computer databases, invoicing and the administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. Therefore, the contested data-processing services; management and compilation of computerised databases; collating of data in computer databases; compiling and collating of data in computer databases; updating and maintenance of data in computer databases; systematic ordering of data in computer databases; collating of data in computer databases are included in the broad category of the opponent’s office functions in Class 35. Therefore, they are identical.

The contested rental of advertising space; presentation of goods on communications media, for retail purposes; electronic data storage, advertising; presentation of companies on the internet and other media; presentation of goods and services on communication media; market research and information services; 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 are various advertising services. These services are included in, over overlap with, the broad category of the opponent’s advertising services in Class 35. Therefore, they are identical.

The contested providing information and consultancy for consumers in trade and business affairs (consumer consultancy) (mentioned twice in the list of services) overlaps with the opponent’s business monitoring and consulting services, namely, tracking users to provide strategy, insight, marketing guidance, and for analyzing, understanding and predicting consumer behavior and motivations, and market trends, as the contested consumer consultancy services are included in the opponent’s services in the same class. Therefore, these services are identical.

The opponent’s business administration services are intended to help companies with the performance of business operations and therefore the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently to direct activities towards common goals and objectives. Therefore, the contested price comparison services; organizational and business administration consulting; arranging of trading and economical contacts, also over the internet; arranging of contracts, for others, for the buying and selling of goods; arranging of contracts, for others, for the providing of services; buyer to supplier matching services rendered through an online computerized network are included in the broad category of the opponent’s business administration in Class 35. Therefore, they are identical.

The contested professional business consultancy, including via the Internet is included in the broad category of the opponent’s business management in Class 35. Therefore, they are identical.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing and wholesaling, including via the Internet, relating to consumer electronics, computers, computer peripheral devices, telephones, cameras, CDs and DVDs are similar to a low degree to the opponent’s computers; computer hardware; mobile phones; photographic apparatus and instruments; compact discs, DVDs and other digital recording media in Class 9.

The contested online retail store services featuring online delivery of digital media, namely images movies, musical and audiovisual works and related merchandise; retailing and wholesaling, including via the Internet, relating to decorating supplies, cleaning preparations, cosmetics, candles, pharmaceutical preparations, household electric machines, vehicles, bicycles, jewellery, clocks and watches, printed matter, leather goods, handbags, purses and wallets, furniture, household goods, household or kitchen utensils and containers, textiles, clothing, footwear, headgear, haberdashery, floor coverings, games and playthings, gymnastic and sporting articles, foodstuffs, beverages, alcoholic beverages and confectionery and the opponent’s goods in Class 9 are dissimilar. Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Retail and wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

Furthermore, these contested services are also dissimilar to the opponent’s services in Classes 35, 38, 42 and 45, as these services have different natures, different purposes and different methods of use. They are not complementary to or in competition with each other. Furthermore, they are not distributed through the same channels and they differ in their providers and relevant publics.

The contested auctioneering refers to a public sale in which goods or property are sold to the highest bidder. These services have nothing relevant in common with the opponent’s services in Class 35 or with the opponent’s remaining goods and services in Classes 9, 38, 42 and 45. These goods and services have different natures, different purposes and different methods of use. They are not complementary to or in competition with each other. Furthermore, they are not distributed through the same channels and they differ in their providers and relevant publics. Therefore, these goods and services are dissimilar.

Contested services in Class 38

Telecommunications are identically contained in both lists of services.

The contested providing access to a worldwide computer network; providing telecommunications connections to a global computer network; broadcasting and transmission of text, messages, information, sound, images and data; providing electronic transmission of voice, data and information through the internet; electronic transmission of news, information, messages or images; providing multiple use access to global computer information networks for the transfer and dissemination of a wide range of information; communication services for access to information, text, sound, images and data via communication and computer networks; information transmission via electronic communications networks; providing Internet chatrooms by transmitting virtual discussion forums established via text messages; electronic mail, message sending and receiving services; electronic transmission of messages, data and documents; internet connection services for residential consumers and for commercial entities; cellular telephone communication; telecommunications by means of platforms and portals on the internet; leasing of access time to global computer networks; web messaging; providing telecommunication facilities for the placing of orders for products and services via electronic data communication; data transmission and reception services via telecommunications means; telecommunication routing and junction services; delivery of digital music by telecommunications; telecommunications, namely personal communications services; telecommunication access services; delivery of digital audio and/or video by telecommunications; arranging access to databases on the internet; access to a telecommunications network portal, in particular by computer, telephone or television; providing access to computer, electronic and online databases; 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; providing access to information regarding social and political matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audiovisual information, via computer and communications networks are included in the broad category of the opponent’s telecommunications in Class 38. Therefore, they are identical.

Contested services in Class 42

The contested computer services, namely providing software for creating virtual communities for registered users to organise 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), namely, hosting computer software applications of others; application service providers (ASPs), namely providing software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information via communications 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 are similar to the opponent’s technological services and research and design relating thereto in Class 42. These services have the same nature, provider and relevant public.

Contested services in Class 45

The contested social introduction, networking and dating services; social services and providing information in relation to personal and social services rendered by others to meet the needs of individuals, in the field of personal development, namely self-improvement, self-fulfilment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities are included in the broad category of, or overlap with, the opponent’s personal and social services rendered by others to meet the needs of individuals in Class 45. Therefore, they are identical.

Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar (to varying degrees) are directed partly at the public at large and partly at a professional public with specific knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

The signs

PinMyRide

Earlier trade mark

Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As all of the elements of the marks are meaningful in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

As both of the marks are word marks, it is irrelevant whether they are written in lower case or upper case letters or a combination thereof (31/01/2013, T-66/11, Babilu, EU:T:2013:48, § 57).

The word ‘PIN’ in the earlier mark might be associated, inter alia, with a ‘personal identification number’, a numeric password for electronic devices or ‘a thin piece of metal with a sharp point at one end and a round head at the other, used especially for fastening objects or materials’. Bearing in mind that some of the relevant goods and services are technical and computer related, it is considered that this element is weak for some of these goods and services, as it might indicate that they are accessible through or provide a ‘PIN’ or ‘personal identification number’ (e.g. mobile phones in Class 9 and telecommunications in Class 38). For other goods and services (e.g. DVDs in Class 9 and social networking in Class 45), this element is not descriptive or otherwise weak and therefore has an average degree of distinctiveness with respect to those goods and services.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46). Therefore, it can reasonably be assumed that the relevant public will split the contested mark into the meaningful words ‘pin’, ‘my’ and ‘ride’. ‘Pin’ will be perceived as having the meaning indicated above and will, for the same reasons, also be weak in relation to some of the goods and services. ‘My Ride’ will be perceived as ‘my journey made on horseback, on a bicycle or motorcycle, or in a vehicle’ or in an informal way as ‘my motor vehicle’, which has a rather limited degree of distinctiveness in relation to some of the services in question, as it can indicate their subject matter (e.g. chatrooms and internet sites on motor vehicles).

Visually and aurally, the signs coincide in the element/sound ‘PIN’, which is, as explained above, weak for some of the goods and services but nevertheless is the sole element/sound in the earlier mark and the first element/sound in the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, the signs differ in the additional words/sounds, ‘MyRide’, of the contested sign, which are in a secondary position in this sign and have a rather limited degree of distinctiveness in relation to some of the services.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the element ‘PIN’, which is weak in relation to some of the goods and services as explained above, and the conceptual difference between the signs lies in the words ‘MyRide’ in the contested sign, which are in a secondary position and have a rather limited distinctiveness for some of the services, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for part of the goods and services in question and as normal for another part of the goods and services.

Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The relevant publics are the public at large and a professional public, the degree of attention of which will vary from average to higher than average. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). However, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The conflicting goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar.

The signs are visually, aurally and conceptually similar to an average degree, since the earlier mark is fully incorporated at the beginning of the contested sign.

Although the element ‘PIN’, which the signs have in common, is weak for some of the relevant goods and services, this finding does not prevent it from contributing to making the signs confusingly similar, as argued by the applicant. The differing element in the contested sign, ‘MyRide’, is in a secondary position and has a rather limited degree of distinctiveness in relation to some of the contested services. Therefore, the element ‘PIN’, which the signs have in common, clearly influences the perception of the marks, especially bearing in mind that it constitutes the entirety of the earlier mark and is at the beginning of the contested sign. Consequently, this element leads to the signs creating similar overall impressions.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically-linked undertakings. Indeed, because the entire earlier mark is followed in the contested sign by the words ‘MyRide’, which have a limited degree of distinctiveness in relation to some of the services, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 634 004. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to varying degrees) to those of the earlier trade mark. As far as the contested services found to be similar to a low degree are concerned, it is considered that the low degree of similarity is outweighed by the higher degree of similarity between the signs.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to services that are identical and similar (to a low degree). The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union and in each one of the Member States.

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 12/04/2012. 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 and in each and all the Member States 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 all the goods and services in Classes 9, 35, 38, 42 and 45, as mentioned above.

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 02/04/2015, the opponent submitted as evidence an affidavit containing several exhibits, signed by Mr Anthony Falzone, the opponent’s Deputy General Counsel, dated 20/03/2015. Mr Falzone states that ‘Pinterest is well known as a provider of online social media services through its website and applications, inter alia, designed for Apple and Android mobile devices’. The services provided by the opponent allow users, which include businesses and organisations, as well as private individuals, to gather images and other content and organise that content into themed collections that it calls ‘boards’. The services offered at the www.pinterest.com website and through mobile applications have always been branded ‘Pinterest’ and have been known as such, since it was launched in March 2010. Furthermore, it is explained that the mark ‘Pinterest’ is an invented word deriving from a combination of ‘pin’ and ‘interest’. A table included in the affidavit mentions the estimated numbers of visitors and account sign-ups (users who register an account to create their own Pinterest boards in order to post and share content) from March 2010 to January 2012 and from February 2012 to mid-November 2012 in the United Kingdom and in the European Union as a whole. The visitors to the Pinterest website between February 2012 and November 2012 are estimated at 3.2 million in the UK and 10.9 million in the European Union. The number of account sign-ups between February 2012 and November 2012 was 805 981 in the UK and 2.7 million in the European Union. These figures have been audited by two different and independent third parties.

The affidavit contained the following exhibits:

Exhibit AF1: an article dated 07/02/2012 from comScore that estimates that more than 11 million people had visited the Pinterest website by January 2012, making it the fastest site in history to surpass the 10 million unique visitor mark, as reported at www.techcrunch.com. Furthermore, an extract from www.alexa.com shows the website analytics for the domain name www.pinterest.com (for 2013 and 2014). In the United Kingdom, the site is ranked 19th most popular (relative to other sites), in France 36th, in Italy 31st and in Germany 72nd.
Exhibit AF2: an excerpt from www.go.experian.com dated 2012 confirming that Pinterest is the most popular social networking site after Facebook and Twitter.
Exhibit AF3: an excerpt from www.experian.com dated 2012 with the headline ‘Instagram and Pinterest the new global stars of social’. This extract sets out Experian’s estimates of Pinterest’s growth between July 2011 and July 2012 in, inter alia, the United Kingdom.
Exhibit AF4: an excerpt from the Los Angeles Times dated 21/11/2012, analysing the history and functions of Pinterest and reporting estimated figures from comScore, according to which Pinterest had nearly 27 million visitors in October 2012; and an excerpt from compete.com dated October 2012 headed ‘Pinterest surpasses Tumblr in unique visitors’.
Exhibit AF5: two witness statements from third parties who audited the estimated number of visitors and account sign-ups submitted by the opponent in the affidavit dated 20/03/2015. (1) A witness statement by Mr James Rashleigh (of PricewaterhouseCoopers) dated 04/03/2014. First, Mr Rashleigh states that he is a director of PricewaterhouseCooper’s forensic data analytic business (London office), where he specialises in data analytics and cyber threat intelligence. (2) A witness statement by Mr Dominic Fiore (of Fitzgerald & Law) dated 04/03/2014. Mr Fiore is a partner in Fitzgerald & Law LLP in London. He states that he is a member of audit and corporate finance faculties and an affiliate of the ICAEW (Institute of Chartered Accountants in England and Wales), being bound by the ICAEW’s code of ethics, the principles of which specifically require integrity and objectivity.
Exhibit AF6: screenshots of the ‘Pinterest’ website showing a wide array of individuals and prestigious institutions that maintain a presence on Pinterest, including the English National Opera, the Chicago Opera Theatre, the University of Liverpool, Selfridges, Harrods, the London Symphony Orchestra, the Tate Gallery, the Royal Shakespeare Company, the Royal Navy, Barclays Premier League and Fulham Football Club.

Exhibit AF7: a printout from the website http://www.webbyawards.com/ stating that Pinterest won the People’s Voice Best Visual Design – Function Award and the Social Media Webby Award for 2012. The opponent states that a Webby Award is one of the most prestigious awards a website can win and that ‘the 2012 awards attracted some 10 000 entrants from over 60 countries’.
Exhibit AF8: several excerpts and articles from American, European and UK magazines, newspapers, blogs and websites in English, dated from 2011 to 2014. For example, an article from MailOnline dated 13/02/2012 states ‘Picture-sharing social network Pinterest has become one of the fastest-growing social sites, increasing its market share by 68 per cent in January in the UK. … The site hit 1.9 million visits in the UK in January – nearly doubling the figure from October’. An article dated 28/03/2012 states ‘Barack Obama signs up to Pinterest – President Barack Obama has become the latest person to join Pinterest, the new hit social network, which lets people “pin” photos of their favourite items to a virtual pinboard.’ An article dated 05/04/2012 states ‘In the UK the real growth spurt was between December and January when visits increased by 55% to 1.9m a month’. An article in Express on Sunday (UK) dated 08/04/2012 states ‘Pinterest, regarded by many investors as the next Facebook, reached 10 million users in record time last year’. An article in The Telegraph dated 17/04/2012 states ‘Pinterest meets fashion at Bridal Fashion Week – In a landmark fashion show, Oscar de la Renta post every look and backstage photos onto their Pinterest page’. An article in the Evening Standard (London, UK) is entitled ‘Hype or not, Pinterest gets its funding before Facebook – Pinterest was valued at $200 million as recently as October’. An article dated 27/11/2012 states ‘The rise of the Pinterest Christmas list – The digital Christmas lists are primarily emerging from American Pinterest fans, where as many as one in five women use the site. However, British, Dutch and French users are also tagging images and products with #Christmas #iwant and #gifts as online browsing and online shopping become the dominant way in which consumers prepare for festivities.’ An article in The Guardian dated 07/02/2013 states ‘Pinterest seeks new financing which could value scrapbook site at $2.5bn – Free photo-sharing website has about 48 million users – 39 million up in a year – and is looking at an advertising model’. An article in The Telegraph dated 22/05/2013 states ‘Chanel is Pinterest’s most popular fashion brand’. An article in the Financial Times dated 09/05/2014 is entitled ‘Rakuten CEO on why Pinterest is worth $1.5bn’. An article dated 12/05/2014 states ‘Pin It to Win It – use competitions on Pinterest to Get Branding – Pinterest, the image-based social media site, has reached the ranks of being a big player. As one of the fastest growing social networks ever, the site is now one of the top 30 most visited websites in the world, responsible for more referral traffic to sites than Google+, LinkedIn and YouTube combined. In addition, the high engagement levels on Pinterest means it’s not just delivering traffic, but high quality, high value traffic – an online marketer’s dream’.
Exhibit AF9: an excerpt from http://www.theguardian.com/uk dated 10/02/2012, headed ‘ABC’s: National Daily newspaper circulation January 2012’, showing the circulation figures of national daily newspapers for January 2012, including some of the newspapers from which the opponent had taken the excerpts mentioned above.
Exhibit AF10: an overview of the activity on the Pinterest website, obtained from the internet archive site www.waybackmachine.org.
Exhibit AF11: screenshots of a small selection of major websites that feature the ‘Pin It’ button (www.marksandspencer.com, www.asos.com, www.johnlewis.com, etc.). Pinterest introduced the ‘Pin It’ button in May 2011. As of February 2013, more than 1.2 million unique domains included the ‘Pin it’ button, based on logged data. When a domain implements the ‘Pin It’ button, it sends an initial logging ping to Pinterest identifying the host domain and the widget that was implemented. As a result of the extensive use of the ‘Pin It’ button, it has become one of the most ubiquitous and well-recognised buttons on the internet.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark ‘PIN’ acquired a reputation in the European Union and in each one of the Member States.

Despite showing extensive use of the sign ‘Pinterest’ – and some, but much more limited, use of the sign ‘Pin It’ – there is no evidence at all that indicates that the earlier mark, ‘PIN’, was used individually, let alone that it acquired a reputation. Even though the earlier mark ‘PIN’ is part of the expression ‘Pin It’, the evidence relating to the use of ‘Pin It’ cannot be taken into account to prove the reputation of the earlier mark ‘PIN’, as the addition of the word ‘It’ substantially changes the distinctive character of the word ‘PIN’, turning it from a noun into a verb and, overall, into a simple and easily understood instruction. Moreover, in any case, the evidence relating to the expression ‘Pin It’ does not provide any indication of the degree of recognition by the relevant public, not of the sign ‘Pin It’ and definitely not of the earlier mark ‘PIN’. In addition, the fact that the earlier mark corresponds to the first letters of the opponent’s mark ‘Pinterest’ – which according to the opponent indicates that the relevant public will associate the element ‘PIN’ with the opponent – is not relevant. The opposition is based solely on the opponent’s earlier mark ‘PIN’ and the reputation has to be assessed for this mark. As a result, the evidence does not show that the trade mark ‘PIN’ is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Ric WASLEY

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.

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