FACECALL | Decision 2332263 - Facebook, Inc. v. BINETIX LLC

Date Published: Oct 2, 2017

OPPOSITION No B 2 332 263

Facebook, Inc., 1601 Willow Road, Menlo Park, California 94025, United States of America (opponent), represented by Carlos Polo & Asociados, Profesor Waksman, 10, 28036 Madrid, Spain (professional representative)

a g a i n s t

Binetix LLC, 58 Kniaz Boris I Str., 1463 Sofia, Bulgaria (applicant), represented by Atanas Kostov, "Tsoko Kableshkov" str. Nє10 fl.2, 4000 Plovdiv, Bulgaria (professional representative).

On 30/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 332 263 is partially upheld, namely for the following contested goods and services:

Class 9: Carriers for digitized data; Computer software for commercial purposes (not for social networks); USB flash drives; Electronic publications, downloadable; Interface programs for computers; sleeves for laptops and tablet computers; Cd roms; Computer software for commercial purposes (recorded, not for social networks); Recorded computer programs for commercial purposes (not for social networks); Computer programs for commercial purposes (downloadable software, not for social networks); Monitors [computer programs]; Mouse mats; Downloadable image files for commercial purposes (not for social networks); Laptop and tablet bags.

Class 35: Advertising (not for social networks); Office functions; Marketing services; Sales campaigns; Online advertising on a computer network for commercial purposes (not for social networks); Assistance in management of business activities; Commercial information for corporate clients; Dissemination of advertising matter for commercial purposes (not for social networks); Provision of commercial information; Data search in computer files for commercial purposes (not for social networks).

Class 38: Telecommunications, wireless broadcasting, telecommunications routing and junction services for commercial purposes (not for social networks); Providing telecommunications connections to a global computer network for commercial purposes (not for social networks); Electronic mail, electronic bulletin board services (telecommunications services) for commercial purposes (not for social networks); Message sending, wire service, information about telecommunication for commercial purposes (not for social networks); Cellular telephone communication, Communications by fiber [fibre] optic networks, Communications by computer terminals for commercial purposes (not for social networks); Communications by telegrams and telephone intended for commercial purposes (not for social networks); Rental of access time to shared computing resources for commercial purposes (not for social networks); Rental of telephones, modems, telecommunication equipment and message sending apparatus for commercial purposes (not for social networks); Computer aided transmission of messages and images for commercial purposes (not for social networks); Transmission of telegrams and digital files for commercial purposes (not for social networks); Cable television broadcasting and satellite transmission for commercial purposes (not for social networks); Providing access to databases for commercial purposes (not for social networks); Providing access to distribution services and resources for commercial purposes (not for social networks); Radio broadcasting, exchanging messages for commercial purposes (not for social networks); Telex and telephone services for commercial purposes (not for social networks); Videoconferencing services for commercial purposes (not for social networks); Voice mail services, intended for commercial purposes (not for social networks).

Class 42: Design and development of computer software for commercial purposes (not for social networks); Computer system analysis; Recovery of computer data; Installation of computer software for commercial purposes (not for social networks); Computer software consultancy; Computer programming for commercial purposes (not for social networks); Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data [not physical conversion]; Information technology [IT] consultancy; Web site design consultancy; Updating of computer software for commercial purposes (not for social networks); Hosting computer sites (web sites) for commercial purposes (not for social networks); Provision of search engines for the Internet; Computer software design for commercial purposes (not for social networks); Computer system design for commercial purposes (not for social networks); Development of new products for commercial purposes (not for social networks); Software as a service (SaaS) for commercial purposes (not for social networks); Creating and maintaining websites for commercial purposes (not for social networks); Server hosting for commercial purposes (not for social networks); Computer virus protection services.

2. European Union trade mark application No 12 303 988 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely the following:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Cash registers; Alarms; Altimeters; Ammeters; Anemometers; Antennas; Anticathodes; Intercommunication apparatus; Apparatus for remote-controlled recording; Pressure measuring apparatus; Speed measuring instruments; Distance measuring apparatus; Testing apparatus not for medical purposes; Speed checking apparatus for vehicles; Weighing apparatus and instruments; Electronic notebooks; Voltmeters; Time recording apparatus; Sensors and detectors; Smoke detectors; Speaking tubes; Electric installations for the remote control of industrial operations; Fuses; Electro-dynamic apparatus for the remote control of signals; Electronic tags for goods; Thermionic valves; Electronic display boards; Sound alarms; Warning buzzers; Signs, luminous; Buzzers; Measuring instruments; Jigs [measuring instruments]; Meters; Measuring instruments, Electric and Electronic; Water level indicators; Quantity indicators; Electric loss indicators; Pressure indicators; Theft prevention installations, electric and electronic; Gas testing instruments; Observation instruments; Integrated circuits; Electrical cables; Smart cards [integrated circuit cards]; Compasses [measuring instruments]; Compasses [measuring instruments]; Laptop computers; Computer keyboards; Computer memory devices; Converters, electric; Metal detectors for industrial or military purposes; Mouse [computer peripheral]; Vehicles (Navigation apparatus for -) [on-board computers]; Navigational instruments; Ohmmeters; Integrated circuits; Integrated circuits; Wrist rests for use with computers; Fire alarms; Switchboxes [electricity]; Switchboards; Central processing units and microprocessors (processors); Distribution boards (electricity, electronics); Electric couplings; Electric couplings; Couplers [data processing equipment]; Junction boxes [electricity]; Taximeters; Transistors [electronic]; Transponders; Transformers (electricity, electronics); Voting machines; Remote control apparatus; Readers [data processing equipment]; Integrated circuit chips.

Class 35: Business management (not for social networks); Business administration; Arranging subscriptions to telecommunication services for commercial purposes (not for social networks); Administrative processing of orders for commercial purposes (not for social networks); Business auditing; Efficiency experts; Public relations for commercial purposes (not for social networks); Document reproduction for commercial purposes (not for social networks); Payroll preparation; Advertising columns preparation (not for social networks); Market research; Business investigation; Economic forecasting; Personnel management consultancy; Advisory services for business management; Consultancy relating to business organisation; Business management and organization consultancy; Business management consulting; Personnel recruitment; Commercial advice for corporate clients; Demonstration of goods; Telephone answering for unavailable corporate subscribers (not for social networks); Production of advertising films for commercial purposes (not for social networks); Corporate marketing research; Business research; Business consulting services; Psychological testing for the selection of personnel; Radio commercials; Distribution of samples; Outdoor advertising (not for social networks); Advertising by mail order; Systemization of information into computer databases; Procurement services for others (purchasing goods and services for other businesses, not via social networks); Business auditing; Compilation of information into computer databases; Compilation of statistics; Drawing up statements of account; Word processing; Television commercials; Telemarketing services; Transcription of messages; Business appraisals; Business inquiries; Commercial administration of the licensing of the goods and services of corporate clients; Sponsorship search; Computerised file management for commercial purposes (not for social networks); Relocation services for businesses; Invoicing.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware for commercial purposes (not for social networks); Graphic design; Handwriting analysis [graphology]; Energy auditing; Mechanical research; Physics [research]; Engineering services; Quality control; Clinical trials; Consultancy in the design and development of computer hardware; Consultancy in the field of energy-saving; Scientific research; Industrial design; Research of new products for commercial purposes (not for social networks); Technical research; Laboratory (Scientific -) services; Digitisation of documents (scanning and indexing).

Class 45: Professional background investigations (not for social networks).

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 303 988. The opposition is based on the following six earlier rights:

European Union trade mark registration No 9 151 192 for the word mark ‘FACEBOOK’ registered for goods and services in Classes 9, 35, 36, 38, 41, 42 and 45 (hereinafter ‘Earlier Mark 1)’;
European Union trade mark registration No 9 151 168 for the figurative mark ‘’ registered for goods and services in Classes 9, 35, 36, 38, 41, 42 and 45 (hereinafter ‘Earlier Mark 2’);
European Union trade mark registration No 5 585 518 for the word mark ‘FACEBOOK’ registered for services in Classes 35, 41, 42 and 45 (hereinafter ‘Earlier Mark 3’);
European Union trade mark registration No 4 535 381 for the word mark ‘FACEBOOK’ registered for services in Classes 35 and 38 (hereinafter ‘Earlier Mark 4’);
European Union trade mark registration No 9 776 618 for the word mark ‘FACEBOOK’, registered for goods and services in Classes 9, 16, 35 and 36 (hereinafter ‘Earlier Mark 5’) and
European Union trade mark registration No 10 782 555 for the word mark ‘FACEBOOK’ registered for goods and services in Classes 16, 40, 42 and 45 (hereinafter ‘Earlier Mark 6’).

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARKS

(1) On the basis of the opposition and the admissibility of European Union trade mark registration No 10 782 597 ‘’ and of European Union trade mark registration No 6 455 687 ‘FACEBOOK’

According to Article 41(1)(a) EUTMR, the proprietors of earlier marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks may give notice of opposition (on the grounds of Article 8(1) and 8(5) EUTMR) to registration of a European Union trade mark application, within a period of three months following the publication of the application.

The notice of opposition has to be filed in writing and must contain, in order to be admissible, the indications and elements laid down in Rule 15(1), (2) (a)-(c) EUTMIR (inter alia, a clear identification of the earlier mark or earlier right on which the opposition is based). Furthermore, it must be noted that the opponent can only complete or extend the notice of opposition, on its own initiative, during the three-month opposition period following the publication of the European Union trade mark application concerned.

In the notice of opposition filed on 28/03/2014, the opponent indicated as the basis of the opposition the six European Union trade mark registrations mentioned in the ‘Reasons’ section above. However, in its further observations of 01/04/2015, it indicates that the opposition was also based on European Union trade mark registration No 10 782 597 ‘’ and on European Union trade mark registration No 6 455 687 ‘FACEBOOK’.

Since this other two trade marks were not claimed as a basis of the opposition during the three-month opposition period and, as indicated above, the opposing party cannot extent the basis of the opposition once the opposition period has expired, the opposition must be rejected as inadmissible, as far as it is based on these European Union trade mark registrations.

For the sake of completeness, it is also noted that on page two of its submissions of 01/04/2015 the opponent did not mention Earlier Mark 5 as being one of the earlier marks on which the opposition is based. In the absence on an explicit restriction of the basis of the opposition, the Opposition Division will consider the opposition as based on the six earlier marks indicated in the notice of opposition and listed in the ‘Reasons’ section above.

(2) On the scope of protection of the contested EUTM application

Before proceeding to the examination of the opposition, the Opposition Division finds it appropriate to address the opponent’s claims in relation to the scope of protection of the contested EUTM, namely the amendment of the specification by adding the term not for social networks.

The EUTM application was filed on 13/11/2013 for a wide range of goods and services in Classes 9, 35, 38, 42 and 45.

On 10/03/2014, the applicant filed a request for the amendment of the specification of goods and services (hereinafter ‘First Limitation’) and provided the new list of the goods and services only in the first language of the application, namely Bulgarian. In essence, by the First Limitation, the applicant deleted some of the goods and services for which protection was initially sought under the EUTM application and restricted other goods and services by adding the term not for social networks. For example the terms computer software in Class 9 and advertising in Class 35 have been amended in the First Limitation to computer software for commercial purposes (not for social networks) and respectively to advertising (not for social networks).

On 05/03/2015, the Office informed the opponent of the restriction of the contested trade mark and gave it a time limit until 10/05/2015 to state whether or not it maintains the opposition.

The opponent replied on 10/03/2015 and stated, among other things, that it maintains the opposition. It also argued that the Office should not have accepted the First Limitation essentially for the following reasons: (i) the limitation is ‘immaterial for the examination of the opposition since it is artificial and will not be reflected in the market place because the applicant will lose control over the use which can be made by third parties of the goods/services at hand and it cannot be excluded a priori that said goods and services will be, in fact, used for social networking purposes’, (ii) even if the applicant’s goods/services were not offered directly in the area of social networking that would not prevent specialists, distributors, retailers and consumers in that field from using, offering, advertising, marketing, licensing and selling the goods/services in the area of social networking, (iii) the amendment maintains products and services such as telecommunications, scientific and technological services and research and design relating thereto which collide directly with the core business of an undertaking operating in the field of social networking.

On 11/06/2015 the Office informed the opponent that the First Limitation has been re-examined and confirmed that the list of goods and services remains unchanged.

On 03/07/2015, the applicant submitted a further request for the amendment of the specification of goods and services by deleting a number of goods and services in Classes 9, 35, 38, 42 and 45 (hereinafter ‘Second Limitation’). On 18/11/2015, the Office informed the applicant that the Second Limitation was partially accepted (namely for Classes 9 and 45 only) since for the remaining classes the request concerned services that were no longer contained as such in the specification (because they had been amended by the First Limitation). For example the term advertising in Class 35 had been restricted by the First Limitation to advertising (not for social networks). However, by the Second Limitation the applicant requested the deletion of the term advertising in Class 35 and not of the term advertising (not for social networks). By means of the same communication, the applicant was given a time limit of two months to submit any observations in reply.

On 26/02/2016, the Office informed the parties that in the absence of any response from the applicant, the specification of the goods and services of the contested EUTM application has been amended in accordance with the acceptable part of the Second Limitation and that the proceedings will continue on the basis of that list. By means of the same communication, the opponent was set a time limit until 01/05/2016 to inform the Office whether or not it maintains the opposition.

The opponent replied on 29/02/2016 and, inter alia, specified that the opposition is maintained.

Despite the Office’s clarifications regarding the First Limitation, the opponent went to great lengths to argue that the First Limitation should not have been accepted, in essence by reiterating its previous arguments. In its letter of 18/12/2015 and in further communications (for example of 16/09/2016 and 28/11/2016) it also contended that the specification of the contested EUTM application following the First Limitation is not clear and precise enough and introduces a wide margin of uncertainty and requested the Office to deliver an interlocutory decision stating the reasons why the First Limitation has been accepted despite its arguments.

It is true that, as the opponent claims, the goods and services for which protection of a trade mark is sought should be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of protection sought (Article 28(2) EUTMR).

In this regard it is noted that a description of goods and services is sufficiently clear and precise when its scope of protection can be understood from its natural and usual meaning. ‘Natural and usual meaning’ refers to the inherent definition of a term, in other words how the term is commonly understood. In the context of a correct classification, this should in principle be enough to allow for an unambiguous scope of protection.

Furthermore, according to the Office’s practice, in order to be acceptable a restriction must, inter alia, be comprehensible and give a sufficiently clear and precise indication of the goods or services to be excluded from the list or a sufficiently clear and precise indication of the goods and services that remain after the restriction.

In the case at hand, and after having carefully analysed the opponent’s arguments, the Opposition Division considers that the First Limitation complies with the above mentioned criterion insofar as the addition of the term not for social networks is concerned and that the specification of the contested EUTM application meets the requirements of Article 28(2) EUTMR as set out above.

Taking the example of the term computer software, it is noted that although software by nature (a set of instructions that enables a computer to perform a task) is the same, there are many types of computer software with very specific purposes. The field of application of computer software for social networks is not the same as that of other types of software, for instance software for apparatus that diagnose diseases. It follows that the exclusion of computer software for social networks from the category of computer software is an acceptable restriction as it gives a sufficiently clear and precise indication of the goods that remain after the restriction.

The opponent’s arguments that the applicant ‘attempted, unsuccessfully, to avoid clashing with the opponent’s goods and services’, that the limitation ‘is immaterial for the examination of the opposition and ‘artificial’ because the applicant will ‘lose control over the use which can be made by third parties’ or that ‘the amendment of the specification is not acceptable for the opponent since it maintains goods and services which collide directly with the core business of an undertaking in the field of social networks’ cannot lead to a different conclusion. As stated above, it is Office practice to accept a restriction as long as it is comprehensible and indicates, in a sufficiently clear and precise manner, the goods or services to be excluded from the list or the goods and services that remain after the restriction. Conflicts with prior registered trade marks do not constitute valid reasons for refusing a limitation of the specification of a trade mark application, as the opponent puts forward. For such situations, the EUTMR foresees a different solution under Article 8 Relative grounds for refusal. Finally, any actual or intended use not stipulated in the list of goods/services is not relevant for the purposes of the present proceedings which are not concerned with an assessment of actual confusion or infringement.

Accordingly, the Opposition Division will consider in its examination of the present opposition the list of the contested goods and services as amended following the First and Second Limitations:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Carriers for digitized data; Cash registers; Computer software for commercial purposes (not for social networks); USB flash drives; Alarms; Altimeters; Ammeters; Anemometers; Antennas; Anticathodes; Intercommunication apparatus; Apparatus for remote-controlled recording; Pressure measuring apparatus; Speed measuring instruments; Distance measuring apparatus; Testing apparatus not for medical purposes; Speed checking apparatus for vehicles; Weighing apparatus and instruments; Electronic notebooks; Voltmeters; Time recording apparatus; Sensors and detectors; Smoke detectors; Speaking tubes; Electric installations for the remote control of industrial operations; Fuses; Electro-dynamic apparatus for the remote control of signals; Electronic tags for goods; Thermionic valves; Electronic publications, downloadable; Electronic display boards; Sound alarms; Warning buzzers; Signs, luminous; Buzzers; Measuring instruments; Jigs [measuring instruments]; Meters; Measuring instruments, Electric and Electronic; Water level indicators; Quantity indicators; Electric loss indicators; Pressure indicators; Theft prevention installations, electric and electronic; Gas testing instruments; Observation instruments; Integrated circuits; Interface programs for computers; Electrical cables; sleeves for laptops and tablet computers; Smart cards [integrated circuit cards]; Cd roms; Compasses [measuring instruments]; Compasses [measuring instruments]; Computer software for commercial purposes (recorded, not for social networks); Laptop computers; Computer keyboards; Computer memory devices; Recorded computer programs for commercial purposes (not for social networks); Computer programs for commercial purposes (downloadable software, not for social networks); Converters, electric; Metal detectors for industrial or military purposes; Mouse [computer peripheral]; Monitors [computer programs]; Vehicles (Navigation apparatus for -) [on-board computers]; Navigational instruments; Ohmmeters; Integrated circuits; Integrated circuits; Mouse mats; Wrist rests for use with computers; Fire alarms; Switchboxes [electricity]; Switchboards; Central processing units and microprocessors (processors); Distribution boards (electricity, electronics); Electric couplings; Electric couplings; Couplers [data processing equipment]; Junction boxes [electricity]; Taximeters; Transistors [electronic]; Transponders; Transformers (electricity, electronics); Voting machines; Remote control apparatus; Downloadable image files for commercial purposes (not for social networks); Laptop and tablet bags; Readers [data processing equipment]; Integrated circuit chips.

Class 35: Advertising (not for social networks); Business management (not for social networks); Business administration; Office functions; Arranging subscriptions to telecommunication services for commercial purposes (not for social networks); Administrative processing of orders for commercial purposes (not for social networks); Business auditing; Efficiency experts; Public relations for commercial purposes (not for social networks); Document reproduction for commercial purposes (not for social networks); Payroll preparation; Advertising columns preparation (not for social networks); Market research; Business investigation; Economic forecasting; Personnel management consultancy; Advisory services for business management; Consultancy relating to business organisation; Business management and organization consultancy; Business management consulting; Marketing services; Personnel recruitment; Sales campaigns; Online advertising on a computer network for commercial purposes (not for social networks); Assistance in management of business activities; Commercial information and advice for corporate clients; Demonstration of goods; Telephone answering for unavailable corporate subscribers (not for social networks); Production of advertising films for commercial purposes (not for social networks); Corporate marketing research; Business research; Business consulting services; Psychological testing for the selection of personnel; Radio commercials; Distribution of samples; Dissemination of advertising matter for commercial purposes (not for social networks); Outdoor advertising (not for social networks); Advertising by mail order; Systemization of information into computer databases; Procurement services for others (purchasing goods and services for other businesses, not via social networks); Business auditing; Compilation of information into computer databases; Compilation of statistics; Drawing up statements of account; Word processing; Television commercials; Telemarketing services; Transcription of messages; Provision of commercial information; Business appraisals; Business inquiries; Commercial administration of the licensing of the goods and services of corporate clients; Data search in computer files for commercial purposes (not for social networks); Sponsorship search; Computerised file management for commercial purposes (not for social networks); Relocation services for businesses; Invoicing.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer software and hardware for commercial purposes (not for social networks); Computer system analysis; Recovery of computer data; Graphic design; Handwriting analysis [graphology]; Energy auditing; Mechanical research; Physics [research]; Engineering services; Installation of computer software for commercial purposes (not for social networks); Quality control; Clinical trials; Computer software consultancy; Computer programming for commercial purposes (not for social networks); Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data [not physical conversion]; Information technology [IT] consultancy; Consultancy in the design and development of computer hardware; Web site design consultancy; Consultancy in the field of energy-saving; Scientific research; Updating of computer software for commercial purposes (not for social networks); Hosting computer sites (web sites) for commercial purposes (not for social networks); Provision of search engines for the Internet; Computer software design for commercial purposes (not for social networks); Computer system design for commercial purposes (not for social networks); Industrial design; Research and development of new products for commercial purposes (not for social networks); Software as a service (SaaS) for commercial purposes (not for social networks); Creating and maintaining websites for commercial purposes (not for social networks); Server hosting for commercial purposes (not for social networks); Technical research; Computer virus protection services; Laboratory (Scientific -) services; Digitisation of documents (scanning and indexing).

Class 45: Professional background investigations (not for social networks).

SECTION A: PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the six European Union trade marks on which the opposition is based.

In the present case the contested trade mark was published on 02/01/2014.

Earlier Marks 1 and 2 were registered on 17/12/2010, Earlier Mark 3 on 25/05/2011, Earlier Mark 4 on 22/06/2011, Earlier Mark 5 on 02/11/2011 and Earlier Mark 6 on 03/10/2012. Therefore, the request for proof of use is inadmissible.

SECTION B: REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 13/11/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Earlier Mark 1

Class 9: Computer software development tools; computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks.

Class 35: Marketing, advertising and promotion services; market research and information services; promoting the goods and services of others via computer and communication networks; facilitating the exchange and sale of decorating supplies, cleaning preparations, toiletries, cosmetics, candles, pharmaceuticals, small items of metal hardware, machines and machine tools, hand tools, consumer electronics, computers, computer peripherals, telephones, cameras, CD's and DVD's, household electric machines, vehicles, cycles, jewellery, clocks and watches, printed matter, leather goods, handbags, purses and wallets, furniture, housewares, household or kitchen utensils and containers, textiles, clothing, footwear, headgear, haberdashery, floor coverings, games and playthings, gymnastic and sporting equipment, foodstuffs, drinks, alcoholic beverages and candy via computer and communication networks; online retail store services featuring online delivery of digital media, namely images movies, musical and audiovisual works and related merchandise; charitable services, namely promoting public awareness about charitable, philanthropic, volunteer, public and community service and humanitarian activities; buyer to supplier matching services rendered through an online computerized network; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

Class 36: Financial transaction processing services, namely clearing and reconciling financial transactions via computer and communication networks; electronic processing of bill payment data for users of computer and communication networks; electronic funds transfer services; bill payment services; financial exchange services, namely, providing a virtual currency for use by members of an online community via computer and communication networks; providing information regarding economic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

Class 38: Providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online communications links which transfer web site users to other local and global web pages; facilitating access to third party web sites via a universal login; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, audio and video images; providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; providing access to computer databases in the fields of social networking, social introduction and dating; providing an online forum for the buying and selling of products and materials and exchanging of sourcing data via a computerized network; electronic transmission of bill payment data for users of computer and communication networks.

Class 41: Providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photosharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; electronic publishing services for others; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks; arranging and conducting competitions for video gamers and computer game players; Contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community service and humanitarian activities and sharing of creative work product; providing information regarding news, cultural and academic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

Class 42: Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites.

Class 45: Social introduction, networking and dating services; providing social services and information of a social nature in the field of personal development, namely self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities; providing information regarding social and political matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

Earlier Mark 2

Earlier Mark 3

Class 35: Advertising; business management; business administration; office functions; advertising and information distribution services, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet; compilation and management of on-line computer databases and on-line searchable databases.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing an online directory information service featuring information regarding, and in the nature of, collegiate life, general interest, classifieds, virtual community, social networking, photo sharing, and transmission of photographic images.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services; computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; and computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; providing use of software applications through a website; data transmission and instant messaging services.

Class 45: Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals; introduction and social networking services.

Earlier Mark 4

Class 35: Providing an online directory information service featuring information regarding, and in the nature of, collegiate life, classifieds, virtual community and social networking.

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

Earlier Mark 5

Class 9: Magnetically encoded gift cards; software for the exchange of gift cards and virtual currency; computer software; interactive software; downloadable tokens of value; gift cards (encoded or magnetic); nonprinted publications; data, information, audio, video and other media and multimedia, all being readable or downloadable from the Internet or via mobile communications devices; podcasts and webcasts.

Class 16: Stickers; posters; decals; printed matter; publications; magazines; books; pamphlets; manuals; printed guides; catalogues; photographs; stationery; pictures; diaries; calendars; photograph albums; prints; writing instruments; personal organizers; address books; note books; office requisites.

Class 35: Incentive award programs to promote the sale of products and services of others; promoting the goods and services of others by facilitating an incentive award program that provides coupons, rebates, and discounts to individuals who identify their location online; promoting the goods and services of others by providing a web site enabling users to identify their location in exchange for coupons, rebates, and discounts; physical and online retail store services featuring decorating supplies, cleaning preparations, toiletries, cosmetics, candles, pharmaceuticals, small items of metal hardware, machines and machine tools, hand tools, consumer electronics, computers, computer peripherals, telephones, cameras, CD's and DVD's, household electric machines, vehicles, cycles, jewellery, clocks and watches, printed matter, leather goods, handbags, purses and wallets, furniture, housewares, household or kitchen utensils and containers, textiles, clothing, footwear, headgear, haberdashery, floor coverings, games and playthings, gymnastic and sporting equipment, foodstuffs, drinks, alcoholic beverages, candy online delivery of digital media, namely images, movies, musical and audiovisual works and related merchandise; electronic processing of bill payment data for users of computer and communication networks; information, consultancy and advisory services, all relating to the aforesaid, including such services provided online from a computer network or via the internet.

Class 36: Pre-paid gift card services, namely issuing gift card certificates that may be redeemed for goods or services; prepaid card, gift card, and stored value card services; administration of a gift card program for enabling participants to obtain goods and services through use of a card; providing gift-card-based currency transfer and exchange services; providing electronic funds transfer services via electronic and optical communications networks; providing virtual currency for use via electronic and optical communications networks; providing a payment network allowing merchants to accept and process gift cards from other merchants; financial services, namely, enabling transfer of funds and purchase of products and services offered by others, all via electronic communication networks; clearing and reconciling financial transactions via electronic communication networks; providing a wide variety of payment and financial services, namely electronic, optical or downloadable gift card services, issuing credit cards and lines of credit, processing and transmission of bills and payments thereof, payment services, and providing guaranteed payment delivery; redemption of gift cards; exchanging electronic, optical or downloadable gift cards or stored value cards for money or other stored value cards.

Earlier Mark 6

Class 16: Cards, namely business cards and non-magnetically encoded identity cards.

Class 40: Printing services.

Class 42: Business card and identity card design services.

Class 45: Facilitating social and business networking through the provision of data for use on business and identity cards.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 01/04/2015 the opponent filed a copious amount of evidence in order to demonstrate the reputation of the earlier marks and its claims under Article 8(5) EUTMR.

The Opposition Division notes that the evidence was provided in a clearly structured manner and will hereinafter refer to the documents submitted by using the inventory numbering system specified in the document titled ‘List of exhibits’.

The evidence comprises the following:

EXHIBIT A

Exhibit A1

Printouts from the website www.internetworldstats.com, dated 04/07/2012 and showing the number of Facebook users in the world, the Facebook usage and Facebook statistics by world geographic regions between 31/03/2011 and 31/03/2012. For Europe the documents display a number of Facebook users between 200,260,360 (in March 2011) and 232,835,740 (in March 2012) and a Facebook penetration (namely the ratio of Facebook users in relation to the total number of estimated population in each world region, expressed as a percentage) between 24.5% (in March 2011) and 28.5% (in March 2012).

Exhibit A2

Printouts from the website http://news.yahoo.com, dated 05/07/2013 featuring an article entitled ‘Number of active users at Facebook over the years’, showing, inter alia, how the number of active users at Facebook has grown from 1 million at the end of 2004 to 1.11 billion in March 2013.

EXHIBIT B

Exhibit B1

Certifications issued by the Chambers of Commerce in Mallorca, Alicante, Bilbao, Seville, Barcelona, Madrid and Valencia, between December 2010 and March 2011, certifying the high degree of well-known character, prestige and reputation of the opponent’s trade marks (‘FACEBOOK’, , , ), with corresponding English translations. For example, the certificate of the Chamber of Commerce of Bilbao of 21/12/2010 states that ‘as a result of a survey conducted among Biscayan enterprises, in the Historic Territory of Biscay, there is a sufficient and proven degree of awareness of the trade mark ‘FACEBOOK’ of the United States company Facebook Inc. to permit appreciating its well-known character in the sector of advertising, communication, social networking, etc.’.

Exhibit B2

Fifty-one decisions taken by different bodies recognising the reputation/well-known character of the ‘FACEBOOK’ marks, as follows:

2.1 Twenty-one EUIPO decisions

2.1.1 The decision of EUIPO’s Opposition Division of 18/10/2011, ruling on opposition No B 1 727 620 and refusing the registration of EUTM application 9 104 092 ‘’ for services in Classes 35, 38 and 41 (document in Spanish and its English translation).

2.1.2 The decision of EUIPO’s Opposition Division of 09/01/2012, ruling on opposition No B 1 775 686 and refusing the registration of EUTM application No 9 361 304 ‘’ for services in Classes 38 and 41.

2.1.3 The decision of EUIPO’s Opposition Division of 03/12/2012, ruling on opposition No B 1 814 238 and refusing the registration of EUTM application No 9 695 396 ‘’ for goods and services in Classes 9, 35, 38, 41, 42 and 45.

2.1.4 The decision of EUIPO’s Opposition Division of 21/12/2012, ruling on opposition No B 1 890 923 and refusing the registration of EUTM application No 9 716 077 ‘Partybook’ for services in Classes 35, 38, 41, 42 and 45.

2.1.5 The decision of EUIPO’s Opposition Division of 30/04/2013, ruling on opposition No B 1 994 667 and refusing the registration of EUTM application No 9 635 591 ‘E-Healthbook’ for services in Class 38.

2.1.6 The decision of EUIPO’s Opposition Division of 30/08/2013, ruling on opposition No B 2 035 932 and refusing the registration of EUTM application No 10 427 227 ‘’ for services in Classes 35, 38 and 41 (document in Spanish and its English translation).

2.1.7 The decision of EUIPO’s Opposition Division of 11/09/2013, ruling on opposition No B 2 035 494 and refusing the registration of EUTM application No 10 755 965 ‘WINE-BOOK’ for goods and services in Classes 9 and 42.

2.1.8 The decision of EUIPO’s Opposition Division of 08/11/2013, ruling on opposition No B 1 926 446 and refusing the registration of EUTM application No 10 160 133 ‘facebook’ for goods in Class 12.

2.1.9 The decision of EUIPO’s Opposition Division of 12/11/2013, ruling on opposition No B 2 077 439 and refusing the registration of EUTM application No 10 705 507 ‘ Magnify ’ for services in Classes 35, 38, 41 and 45.

2.1.10 The decision of EUIPO’s Opposition Division of 29/11/2013, ruling on opposition B 1 965 022 and refusing protection of the international registration No 1 073 886 ‘COMPANYBOOK’ in respect of the European Union for goods and services in Classes 9, 35, 38, 41, 42 and 45.

2.1.11 The decision of EUIPO’s Opposition Division of 19/12/2013, ruling on opposition No B 2 145 582 and refusing the registration of EUTM application No 11 310 679 ‘’ for services in Classes 35, 38 and 42.

2.1.12 The decision of EUIPO’s Opposition Division of 15/05/2014, ruling on opposition No B 1 879 090 and refusing the registration of EUTM application No 9 784 323 ‘’ for services in Classes 41 and 45.

2.1.13 The decision of EUIPO’s Cancellation Division of 21/05/2014, ruling on invalidity proceedings No 8211 C and declaring invalid in its entirety the European Union trade mark registration No 9 120 049 ‘facemba’.

2.1.14 The decision of EUIPO’s Opposition Division of 20/06/2014, ruling on opposition No B 2 269 341 and refusing the registration of EUTM application No 11 964 541 ‘faceBUSKS’ for services in Classes 35, 38 and 41.

2.1.15 The decision of EUIPO’s Opposition Division of 30/06/2014, ruling on opposition No B 1 880 056 and refusing the registration of EUTM application No 9 926 577 ‘LOVEBOOK’ for services in Classes 35, 38, 42 and 45.

2.1.16 The decision of EUIPO’s Opposition Division of 25/08/2014, ruling on opposition No B 2 240 870 and refusing the registration of EUTM application No 11 806 627 ‘’ for services in Classes 38, 42 and 45.

2.1.17 The decision of EUIPO’s Opposition Division of 12/11/2014, ruling on opposition No B 2 220 120 and refusing the registration of EUTM application No 11 713 096 ‘’ for services in Class 41.

2.1.18 The decision of EUIPO’s Opposition Division of 17/12/2014, ruling on opposition No B 2 106 857 and refusing the registration of EUTM application No 11 015 179 ‘FACETUBE’ for services in Classes 38, 42 and 45.

2.1.19 The decision of EUIPO’s Opposition Division of 28/01/2015, ruling on opposition No B 1 923 450 and refusing the registration of EUTM application No 10 001 791 ‘’ for goods and services in Classes 9, 35, 38, 41 and 42.

2.1.20 The decision of EUIPO’s Opposition Division of 12/02/2015, ruling on opposition No B 2 035 510 and refusing the registration of EUTM application No 10 755 973 ‘’ for goods and services in Classes 9 and 42.

2.1.21 The decision of EUIPO’s Opposition Division of 12/02/2015, ruling on opposition No B 2 307 208 and refusing the registration of EUTM application No 12 207 312 ‘’ for services in Classes 35, 41 and 45.

2.2 Twelve decisions of the Spanish Patent and Trade Mark Office (‘SPTO’)

2.2.1 The decision of the SPTO dated 18/10/2011, refusing the registration of trade mark application No 2 974 434 ‘’ for services in Class 41, due to a similarity, inter alia, to the earlier marks ‘FACEBOOK’ (document in Spanish and its English translation).

2.2.2 The decision of the SPTO dated 08/02/2011, refusing the registration of trade mark application No 2 943 489 for the mark ‘’ and its English translation. According to this document, ‘… The opponent sufficiently accredited the reputation and well-known character they invoked (Article 8.1 of the Trademark Law) 17/2001, of 7 December.’

2.2.3 The decision of the SPTO dated 14/09/2010, refusing the registration of trade mark application No 2 922 695 ‘’ for services in Class 35, due to a risk to confusion (document in Spanish and its English translation).

2.2.4 The decision of the SPTO dated 18/08/2011, refusing the registration of trade mark application No 2 961 070 ‘’ for goods in Class 9 due to a risk to confusion (document in Spanish and its English translation).

2.2.5 The decision of the SPTO dated 12/06/2013, refusing registration of the trade mark application No 3 058 253 ‘’ in Class 35 and its English translation.

2.2.6 The decision of the SPTO dated 12/06/2013, refusing registration of the international registration No 1 127 773 ‘FACESCHLUCK’, in Classes 32 and 33 and its English translation.

2.2.7 The decision of the SPTO Board of Appeal of 03/11/2010, refusing registration of trade mark application No 2 908 166 ‘CADIZBOOK’ in Class 38 and its English translation. The evidence states:

... On the other hand, we must point out that the ‘FACEBOOK’ trade mark has acquired well-known character in the field of telecommunications, and this circumstance means that greater care must be taken when registering similar signs which may be detrimental to the distinctive or reputed character obtained by this type of mark.

2.2.8 The decision of the SPTO Board of Appeal dated 11/11/2010, refusing registration of trade mark application No 2 909 907 ‘’ in Class 38 and its English translation, with similar reasons to those stated in the previous point.

2.2.9 The decision of the SPTO dated 25/02/2014, refusing registration of the trade mark application No 3 090 688 ‘GULLIVER TEATRO COMPAÑA DE TEATRO WWW.GULLIVERTEATRO.ES’, in Class 41 and its English translation.

2.2.10 The decision of the SPTO dated 08/04/2014, refusing registration of the trade mark application No 3 091 690 ‘JURISBOOK’, in Class 45 and its English translation.

2.2.11 The decision of the SPTO dated 10/12/2014, refusing registration of the trade mark application No 3 508 598 ‘FACECOOK COMPANY’, in Class 38 and its English translation.

2.2.12 The decision of the SPTO dated 28/01/2015, refusing registration of the trade mark application No 3 502 967 ‘FC FACELIAC’, in Classes 38 and 41 and its English translation.

2.3 Two judgments of the High Court of Andalusia

2.3.1 The judgment of the High Court of Andalusia (district of Seville), Contentious Administrative Chamber, Section one, of 20/12/2011 (document in Spanish and its English translation), ruling on Appeal no 110/2011 and dismissing the appeal filed against the decision of the SPTO Board of Appeal mentioned at point 2.2.2 hereinabove.

2.3.2 The judgment of the High Court of Andalusia (district of Seville), Contentious Administrative Chamber, Section one, of 19/06/2012 (document in Spanish and its English translation), ruling on Appeal no 67/2011 and dismissing the appeal filed against the decision of the SPTO Board of Appeal mentioned at point 2.2.4 hereinabove.

2.4 Nine decisions of WIPO’s Arbitration and Mediation Center and one of the C.R.D.D. (Centro Risoluzione Dispute Domini - Domain Dispute Resolution Centre)

2.4.1 The administrative panel decision of WIPO’s Arbitration and Mediation Center, dated 30/03/2009, in Case No DES2009-0006, transferring to Facebook Inc. the domain name <facebook.es>.

2.4.2 The administrative panel decision of WIPO’s Arbitration and Mediation Center, dated 23/05/2011, in Case No D2011-0516, transferring to Facebook Inc. 21 domain names containing the element ‘facebook’.

2.4.3 The administrative panel decision of WIPO’s Arbitration and Mediation Center, dated 03/09/2010, in Case No D2010-1247, transferring to Facebook Inc. the domain name <facebook.com>.

2.4.4 The decision dispute settler of WIPO’s Arbitration and Mediation Center, dated 03/04/2009, in Case No DNL2009-0008, transferring to Facebook Inc. the domain name <facebook.nl> (document in Dutch and its English translation).

2.4.5 The administrative panel decision of WIPO’s Arbitration and Mediation Center, dated 19/02/2008, in Case No DIE2007-0009, transferring to Facebook Inc. the domain name <facebook.ie>.

2.4.6 The administrative panel decision of WIPO’s Arbitration and Mediation Center, dated 23/09/2007, in Case No D2007-1193, transferring to Facebook Inc. the domain name <face-book.com>.

2.4.7 Domain name reassignment proceeding <www.facebook.it> dated 09/06/2009 (document in Italian and its English translation).

2.4.8 The administrative panel decision of WIPO’s Arbitration and Mediation Center, dated 09/07/2012, in Case No D2012-1008, transferring to Facebook Inc. the domain name <facebook.info>.

2.4.9 The administrative panel decision of WIPO’s Arbitration and Mediation Center, dated 10/09/2013, in Case No D2013-1183, transferring to Facebook Inc. 17 domain names containing the word ‘facebook’.

2.5 Seven decisions of other EU bodies

2.5.1 Decision of the German Patent and Trade Mark Office, dated 25/07/2012, refusing the registration of the mark No 30 2011 015 921 ‘facebox’, for services in Classes 35, 38 and 42 (document in German and English translation).

2.5.2 Decision of the Portuguese Patent and Trade Mark Office (‘INPI’), dated 27/12/2012, refusing the registration of the mark No 499 188 ‘FACETV’, for services in Class 38 (document in Portuguese and English translation).

2.5.3 Decision of INPI, dated 29/10/2012, refusing the registration of the mark No 499 063 ‘FACEBOOKING’ for services in Classes 35, 39 and 43 (document in Portuguese and English translation).

2.5.4 Decision of INPI, dated 13/12/2012, refusing the registration of the mark No 500 289 ‘FACEMARKETING’ for services in Class 41 (document in Portuguese and its partial English translation).

2.5.5 Judgment of the Paris Tribunal, delivered on 13/06/2013 in relation to the French trade mark No 093 636 728 ‘FUCKBOOK’, the exploitation of the social network and domain name ‘fuckbook’ and the exploitation of the term ‘FUCKBOOK’ as a commercial name (document in French and its partial English translation).

2.5.6 Decision of INPI, dated 25/09/2013, refusing the registration of the mark No 512 679 ‘’ for services in Class 42 (document in Portuguese and English translation).

2.5.7 Decision of The Patent Office of the Republic of Bulgaria, dated 27/02/2014, refusing the registration of the mark No 120 114 ‘’ for services in Classes 35, 38 and 41 (document in Bulgarian and English translation).

Exhibit B3

Copies of trade mark registrations in various jurisdictions around the world (including Member States of the European Union) which protect ‘FACEBOOK’.

Exhibit B4

Various articles about and references to the fame and rapid rise to popularity acquired by Facebook.

4.1 Printouts from Wikipedia, dated 28/06/2011, 14/06/2012, 11/06/2013 and 24/03/2015, in relation to Facebook (a social networking service and website launched in February 2004, operated and privately owned by Facebook. Inc). The documents state, inter alia, that, as of January 2011, Facebook had more than 600 million active users, over 900 million as of May 2012, over 1 billion as of September 2012, 1.11 billion as of March 2013 and 1.39 billion at 31/12/2014, that, according to a January 2009 Compete.com study, Facebook was ranked as the most used social network services by worldwide monthly active users, followed by MySpace and that, in September 2014, its position in the Alexa rank is 2.

4.2 An article published on www.fastcompany.com on 26/04/2011 in which Facebook (referred to as the 400-million-user strong King of Social Media) appears at number 1 in the ranking of the world’s most innovative companies of 2010.

4.3 Printouts from www.socialmediatoday.com, (an independent, online community for professionals in PR, marketing, advertising, or any other discipline where a thorough understanding of social media is mission-critical), dated 21/06/2011, referring to the article ‘Social media 3Q Update: Who uses Facebook, Twitter, LinkedIn, & MySpace?’ 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 of 2010.

4.4 An article published on 05/01/2011 on www.businessinsider.com, which affirms that the Facebook portal had more than 600 million users as of January 2011.

4.5 An article published on www.abcnewsgo.com, on 18/12/2007, entitled ‘ABC News joins forces with Facebook’, referring to the launch of an online political initiative that will combine the news from the campaign for the 2008 presidential election trail with a variety of discussions and forums.

4.6 Printouts dated 21/06/2011 from www.time.com in relation to an interview given by Mark Zuckerberg (founder of Facebook). The evidence shows, inter alia, that Facebook is the sixth most visited site in the U.S.A., with more than 40 billion page views every month, and that it has a huge user base in the UK.

4.7 Printouts dated 21/06/2011 from www.zdnet.com, containing an article entitled ‘The Social Network won three Oscars, out of eight’. This film is about the story of the founders of the Facebook social network.

4.8 An article published on www.channeI4.com, dated 21/03/2010 (website extract of 21/06/2011), affirming that there are 24 million Facebook users in the UK, almost the same number of people who voted in the last general election.

4.9 Printouts from www.topics.nytimes.com, dated 21/06/2011, referring to an article published in the digital version of The New York Times, updated on 27/05/2011. The evidence states, inter alia, that Facebook, the world’s largest social network, announced in July 2010 that it had 500 million users around the world. Further, it is mentioned that in country after country, Facebook is cementing itself as the leader and often displacing other social networks, much as it outflanked MySpace in the United States.

4.10 Printouts dated 21/06/2011 from the independent website http://mashable.com, containing the article ‘Facebook – The Complete Biography’, published on 25/08/2006. The evidence refers to ‘Facebook’ as a massively successful social networking service, a growing phenomenon and provides, inter alia, a description of the features and highlights of ‘Facebook’, such as ‘Facebook Profiles’, ‘Facebook Photos’, ‘Facebook Groups’, ‘Facebook Developers’ (a free Developers API giving access to Facebook’s internals and letting programmers create widgets, mashups, tools and projects based around ‘Facebook’), ‘Facebook Notes’.

4.11 Printouts dated 21/06/2011 from the website http://techcrunch.com referring to the article ‘The Age of Facebook’, published on 25/04/2010 and stating, among other things, that Facebook has around 500 million users. Some quotations from the evidence are as follows: In 2008 it was clear that Facebook had taken the first step and changed our culture, possibly permanently; They (Facebook) are the universe; But all the momentum is behind Facebook and how they are changing the Web and our culture; Their vision of an open graph of people ad things (with Facebook at its center) is becoming reality; Facebook is taking over our identity and we are going along with that happily. It will take a new technology paradigm to disrupt what Facebook is doing; Someday, maybe a decade from now, some new technology will rise and allow other companies to threaten Facebook. But until then there is little to stop them. Their march to dominance has just begun.

4.12 Printouts dated 21/06/2011 from www.thisislondon.co.uk, relating to an article of 22/10/2008 in the London Evening Standard referring to Facebook and showing, inter alia, that Facebook has nearly 60 million users with two million new people joining every week.

4.13 Printouts dated 21/06/2011 from www.bbc.co.uk containing an article published on 15/02/2011 entitled Facebook boss Mark Zuckerberg answers mobile rumours. The evidence refers, among other things, to the Application Programming Interfaces (APIs) provided by Facebook that allow phone manufacturers to build social networking into their operating systems.

4.14 A reference from the website http://pingdom.com, posted on 19/03/2010 (website extract of 21/06/2011), which shows the international site rankings for Facebook, Google and Twitter in different countries, based on data from Alexa. For instance, in the UK, Italy and France, Facebook is ranked second while in Germany it occupies the third position. According to the evidence, the massive user base Facebook has gathered in just a few years is nothing short of amazing. Remember, they have only been around since 2004.

4.15 An article published on www.dailyfinance.com on 27/07/2010 (website extract of 21/06/2011) suggesting that Google is developing a potential Facebook rival. Further, it is mentioned that the online social-networking world is dominated by Facebook, Twitter and others. Facebook recently overtook Google’s numbers of page views to become the most visited website.

4.16 Printouts from www.thenextweb.com.uk, dated 21/06/2011 and referring to an article of 27/12/2010 that publishes 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 Printouts dated 05/04/2011 from www.comScore.com (a leader in measuring the digital world) publishing the following information: Facebook ranks as top display ad publisher in Q1 2011 for the US online display advertising market. Popular social networking site Facebook.com led all online publishers in Q1 2011 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 www.finance.yahoo.com of 11/09/2011 on ‘The most powerful people, 2011 provided by Forbes’, in which Mark Zuckerberg, the founder of ‘Facebook’ is ranked ninth.

4.19 Extracts from the book ‘The Facebook Effect – The Inside Story of the Company that is Connecting the World’ by David Kirkpatrick, edition of June 2010. Some quotations from these documents are as follows:

Facebook is bringing the world together. It has become an overarching common cultural experience for people worldwide, especially young people. Despite its modest beginning as the college project of a nineteen-year-old, it has become a technological powerhouse with unprecedented influence across modern life, both public and private. It changes how people communicate and interact, how marketers sell products, how governments reach out to citizens, even how companies operate. It is altering the character of political activism, and in some countries it is starting to affect the processes of democracy itself.

Facebook is the second-most-visited site, after Google, and claims more than 400 million active users (as of February 2010).

Well over 20 percent of the 1.7 billion people on the Internet worldwide now use Facebook regularly.

Furthermore, the evidence mentions UK as the next country with the greatest number of users, after the United States, France as the fifth and Italy as the seventh.

4.20 Printouts dated 27/05/2010 and 06/06/2012 from www.google.com/adplanner showing Google’s Adplanner Top 1000 sites in April 2010 and in July 2011. Facebook.com social networking website tops the list, with 540 000 000 unique visitors (users) and 35.2% reach in 2010 and 880 000 000 visitors and 51.3% reach in 2011, as shown below:

4.21 Extract from Business Week featuring the article ‘Facebook, No 1 Globally’, published on 13/08/2008. The evidence shows, among other things, that Facebook is the top global social network, it has been translated into 20 languages (including French and Spanish) and it had recently added 69 more.

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’ and an article on page 12 and page 43 et seq. about Mark Zuckerberg and statistics about Facebook). The evidence shows, inter alia, that on Facebook, every 60 seconds is packed with a lifetime’s worth of social interactions.

4.23 Facebook statistics and timeline from the website www.facebook.com, of 04/11/2011. The evidence shows, inter alia, that there are more than 800 million active users, more than 350 million active users accessing the site through their mobile devices, more than 70 languages available on the site and more than 50% of the active users logging on to Facebook on any given day.

4.24 ComScore press release of 12/08/2008, ‘Social Networking Explodes Worldwide as Site Increase their Focus on Cultural Relevance’, showing Facebook as the leading social networking site for June 2007 and June 2008.

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 the United Kingdom, France, Italy, Spain, Germany, Belgium, Sweden, Denmark, Finland, the Netherlands, Austria, Ireland and Portugal. Furthermore, it is mentioned that the site’s audience is largest in the UK, with 22.7 million visitors, followed by France, with 13.7 million visitors.

4.26 Time magazine issue dated 31/05/2010 ‘Facebook ... and how it’s redefining privacy’ and stating, among other things, that with nearly 500 million users, Facebook is connecting us in new (and scary) ways.

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’ by ComScore, referring to, among other matters, ‘time spent on different websites’ (Facebook: 11.7%). Further, the evidence states that by the end of 2010 Facebook was the leading social networking site in 15 out of 18 European Markets and shows the share of the market by percentage reach, both in Europe and broken down by country (for instance 63.6% for Europe, 81.7% for the UK, 78.1% for Italy, etc.).

4.29 Article from the website www.socialbankers.com, entitled ‘Facebook is globally closing in to 700 million users’, dated 30/05/2011.

4.30 Printouts from the French TV website http://envoye-special/france2.fr, about the reportage ‘Planète Facebook’, broadcast on 25/02/2010 (document in French and its partial English translation).

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

4.32 Printouts from the website www.boxofficemojo.com, showing the international box office results for the film ‘The Social Network’.

4.33 Selection of articles from The Guardian, The Telegraph, BBC News Website, The Daily Mail Online, The Financial Times and The Mail in the UK in the period between November 2005 and October 2009 relating to the fame of Facebook in England. Some quotations from the evidence are as follows:

Its success is down to the versatility of the site and its connection to the day-to-day reality. Facebook really works as an information directory and not just a site you go to when you’re bored or need entertainment. (‘Facebook.com’, The Guardian, 24/11/2005);
Facebook was by far the most popular site dominating 75 per cent of the total amount of time people spent on social networking sites. (‘Facebook users spend three solid days a year on the site’, The Telegraph, 05/11/2009);
Facebook’s first-half revenue roughly doubled to USD 1.6bn, underscoring the world’s largest social network’s appeal to advertisers. (‘Facebook revenue doubles to $1.6bn’, The Telegraph, 07/09/2011);
Facebook hopes to become an advertising magnet by substantially increasing its current audience nearly 50 million active users. (‘Microsoft buys stake in Facebook’, BBC News, 24/10/2007);
If 2006 was the year of YouTube, 2007 had been Facebook’s year. The growth of social media, led by Facebook, has taken the world by storm. Facebook is far more than just a cool way to catch up with old friends; rather, it is an incredibly effective and efficient tool that can be used to educate and galvanise grassroots advocacy, placing unprecedented power into the hands of individuals. (‘Power of Facebook affects law Internet law professor Michael Geist looks at how Facebook has the power to affect legislation’, BBC News, 18/12/2007);
Facebook, once largely confined to American colleges, has grown its audience by more than 500% in the last six months – making it more popular in Britain than in the US. (‘Social site Facebook buys Parakey’, BBC News, 20/07/2007).

4.34 The cover of the September 2009 issue of the German magazine Stern (no 27 from 03/09/2009) entitled ‘Generation Facebook, Wie sich Millionen Deutsche im Internet vernetzen’ (Generation Facebook, how millions of Germans network on the Internet).

4.35 Printouts of 10/11/2011 from the website www.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 Printouts of 10/11/2011 from www.amazon.de, www.amazon.it and www.amazon.es showing selections of books about Facebook.

4.37 The study ‘BrandZTop 100 Most valuable global brands 2010’ by Millward Brown, which ranks Facebook as brand no 20 in the Top 20 Technology Brands with a brand value of USD 5.524 million.

4.38 The study ‘BrandZ Top 100 most valuable global brands 2011’ by Millward Brown, which states that Facebook, just seven years old, appears in the BrandZ Top 100 Most Valuable Global Brands for the first time at No. 35, with a brand value of USD 19,102 million and that Facebook led the top risers last year. It is further shown that visionary, entrepreneurial leadership also contributed to growth in value, especially for Facebook.

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 entitled ‘Facebook could turn over $1billion this year’, dated 07/07/2009.

4.41 Printouts dated 06/06/2012 from the Spanish website www.muyinternet.com featuring information about this site and an article entitled ‘Create advertising in Facebook, step by step’ published on the same on 11/02/2010 (documents in Spanish and their partial English translation).

4.42 Printouts dated 16/04/2012 from the Spanish website www.muyinternet.com featuring an article entitled ‘Facebook surpasses Yahoo! in advertising for the first time’, published on said site on 13/05/2010 (documents in Spanish and partial English translation). According to the evidence, The comScore data has converted Facebook into the leading web site with the highest volume of advertising with 176.3 billion ads during the first quarter of 2010.

4.43 Article entitled ‘Facebook surpasses Google in advertising revenues’ published on 11/05/2011 on the Spanish website www.muyinternet.com (documents in Spanish and partial English translation). The evidence states that a new study by the London firm Enders Analysis has revealed the torture suffered by large companies like Google and Yahoo, by being surpassed by Facebook in advertising revenues (almost USD 1 billion more than Google’s).

4.44 Printouts from the Spanish website www.muyinternet.com featuring an article entitled ‘Facebook tries a new type of advertising’, published on 25/06/2011 (document in Spanish and English translation).

4.45 Printouts from the Spanish website www.muyinternet.com featuring an article entitled ‘Ads in Facebook in 2010 create 1.860 billion euros’, published on 18/01/2011 (document in Spanish and English translation).

4.46 Article ‘Facebook and AOL may become allies in online advertising’, published on 13/08/2010 on the Spanish website www.muyinternet.com (document in Spanish and English translation).

4.47 Article entitled ‘Facebook buys Chai Labs, an online publications company, published on 16/08/2010 on the Spanish website www.muyinternet.com (document in Spanish and English translation). The evidence indicates that Facebook had USD 1 285 billion in advertising sales in 2009.

4.48 Printouts from www.socialmediamagic.com featuring the article ‘Almost a billion Users! Facebook and your business’, indicating, inter alia, that industry experts are predicting that Facebook will reach 1 billion users in 2012; considering that there are only 7 billion people on earth, this means that one in every seven people in the world, are connected to each other through Facebook. The stage is set for Facebook’s biggest year ever, as the world converges on this giant social network. Facebook continues to evolve to meet the demands of this ever widening user base. […] Every month, Facebook adds 20 million users to its tally. Small business will see an increase in their fan communities, as they learn to harness the power of Facebook marketing. One of the smartest things you can do for your business in 2012, is formulate a valuable Facebook marketing strategy.

4.49 Printouts from www.socialmediamagic.com featuring an article entitled ‘Researching and Creating Effective Facebook Adverts’. The evidence reports, among other things, that Facebook advertising is the new PPC advertising – only with more potential. That’s because on Facebook you can hone in your exact target market more efficiently than with Google PPC advertising.

4.50 Study ‘Breakaway Brands of 2011’ by Landor Associates (one of the world’s leading strategic brand consulting and design firms), also published on www.forbes.com on 08/09/2011. The evidence shows Facebook as the first in the 2011 Breakaway Brands with a growth in brand strength between 2007 and 2010 of 195%.

4.51 Printouts from www.yourdictionary.com showing, inter alia, that the verb to friend means to add (someone) as a friend on social networking site. Furthermore, the evidence states as an example of Friend someone adding a person they know on Facebook.

4.52 Article entitled ‘How “Friend” became a Verb’, published on 15/12/2010 on www.online.wsj.com. The evidence states that Facebook turned friend into a verb.

4.53 Printouts from www.ducts.org featuring the article ‘Friend Is a Verb’, which refers to Facebook.

4.54 Printouts from www.creators.com featuring the article ‘When Friend becomes a verb’, referring to Facebook.

4.55 Printouts from www.ehow.com featuring the article ‘How to friend someone on Facebook’. The evidence states, among others, that Facebook is an exciting and useful social networking site.

4.56 Article entitled ‘Friend: popular verb among seniors’, published on February 2010 on www.ericksontribune.com. The evidence shows, among others, that Facebook is, according to a recent Nielsen study, the 3rd most popular online destination and that 8.2% of all social network and blog traffic is seniors.

4.57 Selection of articles relating to the key note speech given by the Facebook co-founder and CEO, Mark Zuckerberg, at the ‘Mobile World Congress 2014’, held in Barcelona (Spain) between 24 and 27 February, 2014, as follows: article from telegraph.co.uk of 25/02/2014 entitled ‘Mobile World Congress 2014: Facebook's Mark Zuckerberg explains WhatsApp acquisition’, article from ibnlive.in.com of 25/02/2014 entitled ‘MWC 2014: Mark Zuckerberg shares his long-term vision for WhatsApp, Internet’, article from theguardian.com of 23/02/2014 entitled ‘Mark Zuckerberg goes to Barcelona to make mobile friends’, article from billboardbiz.com of 28/02/2014 entitled ‘Mobile World Congress in Barcelona: 5 Take-aways and game changers’, article from Arabianbusiness.com of 27/02/2014 entitled Facebook CEO speaks at the Mobile World Congress, articles from elpais.com, of 25/02/2014 and 20/02/2014 entitled ‘Zuckerberg: WhatsApp is already worth more than what we paid for it’ and ‘Facebook acquires WhatsApp for 1 9 billion dollars’, article from tecnologiaelpais.com, of 27/02/2014, entitled ‘Barcelona closes it most successful edition of the mobile congress’, articles from elmundo.es of 16/01/2014 and 27/02/2014 entitled ‘A record Mobile World Congress with the founder of Facebook’ and ‘Absolute record of the Mobile World Congress with 85.000 visitants’, article from cincodias.com, of 25/02/2014 entitled ‘Mark Zuckerberg, founder of Facebook, the star of the Mobile World Congress’, article from abc.es, of 25/02/2014, entitled ‘MWC 2014: Zuckerberg asserts that: WhatsApp is worth more than what we paid for it’, article from expansion.com, of 16/01/2014 entitled 'The founders of Facebook and WhatsApp, star guess of the Mobile World Congress, article from Telecinco.es of 23/02/2014, entitled ‘Zuckerberg (Facebook) and Koum (WhatsApp) inaugurate the Mobile World Congress’, article from redes-sociales.com, of 26/02/2014 entitled ‘The founder of Facebook in the Mobile World Congress’, article from radio3W.com, of February 2014 entitled ‘The Mobile World Congress closes the edition in which Zuckerberg reappeared after buying WhatsApp’, article from elperidico.com, of 24/02/2014 entitled ‘Facebook wants to extend internet throughout all the world with the help of operators’, article from marketingdirecto.com, of 24/02/2014 ‘the keys of the expected presentation of Mark Zuckerberg in MWC’, article from pcworld.es, of 16/01/2014, entitled ‘Mark Zuckerberg, star guess to the Mobile World Congress 2014’, article from cnet.com, entitled ‘Zuckerberg will be the principal speaker of the Mobile World Congress’, article from womenalia.com, of 27/02/2014 entitled ‘Marc Zuckerberg awakes maximum attention at Mobile World Congress 2014’ (documents in English and in Spanish with partial English translations).

4.58 The study ‘BrandZ Top 100 most valuable global brands 2014’ by Millward Brown, which shows at No. 21 in the top 100 Most Valuable Global Brands for the category Technology, with a brand value of 35,740 (million USD).

Exhibit B5

Selection of articles and references relating to the fame and rapid popularity of Facebook in Spain (documents in Spanish and partial English translations).

5.1 Results of a Google search (12 pages) 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 an update as of 24/03/2015 (four pages) showing approximately 15 250 000 000 hits.

5.2 Article ‘Ranking of social networks in Spain’ (July 2011) published on the blog of Juan Antonio Galindo, CTO at FactoryWeb.es, on 23/07/2011. The evidence shows that Facebook occupies the first position, with 15 000 000 users, and that from March 2010 to July 2011 it increased its number of users by 35%.

5.3 Printouts from the website http://liboh.es, featuring the article ‘What is Facebook’, published on 11/10/2007, which says that Facebook is the largest social network in existence and currently the seventh most visited website in the world.

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.

5.5 Printouts from www.elmundo.es featuring an article published on 24/10/2007 affirming that Facebook is the new pearl of the network with 49 million active users.

5.6 Article published on www.ElCorreoGallego.es on 30/12/2007 stating that Facebook is the most widely visited social network after MySpace and that in 2007, it exceeded 50 million users.

5.7 Article published on www.mallorcaconfidencial.com about the organisation, by El Mundo, of a Facebook account for Rajoy (24/01/2009).

5.8 Printouts from www.elmundo.es featuring an article of 01/09/2008 stating that Facebook has more than 100 million members around the world and its market value is USD 16 billion.

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

5.10 Article on www.elpais.com, published on 21/06/2007, entitled ‘Facebook, a new phenomenon’.

5.11 Article published on www.elpais.com, on 24/01/2008 in relation to women as the protagonists of the new social uses of the internet.

5.12 Article dated 05/07/2007 and published on www.elpais.com, about the Facebook platform, which ‘continues rocking the web’s world’.

5.13 Article published on www.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 References from Ciberpaís (weekly supplement of El País) stating, inter alia, that Facebook is one of the principal internet service providers together with Google and eBay (29/05/2008, 12/06/2008 and 26/06/2008).

5.15 Reference from Ciberpaís (weekly supplement of El País) saying that 190 million people use MySpace and Facebook (15/05/2008).

5.16 Reference from Ciberpaís (weekly supplement of El País) speaking of the ‘Facebook era’ (17/04/2008).

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

5.18 Printouts from the independent website www.ojointernet.com, featuring the article ‘British Intelligence looks for personnel on Facebook’ published on 29/09/2008.

5.19 Reference from the independent website www.ojointernet.com, stating that ‘Facebook may be bought by the Mormons’, who made an offer of USD 7 billion (22/08/2008).

5.20 Reference from the independent website www.ojointernet.com, on the integration of Microsoft Live Search into Facebook (08/10/2008).

5.21 Reference from the independent website www.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 (09/12/2008).

5.22 Reference from the independent website www.ojointernet.com, stating that ‘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 (13/01/2009).

5.23 Reference from the independent website www.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 (23/01/2009).

5.24 Printouts from the website www.actualidadterra.es, referring to 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 Reference from the website www.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 (25/10/2007).

5.26 News published on 15/01/2009 on www.genbeta.com showing that Facebook was 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 www.es.blackberry.com of 29/01/2009 stating that Facebook is now available for BlackBerry smartphones.

5.29 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 Article ‘Facebook gives a new push to the concept of free hardware’ published on 12/04/2011 in the newspaper El País.

5.31 Selection of 15 articles published in the Spanish newspapers El País, El Mundo and El Periódico between 21/06/2007 and 09/12/2009.

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 País, entitled ‘Facebook has more than 15 million users in Spain’, dated 28/06/2011.

5.35 Printouts from the website www.liboh.es featuring the article ‘What is Facebook?’, dated 11/10/2007. The evidence states, among other things, 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 ‘Facebook has 750 million users’, published on 27/06/2011 on the website www.europapress.es.The evidence shows, inter alia, that in April 2010 the social network announced that they had 400 million registered profiles. Just three months later, by mid-July, they said the figure had reached 500 million.

5.37 Article ‘Facebook debuts on Wall Street with a record number of friends’, published on 18/05/2012 in the El Mundo newspaper.

5.38 Article ‘Facebook marks a milestone on the Stock Exchange despite a not very brilliant debut’, published on 19/05/2012 in the newspaper El País.

5.39 Article ‘The jump forward in evolution of Twitter and Facebook’, published on 09/06/2013 in the newspaper El Mundo.

Exhibit B6

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

6.1 Printouts from www.geek.com. Title: Location start-up PlaceBook under pressure to change name (11/08/2010).

6.2 Domain name wire. The domain industry’s news source. Facebook wins facebook.me domain name in arbitration (03/08/2010).

6.3 Los Angeles Times. Facebook sues start-up for using “book” in its name (25/08/2010).

6.4 SFGate. Facebook war on start-ups with “book” in their name continues (22/09/2010).

6.5 www.bostonherald.com. Local firm in trademark fight over “Placebook” (02/10/2010).

6.6 Boston.com. Fight is one for the “books” (04/l0/2010).

6.7 Tech Crunch. Printing Facebook now social print shop after legal pressure from Facebook (01/11/2010).

6.8 PCMag.com. Facebook allowed to trademark the word “Face” (24/11/2010).

6.9 Legal Pad. Facebook’s week sees class action and pornographic imitator (20/10/2010).

6.10 www.domainnamewire.com. An article published entitled “Facebook awarded 21 trademark-infringing domain names” (25/05/2011).

Exhibit B7

Results of a search in Alexa (the web information company) for the website facebook.com, dated March 2011 and June 2012. The evidence states that FACEBOOK is the second most popular site in the world. The opponent also mentions that Alexa is a subsidiary company of Amazon.com that is known for its toolbar and website. Once installed, the toolbar collects data on browsing behaviour, which is transmitted to the website, where it is stored and analysed and is the basis for the company’s web traffic reporting.

An update for the website facebook.com, dated June 2013 which states that there are no sites with a better three-month global Alexa traffic rank than Facebook and shows that Facebook is in first place in the Global Rank.

Printouts from the website http://www.alexa.com, dated 24/03/2015 and featuring an updated site overview for facebook.com, showing, inter alia, that Facebook is in the second place in the Global Rank.

Exhibit B8

CD-ROM containing evidence (801 pages) relating to Facebook in France (documents in French and partial English translations).

8.1 152 articles from the French newspaper Les Echos.

8.2 201 articles from the newspaper La Tribune.

8.3 Books and articles showing that Facebook is intended for businessmen.

8.4 Documents showing that Facebook has been the subject of radio programmes in France, on highly popular national radio stations such as France Inter, France Info and France Culture.

8.5 Selection of books on Facebook published in France between 2008 and 2011.

Exhibit B9

CD-ROM containing evidence (312 pages) of the fame of FACEBOOK all over the world. The evidence features, inter alia: (i) various press articles dated between 11/09/2006 and 17/11/2011 from The New York Times, The Guardian, Newsweek, Business 2.0, The Sunday Times, CNNMoney.com, Time, Business Week, The Seattle Times, US News and World Report, San Francisco Chronicle, Financial Times, www.telegraph.co.uk, BBC News UK; (ii) printouts from www.amazon.com listing 60 books in relation to Facebook; (iii) the ranking ‘BrandZ Top 100 Most valuable global brands 2010’ conducted by Millward Brown Optimor, which mentions Facebook as Brand no 20 in the Top Technology Brands with a brand value of USD 5 524 million; (iv) a list of the largest 1 000 sites worldwide based on unique visitors (users) as measured by Ad Planner in April 2010, which places Facebook in the first place for the category Social Networks, with 540 000 000 unique visitors; (v) the ‘Brand Impact Report 2011’ (a comparative report on the effect of branding activities in the technology sector, based on a research study by Socratic Technologies) carried out by Liquid Agency Brand Marketing, which shows Facebook to be the Brand of the Year for the Social Media category, with the highest brand impact score.

Exhibit B10

Document entitled ‘Observatoire des Réseaux Sociaux’ (Social Network Observatory), dated October 2010, referring to a study of 32 social networks with a duplicate sampling of 2 000 people surveyed from 15 to 22/09/2010 (instead of the 1 000 surveyed in the previous years). The document shows in the classification of social networks in France for 2010 that Facebook occupies the first position, with 94%.

Document entitled ‘Observatoire des Réseaux Sociaux’ (Social Networks Observatory), dated January 2010 referring to a study of 17 social networking sites in France and showing Facebook in the first position with a reputation score of 97%. It is further mentioned that ‘the top three social networks remain unchanged compared to June 2009, each site registering at the same time an increase in its reputation score’ and that ‘Facebook now reaches almost a maximum level (97% have heard of it)’.

The evidence also provides information on the entity that conducted the studies, namely Ifop Group, ‘since 1938, a pioneer and a leader in the opinion poll and market research sector’.

Exhibit B11

Document entitled ‘Informe de Resultados Obervatorio de Redes Sociales’ (Social Network Observatory, Report on results), released in February 2011. This exhibit contains a large number of pages consisting of publications from various widely circulated magazines, with references to the mark with reputation FACEBOOK. These include, among other publications, for example, Stern, Rolling Stone, Boston.com, The Washington Post, SFGate, The New York Times, Los Angeles Times, CNNMoney.com, The Guardian, Time, Newsweek, Business week, etc. The evidence includes, among others, a graph with the evolution of being a member of a social network/community from 2008 and 2010, Facebook occupying the first position.

Exhibit B12

Documents entitled ‘Observatoire des Réseaux Sociaux’ (Social Network Observatory), dated November 2012, ‘Observatoire des Réseaux Sociaux 2013’ and printouts from the website https://laurenceperchet.wordpress.com, dated 24/03/2015 and featuring an article entitled ‘Comment les français utilisent-ils les réseaux sociaux en 2014?’ (34 pages altogether, in French, no English translation provided). As it is apparent from the studies, Facebook still occupies the first position with 95% in 2012 and respectively 97% in 2013.

Exhibit B13

Printouts from www.interbrand.com, featuring the ‘Best Global Brands’ rankings for the years 2012, 2013 and 2014. The evidence shows that Facebook (), social media giant, ranked 69 place with a brand value of 5,421 (million USD) in 2012, 52 place with a brand value of 7,732 (million USD) in 2013 (being the bigger riser in the 2013 Report) and 29 place in the technology sector in 2014, with a brand value of 14,349 (million USD).

The evidence shows, among other things, that ‘Facebook is probably the first brand that comes to mind for most consumers when they hear the term ‘social media’ and given the well documented increase in its fortune, it should be no surprise that it’s the top rising brand in our ranking this year (n.n. 2014) with a staggering value increase of 86 percent. […] When Facebook launched 10 years ago, it defined the social media space. It continues to live up to its mission ‘to give people the power to share and make the world more open and connected’ and is currently building the groundwork to once again redefine human interaction. […] Of all the social media brands in existence, this one has more potential than most to become a guiding force in the Age of You’.

Exhibit B14

Printouts from www.blog.nielsen.com containing the Social Media Report 2012: Social Media Comes of Age, carried out by Nielsen Wire. The evidence states, among other things, that Facebook remains the top social network.

EXHIBIT C

The study ‘Facebook the Perfect Startup’ conducted by the management consulting firm faberNovel (released in 2012), which addresses what the authors believe makes FACEBOOK ONE OF THE MOST IMPRESSIVE INNOVATION COMPANIES. The evidence states, inter alia, we all know the figures, they are mind-blowing: more than 900 million members for a current valuation of over 100 billion dollars.

Additionally, on 16/09/2016 and in reply to the applicant’s observations to the notice of opposition, the opponent further submitted copies of several decisions adopted in similar cases by EUIPO, SPO and the German Patent and Trade mark Office, as follows:

Annex 1: The decision of EUIPO’s Opposition Division of 30/10/2015, ruling on opposition No B 2 160 458 and refusing the registration of EUTM application No 11 454 717 ‘’ for services in Classes 35, 38 and 45.

Annex 2: The decision of EUIPO’s Opposition Division of 30/10/2015, ruling on opposition No B 2 373 887 and refusing the registration of EUTM application No 12 630 976 ‘’ for goods and services in Classes 9, 42 and 45.

Annex 3: The decision of EUIPO’s Opposition Division of 18/12/2015, ruling on opposition No B 2 496 548 and refusing the registration of EUTM application No 12 856 829 ‘dizaobook’ for goods and services in Classes 9, 16, 35, 38, 41, 42 and 45.

Annex 4: The decision of EUIPO’s Opposition Division of 22/01/2016, ruling on opposition No B 2 183 930 and refusing the registration of EUTM application No 11 524 295 ‘’ for goods and services in Classes 3 and 35.

Annex 5: The decision of EUIPO’s Second Board of Appeal of 16/06/2016 in case R 2027/2015-2, LOVEBOOK (fig.)/FACEBOOK (fig.) et al and confirming the findings of the Opposition Division’s decision of 13/08/2015 under Article 8(5) EUTMR.

Annex 6: The decision of the SPTO dated 09/06/2015, refusing registration of the trade mark application No 35 355 65/4 ‘’, in Class 42 and its English translation.

Annex 7: The decision of the SPTO dated 25/11/2015, refusing registration of the trade mark application No 35 562 59/5 ‘FACEBARÇA’, in Class 38 and its English translation.

Annex 8: The decision of the SPTO dated 26/10/2015, refusing registration of the trade mark application No 35 325 67/4 ‘’, in Classes 38 and 41 and its English translation.

Annex 9: Excerpts from the decisions of the German Patent and Trade mark Office dated 16/08/2016 and partially cancelling the registration of the trade mark registrations No 30 2012 031 026 and No 30 2011 009 462 ‘seniorbook’ for Classes 16, 35, 38, 41 and 45 (documents in English).

The fact that the above listed additional evidence was not available until after the opponent’s time limit to substantiate the opposition had expired, as can be seen from the dates of the documents, justifies the late filing of this evidence. However, in the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence submitted on 16/09/2016 can remain open, as the evidence submitted within the time limit is sufficient to prove the reputation of the earlier trade marks, as it will be shown hereinbelow.

Assessment of the evidence

Having evaluated all the documents listed above, the Opposition Division concludes that some of the earlier trade marks have a reputation in the European Union for some of the goods and services on which the opposition is based and for which the opponent claimed reputation.

The notable amount of evidence submitted by the opponent leaves no doubt that the Earlier Marks 1, 2, 3 and 4 ‘FACEBOOK’/‘’ have been subject to long-standing and intensive use and are generally known in the relevant market as the name of the largest social networking website in existence (with already 540 million unique users worldwide in April 2010, more than 600 million active users in January 2011, 1.11 billion active users in March 2013 and 1.250 million active users in the first quarter of 2014), where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources.

Indeed, the brand studies, the reports on social networks and the international site rankings (which place FACEBOOK as the leading social networking site in 15 European Markets by the end of 2010 and on the 29th place with a brand value of 14,349 million USD, in Interbrand Best Global Brands 2014), the share of the market by percentage reach evidenced by the documents, the impressive and constantly increasing number of active users, the various references in the press to its success, all unequivocally show that the Earlier Marks 1, 2, 3 and 4 enjoy a high degree of recognition among the relevant public in connection with providing online chat rooms for registered users for transmission of messages concerning collegiate life, classifieds, virtual community and social networking in Class 38 covered by Earlier Mark 4, telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online chat rooms; 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 in Class 38 covered by Earlier Marks 1 and 2, providing an online directory information service featuring information regarding, and in the nature of, collegiate life, general interest, classifieds, virtual community, social networking, photo sharing, and transmission of photographic images in Class 41 covered by Earlier Mark 3, providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photosharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks in Class 41 covered by Earlier Marks 1 and 2, computer services in the nature of customized web pages featuring user-defined information, personal profiles and information in Class 42 covered by Earlier Mark 3, computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites in Class 42 covered by Earlier Marks 1 and 2, introduction and social networking services in Class 45 covered by Earlier Mark 3 and social introduction, networking and dating services in Class 45 covered by Earlier Marks 1 and 2, and more specifically in connection with social networking and related services covered by the opponent’s Earlier Marks 1, 2, 3 and 4 in Classes 38, 41, 42 and 45.

Furthermore, the existence of the reputation of the earlier marks ‘FACEBOOK’/‘’ has also been confirmed by previous decisions of the Opposition Division as well as by the certifications and decisions of national authorities.

However, the evidence does not succeed in establishing that Earlier Marks 1, 2, 3 and 4 have a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to social networking and related services in Classes 38, 41, 42 and 45, whereas there is little or no reference to the remaining goods and services.

Furthermore, it has to be mentioned that the evidence does not succeed in establishing that Earlier Marks 5 and 6 have a reputation for any of the goods and services on which the opposition is based and for which reputation has been claimed, namely goods and services in Classes 9, 16, 35, 36, 40, 42 and 45.

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 marks concerned have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on Earlier Marks 5 and 6.

The examination of the present opposition will therefore continue on the grounds of Article 8(5) EUTMR in relation to Earlier Marks 1, 2, 3 and 4.

The signs

European Union trade mark registration No 9 151 168

(2) FACEBOOK

European Union trade mark registrations No 4 535 381, No 5 585 518 and No 9 151 192

FACECALL

Earlier trade marks

Contested sign

The relevant territory is the European Union.

Earlier mark (1) is a figurative mark in colour depicting the word ‘facebook’ in white bold lower-case letters against a blue rectangle. Earlier marks (2) are word marks formed of the word ‘FACEBOOK’.

The word ‘facebook’ of the earlier marks does not have a meaning as such in any of the languages of the European Union. Although this word is defined by the online Wiktionary open-content dictionary (www.wictionary.org), as a reference book or electronic directory made up of individuals’ photographs and names or a college publication distributed at the start of the academic year by university administrations with the intention of helping students get to know each other better, it appears that such meanings seem to be limited to the United States. This is also reflected in the Wikipedia online encyclopaedia, which seems to confirm the term ‘facebook’ as being the colloquial name for the book given to students at the start of the academic year by some university administrations in the United States to help students get to know each other (see to that effect http://en.wikipedia.org/wiki/Face_book). The English- speaking part of the relevant public will however naturally break down ‘facebook’ into elements which have a clear and specific meaning and thus, perceive it as a combination of the English words ‘face’ (referring, inter alia, to the front of the head from the forehead to the lower jaw or the expression of the countenance) and ‘book’ (meaning, among other senses, a number of printed or written pages bound together along one edge and usually protected by thick paper or stiff pasteboard cover or a written work or composition, such as a novel, technical manual, or dictionary), without however attributing a concept as a whole to the juxtaposition of these words, other than the sum of its parts.

The distinctiveness of ‘facebook’ of the earlier marks (or of its elements if such are singled out) in relation to the relevant services is average, including for that part of the public that perceives a meaning therein, as explained above. With particular reference to the component ‘book’, albeit some of the services could be used/rendered in connection with books (for example the earlier providing online chat rooms in Class 38 to the extent they may concern chat rooms/forums related to books), there is nothing in their description to the effect that they relate to services specifically linked with books (see by analogy 26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49).

The blue rectangle of earlier mark (1) will be given less trade mark significance (if at all) than the verbal element ‘facebook’, since it is a simple geometrical shape, commonplace and banal.

It follows that in the earlier mark (1) it is the verbal element ‘facebook’ that is more distinctive than the figurative element, whereas the earlier marks (2) have no element that could be considered clearly more distinctive than other elements.

The contested sign is also a word mark, composed of the word ‘FACECALL’. The juxtaposition of the English words ‘FACE’ (same meaning as explained above for the earlier marks) and ‘CALL’ (inter alia, to contact someone by phone) forms a meaningful expression for the English-speaking part of the relevant public that will immediately understand it as a reference to a videoconference call, whereas the remaining consumers will not recognise any semantic content in the verbal element(s) forming the contested sign.

When consideration is given to the relevant goods and services, it must be concluded that for the English-speaking public ‘FACECALL’ has a weak distinctiveness and a lesser ability to indicate commercial origin in relation to those goods and services that are directly related to making video calls, such as audio and video communication equipment and software in Class 9 (computer software for commercial purposes (not for social networks); intercommunication apparatus; laptop computers; computer programs for commercial purposes (downloadable software not for social networks)) or telecommunication services in Class 38 (telecommunications for commercial purposes (not for social networks); cellular telephone communication, communications by fiber [fibre] optic networks, communications by computer terminals for commercial purposes (not for social networks)). For the remaining goods and services for which this word does not carry such allusive content as well as for the remaining consumers for which it has no meaning, ‘FACECALL’ is distinctive to an average degree.

Contrary to the applicant’s submissions, earlier mark (1) has no element that could be considered more dominant (visually eye-catching) than other elements. The same applies to earlier marks (2) and to the contested sign, which are word marks and by definition do not have any such element.

Visually, the signs are similar to the extent that they feature one verbal element that begins with the same sequence of letters ‘FACE-’. On the other hand, they differ in: (i) their remaining letters, being ‘-BOOK’ in the earlier marks and ‘-CALL’ in the contested sign, (ii) the way the common letters ‘FACE-’ are depicted in earlier mark (1), as explained above and (iii) the figurative element of the blue rectangle and the overall stylisation of earlier mark (1). While it is true that the shared letters ‘FACE-’ are placed in the beginning of the signs, where consumers’ attention is normally mostly focussed on, the comparison of the signs has to be based on their overall impression and cannot be reduced to a matter of arithmetic. The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). In the present case, the differentiating parts of the signs and particularly the more visually striking double letters ‘-OO-’ of the earlier marks and respectively ‘-LL’ of the contested sign are readily perceptible. Further, given the lessened ability of ‘FACECALL’ to act as a badge of origin for a part of the public and in relation to some of the relevant goods and services (as stated above), the visual similarity on account of the shared letters cannot be deemed as high. Bearing in mind the foregoing, it is concluded that overall the degree of visual similarity varies from very low to at most below average.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their first four letters ‘f/a/c/e-’, present identically in all the signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of their remaining letters, ‘-b/o/o/k’ in the earlier marks versus ‘-c/a/l/l’ in the contested sign. Overall and along similar lines of reasoning with what has been stated above under the visual comparison, the degree of aural similarity varies from very low to at most below average.

Conceptually, for the English-speaking part of the relevant public the marks are not conceptually similar since, as detailed above, they will be associated with different concepts (face + book in the earlier marks versus videoconference call in the contested sign). For the remaining part of the public, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. The presence of the blue rectangle in earlier mark (1) does not change the above conclusion for this part of the public, since said figurative element does not introduce any particular concept able to alter the conceptual perception of the signs.

To conclude, the signs under comparison are similar to the extent that they have in common the sequence of letters ‘FACE-’.

The ‘link’ between the signs

As seen above, the earlier marks are 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 marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (see, to that effect, judgment of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67 to § 69; and judgment of 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.

Therefore, it is in the light of the abovementioned jurisprudence that the opponent’s claims must be examined.

In the present case, the signs have been found to be similar to the extent that they have a similar structure consisting of the same sequence of letters ‘face-’ placed at their beginning + a noun (‘-book’/’-call’). While it is true that for a part of the public and in relation to the some of the contested goods and services, ‘FACECALL’ of the contested sign has a lesser ability to function as a badge of origin, that is not the case for the remaining consumers for which this word will not be perceived as conveying any semantic content.

It should also be remembered that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. Thus, whereas 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 is 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 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 (see judgment of 24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53 and the case-law cited therein).

As regards the distinctiveness of the earlier marks, the element ‘FACEBOOK’/‘’ is inherently distinctive for the services at hand, in particular, by virtue of the fact that it is a word without any meaning in relation to the services designated by it, even for those consumers that may detect the concepts behind the elements ‘face’ and ‘book’ forming this word, since these do not suggest or make a descriptive reference to the services concerned. In addition, as already shown above, the earlier marks have been found to enjoy an enormous reputation in the European Union in connection with social networking and related services.

Turning to the relevant goods and services, the contested application seeks protection for goods and services in Classes 9, 35, 38, 42 and 45 (see listing under the ‘Preliminary remarks’ section above). Admittedly some of the contested goods and services are dissimilar to the earlier reputed services; however, having regard to their nature and taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that the gap between them is not so large and consequently there exists, at least, prima facie, a possibility that the contested mark, when being encountered in relation to some of the contested goods and services for which protection is sought, will bring to the mind of the relevant consumers the earlier marks. That is the case specifically in relation to some of the contested goods in Class 9 (carriers for digitized data; computer software for commercial purposes (not for social networks); USB flash drives; electronic publications, downloadable; interface programs for computers; sleeves for laptops and tablet computers; cd roms; computer software for commercial purposes (recorded, not for social networks); recorded computer programs for commercial purposes (not for social networks); computer programs for commercial purposes (downloadable software, not for social networks); monitors [computer programs]; mouse mats; downloadable image files for commercial purposes (not for social networks); laptop and tablet bags), some of the contested services in Class 35 (advertising (not for social networks); office functions; marketing services; sales campaigns; online advertising on a computer network for commercial purposes (not for social networks); assistance in management of business activities; commercial information for corporate clients; dissemination of advertising matter for commercial purposes (not for social networks); provision of commercial information; data search in computer files for commercial purposes (not for social networks)), all the contested services in Class 38 and some of the contested services in Class 42 (design and development of computer software for commercial purposes (not for social networks); computer system analysis; recovery of computer data; installation of computer software for commercial purposes (not for social networks); computer software consultancy; computer programming for commercial purposes (not for social networks); conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion]; information technology [it] consultancy; web site design consultancy; updating of computer software for commercial purposes (not for social networks); hosting computer sites (web sites) for commercial purposes (not for social networks); provision of search engines for the internet; computer software design for commercial purposes (not for social networks); computer system design for commercial purposes (not for social networks); development of new products for commercial purposes (not for social networks); software as a service (saas) for commercial purposes (not for social networks); creating and maintaining websites for commercial purposes (not for social networks); server hosting for commercial purposes (not for social networks); computer virus protection services) for the reasons set out below:

Contested goods in Class 9

As is apparent from the evidence, the opponent’s reputed social network platform makes available to its users various applications and creation tools that enable them, among other possibilities, to play games, to view different media content, to create a Facebook page (for a local business or a place, for a company or institution, for a product, for a cause, etc.) or to communicate or administer a promotion or a commercial offer. Given this, it would be difficult to deny the existence of a connection between the contested computer software for commercial purposes (not for social networks); interface programs for computers; computer software for commercial purposes (recorded, not for social networks); recorded computer programs for commercial purposes (not for social networks); computer programs for commercial purposes (downloadable software, not for social networks); monitors [computer programs] and the earlier reputed computer services for the provision of online social networking services.

The fact that the applicant restricted the specification of the contested application as to explicitly exclude computer software/recorded computer programs/computer programs for social networks does not challenge the above conclusion. Indeed, the contested goods could still cover software such as computer e-commerce software which, while not being for social networks is nevertheless related to a certain extent to the earlier reputed services, for the reasons already given above.
In addition, account must be taken of the fact that, in commerce, computer software often appears in the form of the carriers for digitized data, USB flash drives or Cd roms. Therefore, these contested goods must also be considered to show certain links with the earlier services with reputation for the reasons explained hereinabove.
The same conclusion must be reached as regards the contested electronic publications, downloadable, which also present close links to the opponent’s reputed online social networking services. This is because the opponent’s website has also been used for displaying, in addition to personal information, content of a more general nature in a wide range of areas, from news and political issues to literary, art or musical works.
Despite the restriction, a link cannot be denied for the contested downloadable image files for commercial purposes (not for social networks) either, for the reasons already given in the above paragraph.

Finally, the contested sleeves for laptops and tablet computers; mouse mats; laptop and tablet bags are articles that may be inscribed with marks relating to very different goods or services and be used to market and promote a wide range of goods or services; as such, they could also serve as a means of advertising for the opponent’s reputed services. It is therefore considered that a certain connection of these goods with the earlier reputed services cannot be denied either.

Contested services in Class 35

As regards the contested advertising (not for social networks), it is noted that, despite the limitation, these services still cover publication of publicity texts and layout services for advertising purposes, which although they may not appear to be immediately linked to the opponent’s reputed services, nevertheless a certain connection cannot be denied.
The same applies as regards the contested marketing services; sales campaigns; online advertising on a computer network for commercial purposes (not for social networks); dissemination of advertising matter for commercial purposes (not for social networks) which are all advertising services that also present certain connections with the earlier reputed services.
Indeed, advertising on social networks is a rapidly growing trend and social networking websites, such as the opponent’s, are being extensively used at the moment as an advertising medium for businesses, through various forms of advertising from the traditional text-based ads and banner ads to more imaginative ways such as technology-savvy word-of-mouth techniques (sharing articles, videos and applications). The documents enclosed under Exhibit B4 (and more specifically the press articles referred to above under points 4.42 to 4.47, which show the advertising revenue obtained by the opposing party or the press article under point 4.49 reporting on Facebook advertising being the new PPC advertising) can only support these findings. Bearing in mind the foregoing, and without saying that the earlier trade marks enjoy a reputation also for advertising services, the Opposition Division considers both the category of the contested advertising (not for social networks) and the remaining contested services specified hereinabove to be sufficiently close to the reputed social networking and related services so that consumers make a connection with the earlier reputed marks of the opponent.
The contested assistance in management of business activities; commercial information for corporate clients; provision of commercial information and data search in computer files for commercial purposes (not for social networks) are all connected to the earlier reputed services to a greater or lesser extent. Assistance in management of business activities is broadly defined and can encompass business networking services, which are more than obviously linked to the earlier reputed networking services, given that the former are in essence networking services. Data search in computer files for commercial purposes (not for social networks) relates to retrieving data from a collection of information. Commercial information/provision of commercial information, even if the latter explicitly restricted, can include online provision of various business related information. On the other hand, the opponent’s online social networking platform allows users, among other possibilities, also to search for information on people, places and things. Furthermore, not only that the opponent’s website has been used for displaying and disseminating content of a more general nature in various areas, including business related, but it also offers networking services specifically tailored for companies in various industries at ‘facebook for business’. In addition, the reputed platform offers the possibility to create a page for marketing one’s business and for sharing information about one’s products or services, thus making it easier for customers to learn about and start using the said goods or services.
Finally, the same conclusion must be reached as regards the contested office functions which cover as a broad category data search in computer files for commercial purposes (not for social networks).

Contested services in Class 38

The contested services for which protection is sought in this class are different kinds of telecommunication services that are related, to a higher or lower degree, to the earlier reputed services.
It is noted from the outset that while the limitation of the vast majority of the contested services in this class by adding not for social networks may exclude identity with some of the earlier reputed services, it does not necessarily rule out a similarity between them or the finding of a link for that matter.
There is a clear link between the contested telecommunications and the earlier reputed services, since the former cover, as a broad category, telecommunication services related to social networking, for which the earlier marks enjoy a reputation.
The contested telecommunications routing and junction services for commercial purposes (not for social networks); providing telecommunications connections to a global computer network for commercial purposes (not for social networks); electronic mail, electronic bulletin board services (telecommunications services) for commercial purposes (not for social networks); message sending, wire service, information about telecommunication for commercial purposes (not for social networks); communications by fiber [fibre] optic networks, communications by computer terminals for commercial purposes (not for social networks); rental of access time to shared computing resources for commercial purposes (not for social networks); computer aided transmission of messages and images for commercial purposes (not for social networks); providing access to databases for commercial purposes (not for social networks); providing access to distribution services and resources for commercial purposes (not for social networks); exchanging messages for commercial purposes (not for social networks); voice mail services, intended for commercial purposes (not for social networks) encompass a broad range of telecommunication services that, despite the limitation, still belong to a commercial sector where the earlier marks are highly reputed (i.e. telecommunications).
As already shown above, the opponent’s reputed social network, in addition to providing an arena for people to interact with one another and share personal information online, allows users, among other possibilities, also to search for information on people, places or things. Furthermore, it has also been used for displaying content of a more general nature in various areas, ranging from news to literary or musical works, from sports articles to political issues as well as for serving as a medium where various goods and services are being advertised.
Bearing this in mind, it is the opinion of the Opposition Division that despite the limitation, there is sufficient proximity between these contested services and the earlier reputed ones.
As regards the contested cellular telephone communication, first it must be noted that over the past years these have come to include, in addition to the ‘classical’ voice call services (that allow people to communicate with each other using a mobile phone), mobile social networking services. On social networking sites such as the opponent’s, besides communicating with existing friends, people can find and make friends with other people who share similar interests, went to the same school, are from the same company, etc. Similarly, in mobile social networking, users can discover, through matchmaking (an operation through which the common interests of the phones’ owners are detected) new friends just as they do on traditional social networking sites. Therefore, it is considered that these contested services also present certain connections with the opponent’s reputed ones; the same applies, along similar lines of reasoning, to the contested communications by telephone intended for commercial purposes (not for social networks), which despite the limitation are also linked, at least to some extent, to the earlier reputed services.
The contested wireless broadcasting; cable television broadcasting and satellite transmission for commercial purposes (not for social networks), radio broadcasting are concerned with the distribution of audio and/or video content to a dispersed audience via any electronic mass communication medium. On the other hand, it is a fact that nowadays broadcasting and social media link-ups are happening and an increasing number of broadcasters explore the potential of social media to disseminate news, for example by entering into partnerships with providers of social networking services to reach new audiences such as the one between BBC and Twitter Amplify (a product that gives broadcasters the opportunity to publish real-time in-tweet video clips that are accompanied by pre-roll or post-roll advertisements). It is therefore considered that these services are also linked to the earlier reputed ones at least to some extent.
The contested rental of telephones, modems, telecommunication equipment and message sending apparatus for commercial purposes (not for social networks) are services by which one party is granted the temporary use of telecommunication equipment in exchange for an agreed amount of money. The contested communications by telegrams intended for commercial purposes (not for social networks); transmission of telegrams and digital files for commercial purposes (not for social networks); telex and telephone services for commercial purposes (not for social networks); videoconferencing services for commercial purposes (not for social networks) are various types of telecommunication services. They are essentially concerned with allowing people to communicate with one another and transmit and exchange information through various means (facsimile, telex, telegrams etc) and respectively with making available the equipment necessary to that end. The opponent’s reputed social networking platform serves the same purpose, to allow people to communicate online and, as shown by the evidence, is aimed at ‘marking the world more connected’. It is, therefore, considered that these services, despite the limitation, are also linked to a certain extent to the earlier reputed ones.

Contested services in Class 42

In the first place, and as explained for Class 38 above, the limitation of the contested services does not necessarily rule out a finding of a link with the earlier reputed ones.
In the second place, it is recalled that the opponent’s reputed social network platform, as already detailed, makes available to its users various applications, software and creation tools (including the corresponding updates) that enable them, among other possibilities, to upload, download, transfer and more generally share with others all kinds of information, to create a Facebook page (for a local business or a place, for a company or institution, for a product, for a cause, etc.) or to retrieve information and data related to one’s profile.
Given the above, it would be difficult to deny the existence of a certain connection between the contested design and development of computer software for commercial purposes (not for social networks); computer system analysis; recovery of computer data; installation of computer software for commercial purposes (not for social networks); computer software consultancy; computer programming for commercial purposes (not for social networks); conversion of data or documents from physical to electronic media; data conversion of computer programs and data [not physical conversion]; information technology [IT] consultancy; web site design consultancy; updating of computer software for commercial purposes (not for social networks); hosting computer sites (web sites) for commercial purposes (not for social networks); provision of search engines for the internet; computer software design for commercial purposes (not for social networks); computer system design for commercial purposes (not for social networks); development of new products for commercial purposes (not for social networks); software as a service (SaaS) for commercial purposes (not for social networks); creating and maintaining websites for commercial purposes (not for social networks); server hosting for commercial purposes (not for social networks); computer virus protection services) and the earlier reputed ones.

Therefore, taking into account and weighing up all the relevant factors of the present case and in particular the reputation of the earlier marks and the proximity of the goods and services concerned, as explained, the Opposition Division concludes that when encountering the contested mark in relation to the above mentioned goods and services the relevant consumers will be likely to associate it with the earlier signs, 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).

The same conclusion cannot be reached as far as the remaining contested goods and services are concerned, namely apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; cash registers; alarms; altimeters; ammeters; anemometers; antennas; anticathodes; intercommunication apparatus; apparatus for remote-controlled recording; pressure measuring apparatus; speed measuring instruments; distance measuring apparatus; testing apparatus not for medical purposes; speed checking apparatus for vehicles; weighing apparatus and instruments; electronic notebooks; voltmeters; time recording apparatus; sensors and detectors; smoke detectors; speaking tubes; electric installations for the remote control of industrial operations; fuses; electro-dynamic apparatus for the remote control of signals; electronic tags for goods; thermionic valves; electronic display boards; sound alarms; warning buzzers; signs, luminous; buzzers; measuring instruments; jigs [measuring instruments]; meters; measuring instruments, electric and electronic; water level indicators; quantity indicators; electric loss indicators; pressure indicators; theft prevention installations, electric and electronic; gas testing instruments; observation instruments; integrated circuits; electrical cables; smart cards [integrated circuit cards]; compasses [measuring instruments]; compasses [measuring instruments]; laptop computers; computer keyboards; computer memory devices; converters, electric; metal detectors for industrial or military purposes; mouse [computer peripheral]; vehicles (navigation apparatus for -) [on-board computers]; navigational instruments; ohmmeters; integrated circuits; integrated circuits; wrist rests for use with computers; fire alarms; switchboxes [electricity]; switchboards; central processing units and microprocessors (processors); distribution boards (electricity, electronics); electric couplings; electric couplings; couplers [data processing equipment]; junction boxes [electricity]; taximeters; transistors [electronic]; transponders; transformers (electricity, electronics); voting machines; remote control apparatus; readers [data processing equipment]; integrated circuit chips in Class 9, business management (not for social networks); business administration; arranging subscriptions to telecommunication services for commercial purposes (not for social networks); administrative processing of orders for commercial purposes (not for social networks); business auditing; efficiency experts; public relations for commercial purposes (not for social networks); document reproduction for commercial purposes (not for social networks); payroll preparation; advertising columns preparation (not for social networks); market research; business investigation; economic forecasting; personnel management consultancy; advisory services for business management; consultancy relating to business organisation; business management and organization consultancy; business management consulting; personnel recruitment; commercial advice for corporate clients; demonstration of goods; telephone answering for unavailable corporate subscribers (not for social networks); production of advertising films for commercial purposes (not for social networks); corporate marketing research; business research; business consulting services; psychological testing for the selection of personnel; radio commercials; distribution of samples; outdoor advertising (not for social networks); advertising by mail order; systemization of information into computer databases; procurement services for others (purchasing goods and services for other businesses, not via social networks); business auditing; compilation of information into computer databases; compilation of statistics; drawing up statements of account; word processing; television commercials; telemarketing services; transcription of messages; business appraisals; business inquiries; commercial administration of the licensing of the goods and services of corporate clients; sponsorship search; computerised file management for commercial purposes (not for social networks); relocation services for businesses; invoicing in Class 35, scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware for commercial purposes (not for social networks); graphic design; handwriting analysis [graphology]; energy auditing; mechanical research; physics [research]; engineering services; quality control; clinical trials; consultancy in the design and development of computer hardware; consultancy in the field of energy-saving; scientific research; industrial design; research of new products for commercial purposes (not for social networks); technical research; laboratory (scientific -) services; digitisation of documents (scanning and indexing) in Class 42 and professional background investigations (not for social networks) in Class 45.

The fact that the signs are similar to a certain degree and the fact that the earlier marks enjoy a reputation for social networking and related services in Classes 38, 41, 42 and 45 are not sufficient to automatically conclude that the relevant public is likely to establish a mental association between the signs concerned in relation to the remaining contested goods and services listed above.

In particular, unlike the contested computer software/programs in Class 9 and design and development of computer software in Class 42, the contested laptop computers in Class 9 and design and development of computer hardware in Class 42 are concerned with hardware/the physical parts of a computer system. It is difficult to imagine that consumers will make a link between these contested goods and services and the earlier reputed social networking services solely because they need computer hardware to use these services.

Furthermore, as opposed to the advertising services for which the likelihood of a link has been established as explained above, the remaining services in Class 35 that fall under the general category of advertising (for example advertising columns preparation (not for social networks); production of advertising films for commercial purposes (not for social networks); radio commercials; outdoor advertising (not for social networks); advertising by mail order) are so specific that it is considered that there is no obvious link with the reputed services of the earlier marks. These contested services are rendered by specialised companies which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services and create a personalised strategy regarding the advertising of those goods and services. They entail a variety of particular services which are unlikely to call to mind the earlier reputed social networking services.

The remaining contested goods and services in Classes 9, 35, 42 and 45 are even farther removed from the earlier reputed services and are concerned with/rendered in such distinct areas (various signalling, measuring or testing devices, services to support other businesses, specialised analysis and research services in the field of industry, detective services) that the later mark is unlikely to bring the earlier marks to the mind of the relevant public, even if the relevant section of the public for the goods and/or services covered by the conflicting marks is the same or overlaps to some extent.

Furthermore, the opponent was unable to provide any good reason or convincing arguments why the relevant public targeted by the contested sign would make a connection with the earlier marks in relation to the remaining contested goods and services in Classes 9, 35, 42 and 45.

In its submissions of 01/04/2015, the opponent claims that ‘the services are identical and highly similar’, that ‘there is a clear link’ between the contested application and the earlier reputed marks and that ‘such link ‘can be easily established’. There are however no references to the remaining contested goods and services in Classes 9, 35, 42 and 45. The opponent’s arguments are rather general statements about the existence of a link, which however fail to explain, how the use of the contested sign in relation to the remaining contested goods and services in these classes would bring to mind the earlier marks. As detailed above, the Opposition Division does not find it ‘clear’ that the relevant public will make a mental connection between the signs in dispute in relation to the remaining contested goods and services in Classes 9, 35, 42 and 45 given that the latter’s specialised nature which makes them too far removed from the reputed earlier services for a link to be established.

Bearing this in mind, taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that in relation to the remaining contested goods and services in Classes 9, 35, 42 and 45 it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as based on this article and directed at these goods and services.

For the sake of completeness it is also noted that in any case in relation to these contested goods and services, the opponent also failed to file any evidence or at least put forward a coherent line of arguments, showing what the claimed unfair advantage and/or detriment to distinctiveness would consist of and how it would occur, which could lead to the prima facie conclusion that such events are indeed likely in the ordinary course of events in relation to the remaining goods and services concerned. Indeed, in its submissions the opponent limits itself to very general statements without any particular argumentation or explanation related to the goods and services at issue. In relation to the claim of unfair advantage, it merely states that ‘the use of a sign starting with ‘FACE’ for identical or virtually identical services will, without a doubt, obtain an unfair benefit of the distinctiveness and reputation of the earlier marks.’ The opponent further argues that ‘the contested mark exploits the reputation, image and prestige acquired by the earlier mark leading to a situation of commercial parasitism’ and refers to a number of nine previous decisions of the Opposition Division where ‘a similar line of arguments has been accepted’. In relation to the claim of detriment to the distinctiveness of the earlier marks, the opponent quotes several paragraphs from the Intel (27/11/2008, C-252/07, Intel, EU:C:2008:655) and Botumax (28/10/2008, T-131/09, Botumax, EU:T:2010:458) judgements and puts forward very general statements. It essentially states that the proliferation of marks (FACE+XXXX) starting with the distinctive element FACE will dilute the distinctive character of the earlier marks, because the more exclusive the sign, the greater evocation of guarantee it produces among consumers, especially when the services it covers, as in the present case, are identical, similar or complementary. It further mentions that there is a potential future risk of loss of economic value of the reputed marks and said economic value may be impaired, in the medium or long term, as a consequence of the use of the contested mark.

In this regard it is recalled that according to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Furthermore, Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause 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 Opposition Division does not find it ‘without a doubt’ that the use of the contested sign for the remaining contested goods and services in Classes 9, 35, 42 and 45 would be likely to bring to mind the earlier marks and take unfair advantage of their distinctive character or repute and/or be detrimental to their distinctiveness. There seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above. Moreover, the opponent’s arguments do not contain any specific indications of the existence of a particular image as regards the earlier marks which could be transferred to the remaining contested goods and services, but are simply general statements that the association with the positive qualities of the earlier marks […] gives rise to unfair benefiting. Even if the earlier marks may very well reflect a positive message which influences the choice of consumers, the fact remains that the opponent failed to explain how such an image in relation to social networking might be transferred to the remaining contested goods and services in question. Therefore, the Opposition Division considers that in any case the arguments of the opponent could have not been deemed sufficient to establish that there is a non-hypothetical risk of unfair advantage and/or detriment to distinctiveness when the contested sign is used in relation to these remaining contested goods and services. As regards the previous decisions of the Opposition Division referred to by the opposing party (as listed on page 40 of its submissions of 01/04/2015), it is pointed out that those cases do not seem to support the opponent’s arguments in relation to the remaining contested goods and services at hand. In fact, in those cases the Opposition Division rejected the oppositions based on ‘Facebook’ marks insofar as based on the grounds of Article 8(5) EUTMR and directed at goods and/or services identical or similar to the remaining contested goods and services in Classes 9, 35, 42 and 45.

The examination of the opposition under Article 8(5) EUTMR will therefore continue only in relation to those goods and services in Classes Classes 9, 35, 38 and 42 for which it has been determined above that consumers will be likely to establish a mental ‘link’ between the signs.

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 claims in essence the following:

There is a potential taking of unfair advantage of the distinctiveness and reputation of the earlier trade marks (free-riding). The use of a sign starting with ‘FACE’ for identical or virtually identical services will obtain an unfair benefit of the distinctiveness and reputation of the earlier marks. The relevant public may confuse the origin of the services designated by the marks in conflict or even without confusion as to their origin, may experience an attraction towards the contested EUTM by the mere fact that they share the distinctive element FACE with the well-known earlier marks FACEBOOK.

The opponent also argues that the use of the contested mark would be detrimental to the distinctive character of the earlier trade marks (dilution). The proliferation of marks starting with the distinctive element ‘FACE’ followed by an additional term will dilute the distinctive character of the earlier marks. Consumers of the goods/services for which the earlier marks are protected and reputed will be less inclined to associate them immediately with the undertaking that has built up the trade marks ‘reputation, that is, Facebook.

As seen above, the earlier trade marks were found to have a reputation for social networking and related services to the extent that these are covered by the registered services in Classes 38, 41, 42 and 45.

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 essentially bases its claim on the following:

‘FACEBOOK’ is a social network service/online community and website, launched in February 2004, which as it is widely known, has acquired a huge reputation for social networking services and for many goods and services related with the same;
The applicant benefits from the attractiveness of the earlier rights by using to designate its services a sign starting with ‘FACE’ (and ending in ‘TUBE’), the prefix ‘FACE’ part of ‘FACEBOOK’ is already widely known in the market and enjoys attractive powers and a very high advertising value. Therefore, the contested mark exploits the reputation, image and prestige acquired by the earlier mark leading to a situation of commercial parasitism;
The relevant public may, even without confusing the origin of the services designated by the marks in conflict, experience an attraction towards the contested EUTM by the mere fact they share the distinctive element ‘FACE’ with the well-known earlier marks ‘FACEBOOK’;
The mere association of the contested mark with the positive qualities of the earlier marks gives rise to an evident exploitation and unfair benefiting by the trade mark application;
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 the FACEBOOK marks and would exploit under the same circumstances the marketing effort of a third party, Google, owner of the YouTube marks.

The opponent also refers to nine previous decisions of the Office accepting the above line of arguments, namely the decisions listed above under section a) ‘Reputation of the earlier trade marks’, exhibit B2, point 2.1, namely those under 2.1.1, 2.1.2, 2.1.3, 2.1.4, 2.1.5, 2.1.8, 2.1.9, 2.1.10 and 2.1.11.

In relation to the opponent’s submissions, it is noted from the outset that some of its arguments concern the EUTM application ‘FACETUBE’ and as such are not relevant for the present proceedings which are related to a different trade mark (i.e. ‘FACECALL’).

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, taking into account the nature of the goods and services applied for in Classes 9, 35, 38 and 42, which consist both of goods and services addressed to the general public (such as mouse mats in Class 9, cellular telephone communications in Class 38) and of goods and services that target a more specialised public (for instance computer software for commercial purposes (not for social networks) in Class 9 or advertising (not for social networks) in Class 35), the relevant public is the average European consumer.

First, it must be noted that all the contested goods and services in Classes 9, 35, 38 and 42 are connected to the earlier reputed services to a greater or lesser extent, as shown in detail in section c) above.

Second, the Opposition Division recalls that the reputation enjoyed by ‘FACEBOOK’/‘’ in the relevant territory in connection with social networking and related services is enormous. Revolutionizing the world of social media and changing the way people interact socially, ‘FACEBOOK’ has made the world a global community. As shown by the evidence, the reputed social networking platform ‘defined the social media space’, ‘turned friend into a verb’ and ‘continues to live up to its mission to give people the power to share and make the world more open and connected’.

Bearing in mind the foregoing, it is considered that, in view of the special connections between the earlier reputed services and the above mentioned contested goods and services, a substantial part of consumers may decide to turn to the applicant’s goods and services in Classes 9, 35, 38 and 42 in the belief that the contested sign is somehow linked to the opponent’s reputed marks, thus misappropriating their attractive powers and advertising value. This may stimulate the sales of the applicant’s goods and services to an extent which may be disproportionately high in comparison with the size of its own promotional investment and thus lead to the unacceptable situation where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up good will for its marks.

Therefore, the Opposition Division considers that, in view of the substantial exposure of the relevant consumers to the opponent’s reputed earlier marks, in relation to the services for which a reputation has been found and taking into account the similarity of the marks and the inherent degree of distinctiveness of the earlier marks, there exists a high probability that the use without due cause of the contested trade mark in respect of all the above mentioned contested goods and services may lead to free-riding, that is to say, the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade marks.

Other forms of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctiveness of the earlier trade marks.

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 take three different forms. For an opposition to be well founded in this respect, it is sufficient if only one of these forms is found to occur. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark is likely to take unfair advantage of the distinctive character or repute of the earlier trade marks. It follows that there is no need to examine whether other forms also apply.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods and services:

The examination of the present opposition will continue for the remaining contested goods and services in Classes 9, 35, 42 and 45 on the grounds of Article 8(1)(b) EUTMR, also invoked by the opponent.

SECTION C: LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Earlier Mark 1 and Earlier Mark 2.

The goods and services

The goods and services on which the opposition is based have already been enumerated above under the grounds of Article 8(5) EUTMR, section a). Reference is made to those lists, which are equally valid for Article 8(1)(b) EUTMR.

The contested goods and services are the following:

Class 45: Professional background investigations (not for social networks).

Some of the contested services are identical to services on which the opposition is based. That is the case for example of the contested advertising by mail order in Class 35 which is covered by the broad category of marketing, advertising and promotion services in the same class of Earlier Marks 1 and 2. Furthermore, although none of the contested goods is identical to goods on which the opposition is based, it is clear that some of the contested goods are similar to the opponent’s goods, for example the contested laptop computers in Class 9 and computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management in the same class of Earlier Marks 1 and 2, since they are complementary, originate from the same producers and have the same distribution channels and targeted public. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the contested goods and services listed above with the goods and services of Earlier Marks 1 and 2. The examination of the opposition will proceed as if all the contested goods were similar to those of the earlier marks and respectively as if all the contested services were identical to those of the earlier marks.

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 relevant goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

The signs

The signs have already been compared above under the grounds of Article 8(5) EUTMR (see section b)). Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

Distinctiveness of the earlier marks

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 Marks 1 and 2 have been extensively used and enjoy an enhanced scope of protection in the European Union in connection with all the goods and services for which they are registered. This claim has already been assessed under the ground of Article 8(5) EUTMR and reputation has been established only in relation to social networking and related services in Classes 38, 41, 42 and 45 (see section a) above).

As regards the remaining goods and services for which the Earlier Marks 1 and 2 are registered, no enhanced distinctiveness or reputation has been established. Consequently, in relation to the remaining goods and services the assessment of the distinctiveness of the Earlier Marks 1 and 2 will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the remaining goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

Global assessment, other arguments and conclusion

The examination of the opposition has proceeded on the assumption that the remaining contested goods in Class 9 are similar to the earlier goods and that the remaining contested services in Classes 35, 42 and 45 are identical to the earlier services. This is the most favourable scenario in which the opponent’s case can be assessed (which is however, without prejudice to the applicant, as it will be shown herein below).

The similarities between the signs are confined to the string of letters ‘FACE-’, which, in the opinion of the Opposition Division and contrary to what the opponent claims, is not sufficient to lead to a finding of likelihood of confusion. As shown in detail in the comparison of signs section above, these coincidences have only been of such a nature as to lead to an overall degree of visual and aural similarity which varies from low to at most below average.

Admittedly, the coinciding part is located at the beginning of the earlier marks and of the contested sign. However, as already explained, the comparison of the signs has to be based on the overall impression they convey. Consequently, the fact that the signs under comparison have completely different endings, ‘-BOOK’ in the earlier marks versus ‘-CALL’ in the contested sign, has an impact on their overall appearance and is of such a nature as to outweigh the coincidences, enabling the public to safely distinguish, visually and aurally, between them.

That is even more so the case for the English-speaking part of the relevant public for which the earlier marks and the contested sign will convey a distinct semantic content, which will further counteract the visual and aural similarities owing to the sequence of letters ‘FACE’-.

As a persuasive argument in supporting its claim of a likelihood of confusion, the opponent referred to the reputation and enhanced distinctive character of its earlier marks. In this regard, it must be remembered that the reputation of the earlier marks has been established only in relation to social networking and related services in Classes 38, 41, 42 and 45 and that it was not sufficient to uphold the opposition for the remaining contested goods and services under the ground of Article 8(5) EUTMR, although the ambit of this article is greater than that of Article 8(1)(b) EUTMR.

Additionally, as already specified above in the analysis of the grounds of Article 8(5) EUTMR, the degree of similarity of the signs required under this article differs from the one required under Article 8(1)(b) EUTMR. In other words, the fact that the circumstances of the present case have led to the conclusion that consumers are likely to establish a mental ‘link’ between the signs in dispute does not automatically lead to a finding of a likelihood of confusion under Article 8(1)(b) EUMTR.

Against this background and taking into consideration all the facts set out above, the Opposition Division finds that the differences between the marks are clearly perceptible and safely counteract the similarities between the signs. Consequently, the relevant public is not likely to believe that the earlier marks and the contested sign, even if applied on similar goods and respectively on identical services, originate from the same or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public, within the meaning of Article 8(1)(b) EUTMR. Therefore, the opposition must be rejected in so far as it is based on this ground and directed against the remaining contested goods and services in Classes 9, 35, 42 and 45.

The opponent also based the opposition on the Earlier Marks 3, 4, 5 and 6 (as these have been listed in the ‘Reasons’ section above).

Since these other earlier marks are identical to the Earlier Mark 1 (i.e. the word mark ‘FACEBOOK’) which has been compared, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Solveiga BIEZA

Oana-Alina STURZA

Denitza STOYANOVA-VALCHANOVA

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.

FACECALL | Decision 2332263 - Facebook, Inc. v. BINETIX LLC

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