lovebook | Decision 1880056 - Facebook, Inc. v. Brand IP Licensing Limited

Date Published: Sep 24, 2017

OPPOSITION No B 1 880 056

Facebook, Inc., 1601 Willow Road, Menlo Park, California 94025, United States of America (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)

a g a i n s ts

Brand IP Licensing Limited, Trident Chambers, P.O. Box 146, Road Town (Tortola), British Virgin Islands (applicant), represented by Shepherd and Wedderburn LLP, 1 Exchange Crescent, Conference Square, Edinburgh EH3 8UL, United Kingdom (professional representative).

On 24/08/2017 the Opposition Division takes the following

DECISION:

1. Opposition No B 1 880 056 is partially upheld, namely for the following contested services:

Class 35: Advertising.

Class 38: Telecommunications.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software.

Class 45: Personal and social services rendered by others to meet the needs of individuals.

2. European Union trade mark application No 9 926 577 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 9 926 577 for the word mark ‘lovebook’, namely all the services applied for in Classes 35, 38, 42 and 45. The opposition is based on the following seven earlier marks:

European Union trade mark registration No 2 483 857 for the word mark ‘FACEBOOK’ registered for goods and services in Classes 16, 35, 38 and 41 (‘Earlier Mark 1’);
European Union trade mark registration No 4 535 381 for the word mark ‘FACEBOOK’ registered for services in Classes 35 and 38 (‘Earlier Mark 2’);
European Union trade mark registration No 6 455 687 for the word mark ‘FACEBOOK’ registered for goods and services in Classes 9, 39 and 42 (Earlier Mark 3);
European Union trade mark registration No 5 585 518 for the word mark ‘FACEBOOK’ registered for services in Classes 35, 41, 42 and 45 (‘Earlier Mark 4’);
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 (‘Earlier Mark 5’);
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 (‘Earlier Mark 6)’ and
European Union trade mark registration No 9 507 161 for the word mark ‘BOOK’ registered for services in Classes 38, 42 and 45.

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

On 30/06/2014 the Opposition Division rendered a decision which resulted in the rejection of the contested trade mark application in its entirety on the grounds that there was a likelihood of confusion on the part of the English-speaking public with Earlier Marks 1 and 4.

The decision was appealed and the Board of Appeal decided in case R 2028/2014-2 on 30/09/2015. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that there is no likelihood of confusion under Article 8(1)(b) between the mark applied for and the Earlier Marks 1 and 4 because ‘based on an overall assessment of the visual, aural and conceptual similarities between the marks and notwithstanding the principles of interdependence and imperfect recollection, the marks at issue are not similar overall’ (see § 46 and § 48). The Board essentially showed that ‘it is highly unlikely that the relevant consumer would confuse the marks or believe the services applied for come from the same undertaking or, as the case may be, from undertakings that are economically linked, merely on the basis of the mentioned elements of similarity set out above. The clearly perceptible differences between the signs would not be overlooked by the relevant consumer, even if they were used for identical services’ (see § 46).

SECTION A: 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 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 28/04/2011. Therefore, the opponent was required to prove that the Earlier Marks 1 to 7 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 16: Printed matter, newspapers, books, periodicals, journals, printed publications, magazines, photographs.

Class 35: Publication of advertising texts and dissemination of advertisements; rental of advertising space, sales promotion (for others), arranging newspaper subscriptions (for others), marketing studies; opinion polling; statistical information.

Class 38: Telecommunications; telecommunications via Internet networks, communications by computer terminals.

Class 41: Publishing services; publication of books, magazines and texts, organisation of competitions and cultural events or entertainment, cultural information and information relating to entertainment.

Earlier Mark 2

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 3

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network.

Class 39: Transport; packaging and storage of goods; travel arrangement; online travel arrangements and providing online information therefore.

Class 42: Application service provider (ASP) featuring software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network.

Earlier Mark 4

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 5

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 6

Earlier Mark 7

Class 38: Providing online forums for communication on topics of general interest; providing online chat rooms and electronic bulletin boards; all aforementioned services not for an internet portal or a part thereof, which serves mainly to offer books for sale or download, to offer marketing services for authors, publishers and booksellers; to display the content of books, to publish reviews of books or to initiate discussions of the users of the portal about books or to offer similar services relating to internet-portals and social media networks in connection with books.

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; 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; providing temporary use of non-downloadable software applications for social networking and creating a virtual community; all aforementioned services not for an internet portal or a part thereof, which serves mainly to offer books for sale or download, to offer marketing services for authors, publishers and booksellers; to display the content of books, to publish reviews of books or to initiate discussions of the users of the portal about books or to offer similar services relating to internet-portals and social media networks in connection with books.

Class 45: Social introduction, networking, and dating services; all aforementioned services not for an internet portal or a part thereof, which serves mainly to offer books for sale or download, to offer marketing services for authors, publishers and booksellers; to display the content of books, to publish reviews of books or to initiate discussions of the users of the portal about books or to offer similar services relating to internet-portals and social media networks in connection with books.

The opposition is directed against the following services:

Class 35: Advertising; business management; business administration; office functions.

Class 38: Telecommunications.

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.

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

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 24/11/2011, the opponent filed evidence in order to demonstrate the reputation of the earlier marks.

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 evidence’ and on the documents themselves.

The evidence comprises the following:

EXHIBIT 1

Certifications issued by the Chambers of Commerce in Valencia, Barcelona, Madrid, Mallorca, Seville, Bilbao and Alicante 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 2

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

2.1 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).

2.2 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>.

2.3 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 The decision of the Spanish Patent and Trade Mark Office (‘SPTO’) dated 08/02/2011, refusing the registration of the trade mark application No 2 943 489 for the mark ‘FACEBOOK’ for goods and services in Classes 16, 25 and 38 (document in Spanish and its English translation).

2.5 The decision of the SPTO Board of Appeal published on 17/12/2010, refusing registration of trade mark application No 2 908 166 ‘CADIZBOOK’ in Class 38 (document in Spanish and its English translation). The evidence states, inter alia:

... 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.

2.6 The decision of the SPTO Board of Appeal published on 30/11/2010, refusing registration of trade mark application No 2 909 907 ‘CADIZBOOK.ES’ in Class 38, with similar reasons to those stated in the previous point (document in Spanish and its English translation).

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

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

2.9 The decision of the SPTO dated 18/10/2011, refusing the registration of the trade mark application No 2 974 434 ‘COMUNICACION SOCIAL MEDIA :) G IN YOU TUBE W T F’ for services in Class 41 due to a risk of confusion (document in Spanish and its English translation).

EXHIBIT 3

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

EXHIBIT 4

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, 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, that Facebook is the most popular social networking site in several English-speaking countries including the United Kingdom and most of its revenue comes from advertising, that ‘by 2005 the use of Facebook has already become so ubiquitous that the generic verb ‘facebooking’ had come into use to describe the process of browsing others’ profiles or updating one’s own’, that in April 2011 Facebook launched a new portal for marketers and creative agencies to help them develop brand promotions on Facebook and that, in May 2011, 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.

EXHIBIT 5

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’ and stating, inter alia, that Facebook has 40 billion pages read every month and it is the 6th most visited site in the world, ahead of eBay and Google.

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.

EXHIBIT 6

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 7

Results of a search in Alexa (the web information company) for the website facebook.com, dated March 2011. 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.

EXHIBIT 8

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 9

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.

Additionally, on 21/12/2011 (and within its time limit to substantiate the opposition), the opponent further submitted a copy of 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 2.5 hereinabove.

On 16/08/2013, the opponent filed as EXHIBIT 10 copies of several decisions adopted in similar cases by EUIPO as follows:

10.1 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.

10.2 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.

10.3 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.

10.4 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.

On 30/09/2013 and respectively 15/10/2013, the opponent further submitted, as exhibits 10.5 and 10.6, 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) and 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.

On 28/01/2014, the opponent filed three more decisions taken by EUIPO’s Opposition Division, as follows:

10.7 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.

10.8 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.

10.9 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.

Finally, on 27/05/2014, the opponent submitted as exhibit 10.10 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 and as exhibit 10.11 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’.

Preliminary remark on the additional evidence filed on 16/08/2013, 30/09/2013, 15/10/2013, 20/01/2014 and 27/05/2014

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. Furthermore, it is noted that the additional evidence merely strengthens the evidence submitted initially on 24/11/2011 and 21/12/2011, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit. For the above reasons, and in the exercise of its discretion pursuant to Article 76(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 16/08/2013, 30/09/2013, 15/10/2013 and 20/01/2014.

As regards the additional evidence submitted on 27/05/2014 (i.e. exhibits 10.10 and 10.11), the Opposition Division does not deem necessary at this point of the assessment to reopen the proceedings and allow an extra round of observations so that the applicant has an opportunity to present its comments on these documents pursuant to Article 75 EUTMR. 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, it is considered that 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 27/05/2014 can remain open.

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 2, 3, 4, 5 and 6 ‘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 and more than 600 million active users in January 2011), 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 in the first place for the category Social Networks in April 2010 – see above Exhibit 9), 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 the success of ‘FACEBOOK’/‘’, all unequivocally show that the Earlier Marks 2, 3, 4, 5 and 6 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 2, 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 5 and 6, 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 4, 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 5 and 6, application service provider (ASP) featuring software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network in Class 42 covered by Earlier Mark 3, computer services in the nature of customized web pages featuring user-defined information, personal profiles and information in Class 42 covered by Earlier Mark 4, 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 5 and 6, introduction and social networking services in Class 45 covered by Earlier Mark 4 and social introduction, networking services in Class 45 covered by Earlier Marks 5 and 6, and more specifically in connection with social networking and related services covered by the opponent’s Earlier Marks 2, 3, 4, 5 and 6 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 2, 3, 4, 5 and 6 have a reputation for all the goods and/or 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 1 and 7 have a reputation for any of the goods and/or services on which the opposition is based and for which reputation has been claimed, namely goods and/or services in Classes 16, 35, 38, 41, 42 and 45.

With particular reference to Earlier Mark 7, it is noted that, in fact, the documents submitted refer to the earlier marks ‘FACEBOOK’/‘’ and simple references in the press to the word ‘book’ (some press articles filed as Exhibit 6 – Facebook war on start-ups with ‘book’ in its name, Fight is one for the ‘books’) cannot in any case amount to evidence of reputation for the mark ‘BOOK’. Indeed, there are no references in the materials submitted to Earlier Mark 7, to the extent of its use in relation to all or part of the above services, to the market share, to the extent to which it was promoted or to the degree of recognition by the relevant public for that matter.

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 1 and 7.

The examination of the present opposition will therefore continue on the grounds of Article 8(5) EUTMR in relation to Earlier Marks 2, 3, 4, 5 and 6.

The signs

FACEBOOK

Earlier Mark 2, 3, 4 and 6

Magnify

Earlier Mark 5

lovebook

Earlier trade marks

Contested sign

The relevant territory is the European Union.

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

Earlier Marks 2, 3, 4 and 6 are word marks formed of the word ‘FACEBOOK’. Earlier Mark 5 is a figurative mark in colour depicting the word ‘facebook’ in white bold lower-case letters against a blue rectangle.

The element ‘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 applicant went to some lengths to argue that the element ‘-BOOK’ has a weak distinctiveness given that there are many trade marks that include such word for services in Classes 35, 38, 42 and 45. In support of its argument the applicant refers to several trade mark registrations in the European Union and some Member States (for instance the United Kingdom, Spain, Italy, the Czech Republic, etc.). It also files as Annex III ‘Marks BOOK in the market’, several internet printouts containing various references to the word ‘book’ alone (for example ‘this website contains a database of antiquarian books’) or to words that include this element (such as ‘audio-book’, ‘the Pan-Surgical Logbook has been developed to support surgeons of all grades and all Specialists in the United Kingdom and Ireland’, ‘limited edition Jolibook by Vye’, ‘Kasebook’ a rapid peer-to-peer advice website to produce better support and decisions for GPs).

In addition, the applicant also argues that ‘the word e-book’ is commonly used in the market to designate services in Classes 38 and 42, related to the edition and publication of digital books’, that ‘consumers will be used to the meaning of the word ‘book’ for digital publications as well’ and that ‘the opponent should not be allowed to monopolised a term that has become common worldwide to designate services in Classes 38 and 42’.

First, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘book’. The same applies to the internet extracts filed as Annex III since none of these documents actually shows the use of the word ‘book’ alone or in combination as a reference to the relevant services. Therefore, this argument also fails.

Second, as regards the applicant’s claims that ‘book’ is common worldwide for the services in Classes 38 and 42, it is noted from the outset that the applicant limited itself to the above referred line of reasoning, without submitting any evidence that could serve to demonstrate the purported claims. Moreover, if ‘book’ will be associated with a meaning by part of the relevant public (as explained above), it is the opinion of the Opposition Division that in the present case said consumers will not readily make a connection between this word and certain objective characteristics of the earlier reputed services, since the word concerned does not provide information about the services at hand from the perspective of that part of the public in the territory.

Therefore and in the absence of any relevant and conclusive evidence from the applicant to support a finding that the distinctiveness of ‘BOOK’ in connection with the relevant social networking and related services has been weakened, the applicant’s claims must be set aside.

The blue rectangle of Earlier Mark 5 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 Earlier Mark 5 it is the verbal element ‘facebook’ that is more distinctive than the figurative element, whereas the remaining four earlier marks have no element that could be considered clearly more distinctive than other elements.

The contested sign is also a word mark, composed of ‘lovebook’. This word does not exist as such either, in any of the languages spoken in the relevant territory. It is however settled case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). It follows from the foregoing that the element ‘love’ will be understood throughout the relevant territory as referring to, among others, a strong feeling of affection for someone on account of its being a very basic English word. The English-speaking public will also recognise a semantic content in the element ‘book’ and understand it with the same meaning as explained above for the earlier marks. For the sake of completeness it is also noted that ‘lovebook’ does not form a conceptual unit from the perspective of the English-speaking part of public, the latter seeing this word as an unusual combination of two English meaningful words.

The distinctiveness of ‘lovebook’ of the contested sign (or of its elements if such are singled out) is also deemed as average.

Finally, it is noted that earlier mark (5) has no element that could be considered more dominant (visually eye-catching) than other elements. The same applies to the remaining earlier marks 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 coincide in the sequence of letters ‘-BOOK’. Furthermore, they also share their fourth letter ‘-E-’. On the other hand, the signs differ in: (i) their remaining letters, being ‘FAC-’ in the earlier marks and ‘lov-’ in the contested sign and (ii) the way the common letters are depicted in Earlier Mark 5 and its overall stylisation, as explained above. The applicant submits that the marks are dissimilar on account of their completely different beginnings (‘face’ and ‘love’) since the Court ‘has stated that the initial part of the sign is usually the most important’ and ‘consumers generally pay greater attention to the beginning’ of marks. Such argument cannot succeed. While it is true that the initial parts of the signs are different, it must be recalled that the comparison of signs must be based on the overall impression they create. In the present case, it is considered that the three different letters, even if placed at the beginning of the signs, are not of such a nature as to outweigh the coincidences arising from the remaining five common letters to the extent where the overall impression of the signs is dissimilar. Bearing in mind the foregoing, it is concluded that overall, there is a low degree of visual similarity between the signs.

Aurally irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘e/b/o/o/k’, 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, ‘f/a/c’ in the earlier marks versus ‘l/o/v’ in the contested sign. Overall, the marks are similar to a low degree.

Conceptually, there is a link for those consumers grasping the meaning of the word ‘book’ in the earlier marks and the contested sign, namely the English-speaking part of the relevant public and to that extent the degree of conceptual similarity is deemed as average. For the remaining part of the public, the signs are not conceptually similar, since in any case the contested sign will be associated with the concept conveyed by ‘love’ (as specified above when describing the contested sign).

As the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

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, as explained in detail in section b) above, the signs have been found to be similar to the extent that they have a similar structure consisting of a word (‘face-‘/’love-’), ending in the same letter ‘e’ + the same sequence of letters ‘book’ placed at their end.

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 services, the contested application seeks protection for services in Classes 35, 38, 42 and 45 (see listing under section a) above). Admittedly some of the 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 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 advertising in Class 35, telecommunications in Class 38, design and development of computer software in Class 42 and personal and social services rendered by others to meet the needs of individuals in Class 45 for the reasons set out below:

Contested services in Class 35

The contested advertising includes, as a broad category, 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.
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 4 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 the contested advertising 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.

Contested services in Class 38

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.

Contested services in Class 42

The opponent’s reputed social network platform 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.
These services cover as a broad category, inter alia, the creation and maintenance for others of websites as well as related information technology services, for instance 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, precisely the services for which the earlier marks enjoy a reputation.
Given the above, it would be difficult to deny the existence of a certain connection between the contested design and development of computer software and the earlier reputed services.

Contested services in Class 45

Finally, the contested personal and social services rendered by others to meet the needs of individuals are clearly linked to the earlier reputed services, since they include, as a general category, precisely online social networking services for which the opponent’s earlier marks enjoy a reputation.

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 services concerned, as explained, the Opposition Division concludes that when encountering the contested mark in relation to the above mentioned 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 services are concerned, namely business management; business administration; office functions in Class 35, scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware in Class 42 and legal services; security services for the protection of property and individuals 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 services listed above.

In particular, unlike the contested design and development of computer software in Class 42, the contested design and development of computer hardware in the same class 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 services and the earlier reputed social networking services solely because they need computer hardware to use these services.

The remaining contested services in Class 35, 42 and 45 are even farther removed from the earlier reputed services and are concerned with/rendered in such distinct areas (services to support other businesses, specialised analysis and research services in the field of industry, legal and security 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 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 services in Classes 35, 42 and 45.

In its submissions of 24/11/2011, the opponent claims that ‘the services of the marks in conflict are identical’ and ‘the signs of the marks in conflict are similar, so relevant consumers will establish a link between said signs’. There are however no references to the remaining contested services in Classes 35, 42 and 45. The opponent’s very general statement about the existence of a link fails to explain how the use of the contested sign in relation to the remaining contested services in these classes would bring to mind the earlier marks. As detailed above, the Opposition Division does not consider that the relevant public will make a mental connection between the signs in dispute in relation to the remaining contested services in Classes 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 services in Classes 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 services.

For the sake of completeness it is also noted that in any case in relation to these contested 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 repute and 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 services concerned. Indeed, in its submissions the opponent limits itself to very general statements without any particular argumentation or explanation related to the services at issue. In relation to the claim of unfair advantage, it merely states that ‘the use of the contested sign takes unfair advantage of the distinctive or reputed character of the FACEBOOK trade mark, even though there may not be a likelihood of confusion as to the commercial origin of the services in question, the mere association of the contested mark with the positive qualities of the earlier mark give rise to an evident exploitation and unfair benefiting by the trade mark application’. As regards the claim of detriment to the distinctiveness of the earlier marks, the opponent states that ‘it is evident that the proliferation of marks which contain ‘BOOK’ as a suffix for telecommunication services including the services of a social network may constitute for relevant consumers a dilution of the distinctive character of the earlier marks’. Finally, in relation to the claim of detriment to the reputation of the earlier marks, the opponent shows that ‘the fact that the contested mark contains the commonly known English-term LOVE implies an evident detriment to the reputation of the earlier mark, especially if we note that the services belong to the same commercial sector’ and quotes a previous decision of the Office of 18/10/2012 ruling on opposition no B 1 727 620 and refusing the registration of EUTM application No 9 104 092 ‘’ for services in Classes 35, 38 and 41.

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 ‘evident’ that the use of the contested sign for the remaining contested services in Classes 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 or repute. 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 services in question. As regards the decision of EUIPO’s Opposition Division ruling on opposition No B 1 727 620 invoked by the opponent in support of its claims of tarnishment, it must be noted that the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. However, the previous case relied upon by the opponent is not comparable to the present proceedings, because the contested trade mark ‘’ in opposition No B 1 727 620 could indeed evoke in the minds of the relevant public the concept of something that is sex-related (given the presence of the verbal element ‘sxy’ and the representation of red lips), whereas the contested application at hand does not evoke this concept. Indeed, the contested application consists of a combination of the English words ‘love’ and ‘book’. First, it has to be noted that the word ‘love’ has several meanings in English, being primarily associated with an intense feeling of deep affection. Whilst it is true that this element also means, in English, a deep romantic or sexual attachment to someone, there are no indications to suggest that this automatically entails that the contested sign has ‘a clear sexual connotation’, as the opponent suggests.

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 and/or repute when the contested sign is used in relation to these remaining contested services.

As regards the previous decisions of the Opposition Division referred to by the opposing party it is pointed out that those cases do not seem to support the opponent’s arguments in relation to the remaining contested 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 services identical or similar to the remaining contested services in Classes 35, 42 and 45.

The examination of the opposition under Article 8(5) EUTMR will therefore continue only in relation to those services in Classes 35, 38, 42 and 45 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 the following:

There is a potential taking of unfair advantage of the distinctiveness and reputation of the earlier trade marks (free-riding). The relevant consumer may, even without confusing the origin of the services designated by the marks in conflict, experience an attraction towards the applicant’s services because the sign contains the common distinctive element BOOK just like the well-known earlier marks FACEBOOK.

The use of the contested mark would also imply an evident detriment to the reputation of the earlier marks (tarnishing). The opponent argues that following the Office’s decision of 18/10/2011 ruling on opposition No B 1 727 620 against the application , the fact that the contested mark contains the commonly known English-term LOVE implies an evident detriment to the reputation of the earlier mark, especially if we note that the services belong to the same commercial sector.

Finally, the opponent argues that the use of the contested mark for the services applied for would be detrimental to the distinctive character of the earlier trade marks (dilution). The proliferation of marks which contain BOOK as a suffix for telecommunication services including the services of a social network may constitute a dilution of the distinctive character of the opposing marks, because the more exclusive the sign, ‘the greater evocation of guarantee it produces among consumers’.

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

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:

The earlier marks are highly reputed in the EU; the signs of the marks in conflict are similar so relevant consumers will establish a link.
The relevant public may, even without confusing the origin of the services designated by the marks in conflict, experience an attraction towards the applicant’s services because the sign contains the common distinctive element ‘BOOK’ just like the well-known earlier marks ‘FACEBOOK’.
The mere association of the contested mark with the positive qualities of the earlier mark gives rise to an evident exploitation and unfair benefiting by the trade mark application;
The concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is a clear exploitation and ‘free-riding on the coat-tail’ of a famous mark or an attempt to trade upon it reputation. This is precisely what occurs in the present case, that is, according to the specification of services, this mark will permit users to ‘engage in social networking’.

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 services applied for in Classes 35, 38, 42 and 45, which consist both of services addressed to the general public (such as social services in Class 45) and of services that target a more specialised public (for instance advertising in Class 35), the relevant public is the average European consumer.

First, it must be noted that all the contested services in Classes 35, 38, 42 and 45 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.

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 services, a substantial part of consumers may decide to turn to the applicant’s services in Classes 35, 38, 42 and 45 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 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 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 types of injury

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

Class 35: Advertising.

Class 38: Telecommunications.

Class 42: Design and development of computer software.

Class 45: Personal and social services rendered by others to meet the needs of individuals.

The opposition is not successful insofar as the remaining services are concerned.

SECTION B: 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 7 for the word mark ‘BOOK’.

B1: Earlier Mark 7 ‘BOOK’

The services

The services on which the opposition is based have already been listed above, under the grounds of Article 8(5) EUTMR (see section A, point a). Reference is made to that list, which is equally valid for Article 8(1)(b) EUTMR.

The contested services are the following:

Class 35: Business management; business administration; office functions.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware.

Class 45: Legal services; security services for the protection of property and individuals.

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

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

Contested services in Class 35

None of the contested services in this class shares points of contact with the opponent’s earlier services in Classes 38, 42 and 45.

The contested services for which protection is sought in Class 35 are aimed at supporting or helping other business do or improve their business. Business management refers to activities such as business research and appraisals, cost price analysis and organisation consultancy. These services are provided by companies specialised in this field (such as business consultants), which provide businesses with the necessary support to acquire, develop and expand market share or which gather information and make available to their customers the tools and expertise necessary to enable them to carry out their business. Business administration services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation. Furthermore, office functions cover services which are aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose. They mainly include activities that assist in the working of a commercial enterprise, such as activities typical to secretarial services (shorthand and typing), as well as support services (for instance rental of office machines and equipment).

Clearly all these contested services have a different nature, purpose and method of use from the opponent’s services in Classes 38, 42 and 45, which are telecommunication services that allow people to communicate with one another by remote means, computer services or social introduction, networking and dating services. They are not usually in competition or complementary to each other. Further, their commercial origin is also distinct. Therefore, they are found to be dissimilar.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto are at least similar to the opponent’s computer services in Class 42, as listed above. Indeed, these services can be provided by the same undertakings, can be distributed through the same channels of trade and be addressed to the same consumers.

The contested design and development of computer hardware present certain connections with the opponent’s 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; 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; all aforementioned services not for an internet portal or a part thereof, which serves mainly to offer books for sale or download, to offer marketing services for authors, publishers and booksellers; to display the content of books, to publish reviews of books or to initiate discussions of the users of the portal about books or to offer similar services relating to internet-portals and social media networks in connection with books in Class 42. Indeed, these services can originate with the same companies and are directed at the same consumers. Furthermore, they share the same distribution channels. They are, therefore, considered similar.

The above does not apply however to the remaining contested industrial analysis and research services which are too removed from the earlier services in Classes 38, 42 and 45. The contested services are provided by specialised companies which do not usually offer the earlier services. Furthermore, the purpose they serve (collecting information, undertaking research, analysis and reports in the industrial field) is different from that of the opponent’s services. The mere fact that for example the providers of the contested services could make use of some of the earlier services in order to make their services available is not a factor that could render them similar. The earlier telecommunication/computer services would have only an ancillary character in relation to the services at issue, as they are simple ‘working tools’ providing some technological support, but that does not render them complementary. They are not in competition and they do not share the same distribution channels or target the same consumers. They are, therefore, considered dissimilar to all the earlier services.

Contested services in Class 45

The same conclusion of dissimilarity must be reached when comparing the contested services for which protection is sought in this class (legal services; security services for the protection of property and individuals) with the services in Classes 38, 42 and 45 protected under the earlier mark.

The contested services are specialised legal and security services. They serve a different purpose than the earlier ones, which are, as already stated above, telecommunication services that allow people to communicate with one another by remote means, computer services or social introduction, networking and dating services. They are not usually provided by the same undertakings and are not in competition or complementary to each other. Even if, for instance, the providing of some of the contested services may entail the use of the internet or of certain computer services or may be conducted using telecommunication contact, this does not render these services similar to the opponent’s telecommunication services in Class 38 or computer services in Class 42, as the purpose of these services is, as already explained above, distinct and they do not share other points in common from the perspective of the similarity criteria mentioned above. Indeed, the services in Class 38 provide the means to communicate not the content of communication, while computer services in Class 42 are purely technical services that require a high level of expertise in the computer field. Hence, all these services are considered to be dissimilar.

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 services are directed at the public at large and at specialists, with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services.

The signs

BOOK

lovebook

Earlier trade mark

Contested sign

The relevant territory is the European Union.

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

The earlier mark is the word mark ‘BOOK’. The considerations stated above under Section A, point b) ‘Comparison of signs’ on the meaning of this element are equally valid and applicable for the purpose of the present comparison. The distinctiveness of ‘BOOK’ in relation to the relevant services must be deemed as average.

The Opposition Division has already assessed the meaning and distinctiveness of the contested sign above under the grounds of Article 8(5) EUTMR (see Section A, point b). Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

Given that the common element ‘BOOK’ is meaningful in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Visually, the signs coincide in ‘BOOK’ and differ in the first four letters ‘love-’ of the contested mark. It is established case-law that generally, the fact that a sign consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (see judgement of 04/05/2005, T-22/04, Westlife, EU:T:2005:160, § 40). Furthermore, when perceiving a verbal element, consumers will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Given that the earlier mark is entirely reproduced in the contested sign and bearing in mind that the latter will naturally be dissected by the relevant public into ‘love’ and ‘book’ (see Section A, point b) above), the signs are overall similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘b/o/o/k’, present identically in both signs and differs in the sound of the remaining letters ‘love’ of the contested mark, which have no counterparts in the earlier sign. Therefore and along similar lines of reasoning to what has been explained above, the signs are overall similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are therefore conceptually similar to an average degree to the extent of the concept behind the word ‘book’.

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

Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection in the European Union in connection with all the services for which it is registered. This claim has already been assessed under the grounds of Article 8(5) EUTMR and no enhanced distinctiveness or reputation has been established in relation to the services in Classes 38, 42 and 45.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the relevant services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The contested services are partly similar and partly dissimilar to the opponent’s services.

As explained in detail in section c) above, there is an average degree of visual, aural and conceptual similarity of the marks stemming from the shared component ‘BOOK’.

Notwithstanding that ‘book’ is reproduced as the last four letters in the contested sign, it occupies an independent and distinctive role therein and the differentiating element ‘love’ is not sufficient to significantly influence the overall impression of the contested sign to the extent where a likelihood of confusion on the part of the public could be excluded.

Even assuming that the relevant public, including the part showing a higher level of attention may distinguish the signs at issue, it could nevertheless be led to believe that the contested sign is merely a new variant of the earlier mark, meant to designate a new line of services rendered by the same or, as the case may be, by economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Earlier Mark 7. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services in Class 42 found to be similar to those of the earlier trade mark.

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

The examination of the opposition will continue in relation to the remaining six Earlier Marks ‘FACEBOOK’/‘ Magnify ’.

B2: Earlier Marks 1 to 6 ‘FACEBOOK’/‘ Magnify ’

The goods and services

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

The remaining contested services are the following:

Class 35: Business management; business administration; office functions.

Class 42: Industrial analysis and research services.

Class 45: Legal services; security services for the protection of property and individuals.

Some of the contested services are identical to services on which the opposition is based (for example business management and business administration which are covered by both marks in Class 35). At this point of the assessment, the Opposition Division does not deem necessary to undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark, which is the most favourable light in which the opponent’s case can be examined.

Relevant public — degree of attention

In the present case, the relevant 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 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 mark

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

According to the opponent, the Earlier Mark 4 has been extensively used and enjoys an enhanced scope of protection in the European Union in connection with all the services for which it is 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 41, 42 and 45 (see Section A, point a) above).

As regards the remaining services for which the Earlier Mark 4 is registered, no enhanced distinctiveness or reputation has been established. Consequently, in relation to the remaining services the assessment of the distinctiveness of the Earlier Mark 4 will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the remaining services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The examination of the opposition has proceeded on the assumption 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 ‘-BOOK’, 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, these coincidences have only been of such a nature as to lead to an overall degree of low visual and aural similarity.

Indeed, the coinciding part is located at the end of the earlier mark and of the contested sign. In this context it must be remembered that, generally, consumers tend to focus on the first element of a sign when confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the fact that the signs under comparison have completely different beginnings 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.

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 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 mark and the contested sign, even if applied 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 services in Classes 35, 42 and 45.

The opponent also based the opposition on the Earlier Marks 1, 2, 3, 5 and 6 (as these have been listed in the ‘Reasons’ section above).

Since Earlier Marks 1, 2, 3 and 6 are identical to the Earlier Mark 4 (i.e. the word mark ‘FACEBOOK’) which has been compared, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services. The same conclusion must be reached as regards Earlier Mark 5 (i.e. the figurative mark Magnify ) which is not closer to the contested sign than Earlier Mark 4 already compared above.

COSTS

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

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

The Opposition Division

Janja FELC

Oana-Alina STURZA

Irina SOTIROVA

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.

lovebook | Decision 1880056 - Facebook, Inc. v. Brand IP Licensing Limited

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