In Case R 254/2013-2, the Second Board of Appeal of the OHIM decided an appeal against the first instance decisions taken by the Opposition Division in relation to CTM Application no. 9 695 396:

As the readers can surely guess, this was an opposition initiated by Facebook, Inc. (hereinafter ‘FACEBOOK’), which owns, amongst others, the following trade marks:

• Community Trade Mark No. 4 535 381 Facebook (Classes 35 and 38);
• Community Trade Mark No. 5 585 518 Facebook (Classes 35, 41, 42 and 45);
• Community Trade Mark No. 6 455 687 Facebook (Classes 9, 39 and 42);
• Community Trade Mark No. 9 151 168 (Classes 9, 35, 36, 38, 41, 42 and 45) of the figurative mark:

The Opposition

On 28 January 2011, the Applicant sought to register the parobook trade mark for the following list of goods and services

• 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;
• Class 35 – Advertising; Business management; Business administration; Office functions;
• Class 36 – Insurance; Financial transactions; Monetary transaction services; Real estate affairs;
• Class 38 – Telecommunications;
• Class 41 – Education; Providing of training; Providing amusement services; Sporting and cultural activities;
• 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 provided by others to meet the needs of individuals.

FACEBOOK opposed such application, invoking articles 8(1)(b) and 8(5) (unfair advantage, dilution and tarnishing) of the CTMR. On 3 December 2012, the Opposition division issued its ruling, in which it partially upheld the opposition.

The Opposing division starting by comparing the signs, stating that they were similar to the extent that they share the letters ‘book’, but differed in the sequence of letters ‘face’ v ‘paro’ (both visually and aurally). The stylization of the signs was found distinct in relation to the earlier word marks, but identical in relation to FACEBOOK’s figurative sign (but in this case, one of the signs was white over blue, while the other was white over red). In relation to its conceptual meaning, it was held that the signs would be similar ‘only for the part of the public that divides the earlier marks and the contested mark into two parts and grasps the concept of a ‘book’, namely the English-speaking part of the public’.

Following the comparison of the signs, the OD looked at the evidence filed by FACEBOOK, according to which it was demonstrated that the trade marks enjoyed a ‘high degree of reputation for the services where those are covered by them, in Class 38 (telecommunications–which include, for example, the services of chat rooms and forums for social networking), 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; photo sharing and video sharing services), Class 42 (which include hosting of an Internet platform for social networking services) and Class 45 (social introduction, networking and dating services), i.e. more specifically the services related to social networking covered by the opponent’s marks in Classes 38, 41, 42 and 45’. However, according to the Opposition Division, the provided elements did not demonstrate that such reputation would extend to goods and services in classes 9, 35, 36 and 39 or to services under Classes 38, 41, 42 and 45 other than the ones related to social networking.

The OD started by analysing the unfair advantage claim. Referring to the provided evidence, to the signs and to the goods and services covered by the CTM Application, the OD accepted the opponent’s arguments but only in relation to certain goods and services: ‘the use without due cause of the mark applied for a part of the goods and services, namely ‘magnetic data carriers, recording discs; data processing equipment; electronic publications, downloadable’ in Class 9, ‘advertising’ in Class 35, ‘telecommunications’ in Class 38, ‘providing amusement services; electronic desktop publishing; layout services, other than for advertising purposes; providing on-line electronic publications, not downloadable; publication of texts, other than publicity texts’ in Class 41, ‘design and development of computer software’ in Class 42 and finally, ‘personal and social services provided by others to meet the needs of individuals’ in Class 45 would take unfair advantage of the distinctiveness and reputation of the earlier reputed trade marks’.

However, the OD followed a different point of view in relation to the remaining goods and services covered by the CTM Application, this being:

• 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; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines; computers; fire-extinguishing apparatus; attracting and killing insects (electric devices for -); animated cartoons; cigar lighters for automobiles; cleaning apparatus for phonograph records; containers for contact lenses; door closers, electric; door openers, electric; electric arc cutting apparatus; electric arc welding apparatus; electric welding apparatus; electroplating apparatus; eyeglass cases; eyeglass chains; eyeglass cords; eyeglass frames; flat irons, electric; galvanizing apparatus; hair-curlers, electrically heated; lift operating apparatus; magnets; magnets (decorative -); make-up removing appliances, electric; mouse pads; sealing plastics (electrical apparatus for - ) [packaging]; soldering apparatus, electric; soldering irons, electric; spectacle cases; spectacle frames; wrist rests for use with computers;
• Class 35 - Business management; business administration; office functions, auctioneering; rental of vending machines;
• Class 36 - Insurance; financial transactions; monetary transaction services; real estate affairs;
• Class 41 - Education; providing of training; sporting and cultural activities; calligraphy services; dubbing; publication of books; publication of electronic books and journals on-line; sign language interpretation; subtitling; translation;
• 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.

In fact, the OD found that one of the preconditions of article 8(5) (an association of the signs) would not be present in relation to such goods and services and, therefore, the use of the contested trade mark would not take advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks. Since the above referred to goods and services were so distinct from the opponent’s reputed social networking-related services, the use of the later mark would be highly unlikely to bring the ‘facebook’ trade marks to the mind of the relevant public. In simple words, the OD decided that ‘[n]otwithstanding the enormous reputation of the earlier trade marks, the mere fact that the signs have their ending ‘-BOOK’ in common does not create such a similarity that it would create an association in the minds of the relevant public in relation to such distinct goods and services’.

Having found that the opposition was not well founded under article 8(5), the OD proceeded to an analysis of the grounds of Article 8(1)(b), also invoked by FACEBOOK.  At this point, the OD opted not to undertake a full comparison of the opposing goods and services, assuming that the goods and services were identical. As for the similarities between the signs, it decided that the similarity created by the common element ‘BOOK’ was ‘significantly lessened by the fact that it is located in the last part of the signs and that the signs are different in their beginnings’, the part to which the consumers usually tend to focus.  Despite the fact that a low level of similarity was found to suffice for the purposes of article 8(5) CTMR, the OD found that due to the differences between the signs, the relevant public would not be likely to attribute the same commercial origin, or that of economically linked undertakings, even in relation to identical goods and services and, therefore, it rejected the opposition against the remaining goods and services also under Article 8(1)(b) of the CTMR.

The Appeal

FACEBOOK filed an appeal against the above decision, claiming that the opposition should have been admitted in its entirety. On 29 January 2014, the Board of Appeal (BoA) issued its decision, upholding the OD decision in its entirety.

In relation to article 8(5) of the CTMR, the BoA recalled the decision on Intel (Judgment of the Court of 27 November 2008. Intel Corporation Inc. v CPM United Kingdom Ltd. - Case C-252/07). In order to apply this provision, a connection between the opposing signs must exist. The existence of such a connection must be assessed globally taking into account all factors relevant to the circumstances of the case, including ‘the degree of similarity between the conflicting marks; the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the 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 the likelihood of confusion on the part of the public’.

The BoA reaffirmed that the remaining goods and services of the CTM Application were so far removed from the opponent’s reputed social networking-related services that it would be highly unlikely to bring the earlier marks to the mind of the relevant public, especially considering the existing differences between the signs (in relation to these goods and services, the contested sign would be unlikely to bring the earlier mark to the minds of the relevant public). As a result, the BoA concluded that FACEBOOK had not adduced sufficient evidence or arguments to demonstrate that use of the contested mark in relation to the remaining goods and services covered by the opposed mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks and, therefore, article 8(5) CTMR would not apply.

Of special interest was one of the arguments raised by FACEBOOK and dismissed by the BoA: according to FACEBOOK, in view of its trade marks special attractiveness, the same might be exploited even outside its natural market sector, by licensing and merchandising; no, said the BoA, as ‘none of the goods or services for which the contested decision found that Article 8(5) CTMR can not be applied to, are such that they would commonly be the object of licensing and merchandising from owners of trade marks of social network sites’.

What about 8(1)(b)? Once again, the BoA sided with the OD position. Proceeding on the assumption that all the contested goods and services were identical to those covered by the earlier trade marks, as has been done in the contested decision, the BoA compared the signs as follows:

In the comparison, the BoA found the figurative components in both marks to be of limited nature, as ‘the slight figurative elements are not set out in such a specific and original way that would help consumers keep them in mind and would contribute in distinguishing between the signs’ and reaffirmed the stronger importance of verbal elements in mixed signs. Other than that, the BoA accepted the visual, aural and conceptual comparison made by the OD, finding the main similarity between the marks to lie in the element ‘book’, but giving stronger importance to the differences in the signs: their first element (‘face’ v ‘paro’), which had a bigger impact than their final common element. Further, it stated that both signs were relatively short and, consequently, the public would more easily perceive the existing differences. In sum, ‘the visual and phonetic dissimilarities are clearly enough to counteract the visual and phonetic similarities in the case at hand and the signs are not phonetically, visually or conceptually similar overall’. Since the signs were not considered similar or identical, no likelihood of confusion could be found in accordance with article 8(1)(b) CTMR, independently of the enhanced distinctiveness and strong reputation of the earlier trade marks.

In conclusion, the BoA held that the Opposition Division did not err in considering that Article 8(1)(b) CTMR and Article 8(5) CTMR was not applicable in relation to the above mentioned goods and services and upheld the OD decision.