OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)

Opposition Division

OPPOSITION No B 2 160 458

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

a g a i n s t

E-mpowerme S.L., C/ Antonio García Gascón 9, 28224 Pozuelo de Alarcon, Spain (applicant), represented by Luis Rey Aguilar, Calle Francisco Silvela, 71 - Bajo C, 28028 Madrid, Spain (professional representative).

On 30/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 160 458 is partially upheld, namely for the following contested services:

Class 35: Advertising; updating of advertising material; publicity agencies; rental of advertising space; rental of advertising time on communication media; layout services for advertising purposes; dissemination of advertising matter; marketing; presentation of goods on communication media, for retail purposes; sales promotion for others; publication of publicity texts; advertising; on-line advertising on a computer network.

Class 38: Telecommunications; providing user access to global computer networks; wire service; rental of facsimile apparatus; rental of telecommunication equipment; rental of message sending apparatus; rental of modems; rental of telephones; rental of access time to global computer networks; voice mail services; communications by fiber [fibre] optic networks; communications by computer terminals; communications by telephone; communications by telegrams; providing telecommunications connections to a global computer network; electronic mail; television broadcasting; telecommunications routing and junction services; message sending; providing access to databases; providing internet chatrooms; information about telecommunication; providing telecommunication channels for teleshopping services; paging services [radio, telephone or other means of electronic communication]; radio broadcasting; cellular telephone communication; wireless broadcasting; electronic bulletin board services [telecommunications services]; teleconferencing services; cable television broadcasting; telephone services; telegraph services; telex services; transmission of digital files; facsimile transmission; computer aided transmission of messages and images; transmission of greeting cards online; transmission of telegrams; satellite transmission.

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

2. Community trade mark application No 11 454 717 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 Community trade mark application No 11 454 717. The opposition is based on the following seven earlier marks:

Community 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;
Community 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;
Community trade mark registration No 9 507 161 for the word mark ‘BOOK’ registered for services in Classes 38, 42 and 45;
Community trade mark registration No 9 776 618 for the word mark ‘FACEBOOK’, registered for goods and services in Classes 9, 16, 35 and 36;
Community trade mark registration No 5 585 518 for the word mark ‘FACEBOOK’, registered for services in Classes 35, 41, 42 and 45;
Community trade mark registration No 10 782 555 for the word mark ‘FACEBOOK’ registered for goods and services in Classes 16, 40, 42 and 45 and
Community trade mark registration No 10 782 597 for the figurative mark ‘ ’ registered for goods and services in Classes 16, 40, 42 and 45.

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

SECTION A: REPUTATION – ARTICLE 8(5) CTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier CTMs No 9 151 192, No 9 151 168, No 9 776 618, No 5 585 518, No 10 782 555 and No 10 782 597 ‘FACEBOOK’/‘ ’, for which the opponent claimed reputation in the EU.

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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) CTMR 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) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

The signs

Community trade mark registrations No 9 151 168 and No 10 782 597

(2) FACEBOOK

Community trade mark registrations No 5 585 518, No 9 151 192, No 9 776 618 and No 10 782 555

Earlier trade marks

Contested sign

The relevant territory is the European Union.

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

The contested sign is also a figurative mark, portraying the verbal element ‘ClaimBook’, in black heavy script and with a grey border. The first and sixth letters ‘C’ and ‘B’ are in uppercase lettering and the remaining ones in lower case letters. The contested sign further depicts a figurative element representing a pencil, placed above the fourth letter ‘i’ of the verbal element ‘ClaimBook’ and a combination of horizontal and vertical lines, placed below and above it.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘-BOOK’. On the other hand, they differ in: (i) their first parts, being ‘FACE-’ in the earlier marks and ‘Claim-’ in the contested sign, (ii) the way the common letters ‘-BOOK’ are depicted, as explained above, (iii) the figurative element of the pencil in the contested sign, (iv) the overall stylisation of the signs as regards the earlier marks (1) and (v) the overall stylisation of the contested sign as regards the earlier marks (2).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘-book’, present identically in all the signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of their remaining letters, ‘face-’ in the earlier marks versus ‘claim-’ in the contested sign. The figurative element of the pencil included in the contested sign will not be referred to aurally by the public and as such is not subject to a phonetic assessment.

Conceptually, the word ‘facebook’ as such does not have a meaning 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).

The word ‘ClaimBook’ forming the verbal element of the contested sign 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’, paragraph 57). It follows from the foregoing that the English-speaking public will perceive it as a combination of the English words ‘claim’ (referring, inter alia, to an assertion that something is true and a demand or request for something considered one’s true) and ‘book’ (with the same meaning as explained above for ‘book’ of the earlier marks). Furthermore, the possibility cannot be entirely excluded that in a particular context (such as for example in relation to insurance related goods/services), the English-speaking public could grasp a concept in the combination of these words and understand it as referring to a book used to record claims, such as insurance claims.

The figurative elements of the contested sign will be perceived as such (a pencil and a combination of lines). In addition, the figurative element of the pencil could be seen as reinforcing the concept of the words claim and/or book, either separately or taken as a whole meaningful unit, by that part of the public that understands them.

The signs are, therefore, conceptually similar only for that part of the public that identifies in both the earlier marks and the contested sign the concept of ‘book’.

Taking into account the abovementioned visual, aural and partial conceptual coincidences, it is considered that the signs under comparison are similar to a certain degree.

Reputation of the earlier trade marks

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

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

In the present case the contested trade mark was filed on 26/12/2012. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Community trade mark registration No 5 585 518

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.

Community trade mark registration No 9 151 192

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.

Community trade mark registration No 9 151 168

Community trade mark registration No 9 776 618

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

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

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

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

Community trade mark registrations No 10 782 555 and No 10 782 597

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

Class 40: Printing services.

Class 42: Business card and identity card design services.

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

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

On 14/04/2015, the opponent filed a copious amount of 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 exhibits’.

The evidence comprises the following:

EXHIBIT A

Exhibit A1

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

Exhibit A2

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

Exhibit A3

Printouts from the website http://www.statista.com, dated 01/04/2015 providing information, among other things, on the number of active Facebook users worldwide (1.35 billion monthly active users as of the 3Q of 2014) for the period between the third quarter of 2008 and until the end of 2014, as follows:

EXHIBIT B

Exhibit B1

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

Exhibit B2

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

2.1 Twenty-one OHIM decisions

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

2. 1. 18 The decision of OHIM’s Opposition Division of 17/12/2014, ruling on opposition No B 2 106 857 and refusing the registration of CTMA No 11 015 179 ‘FACETUBE’ for services in Classes 38, 42 and 45.

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

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

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

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

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

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

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

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

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

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

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

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

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

2.2.9 The decision of the SPTO dated 25/02/2013, refusing registration of the trade mark application No 3 090 688 ‘GULLIVER TEATRO COMPAÑA DE TEATRO WWW.GULLIVERTEATRO.ES’, in Class 41 and its English translation.

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

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

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

2.3 Two judgments of the High Court of Andalusia

2.3.1 The judgment of the High Court of Andalusia (district of Seville), Contentious Administrative Chamber, Section one, of 20/12/2011 (document in Spanish and its English translation), ruling on Appeal no 110/2011 and dismissing the appeal filed against the decision of the SPTO Board of Appeal mentioned at point 2.2.7 hereinabove.

2.3.2 The judgment of the High Court of Andalusia (district of Seville), Contentious Administrative Chamber, Section one, of 19/06/2012 (document in Spanish and its English translation), ruling on Appeal no 67/2011 and dismissing the appeal filed against the decision of the SPTO Board of Appeal mentioned at point 2.2.8 hereinabove.

2.4 Nine decisions of WIPO’s Arbitration and Mediation Center

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

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

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

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

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

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

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

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

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

2.5 Seven decisions of other EU bodies

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

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

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

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

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

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

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

Exhibit B3

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

Exhibit B4

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

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

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

4.3 Printouts from www.socialmediatoday.com, (an independent, online community for professionals in PR, marketing, advertising, or any other discipline where a thorough understanding of social media is mission-critical), dated 21/06/2011, referring to the article ‘Social media 3Q Update: Who uses Facebook, Twitter, LinkedIn, & MySpace?’ published on 09/10/2010, which indicates that 57% of the US population has a Facebook account and that Facebook dropped from 550 to 540 million users worldwide in the third quarter of 2010.

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

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

4.6 An interview given by Mark Zuckerberg (founder of Facebook) and published on www.time.com on 21/06/2011. 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.

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.

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.

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

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

4.17 Printouts dated 05/04/2011 from www.comScore.com (a leader in measuring the digital world) publishing the following information: Facebook ranks as top display ad publisher in Q1 2011 for the US online display advertising market. Popular social networking site Facebook.com led all online publishers in Q1 2011 with 346 billion display and impressions, representing 31.2 percent market share. Facebook’s market share has increased 15 percentage points from 16.2 percent in Q1 2010.

4.18 An article published on the website www.finance.yahoo.com of 11/09/2011 on ‘The most powerful people, 2011 provided by Forbes’, in which Mark Zuckerberg, the founder of ‘Facebook’ is ranked ninth.

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

Facebook is bringing the world together. It has become an overarching common cultural experience for people worldwide, especially young people. It changes how people communicate and interact, how marketers sell products, how governments reach out to citizens, even how companies operate. It is altering the character of political activism, and in some countries it is starting to affect the processes of democracy itself.

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

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

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

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

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

4.22 Time magazine article Time’s 2010 Person of the year of 27/12/2010 (cover page with the picture of Mark Zuckerberg and the title ‘Facebook’s Mark Zuckerberg’ and an article on page 12 and page 43 et seq. about Mark Zuckerberg and statistics about Facebook).

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

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

4.25 ComScore press release of 15/04/2009 ‘Facebook Ranks as Top social networking in the majority of the European Countries’ with a list of different European countries, such as the United Kingdom, France, Italy, Spain, Germany, Belgium, Sweden, Denmark, Finland, the Netherlands, Austria, Ireland and Portugal. Furthermore, it is mentioned that the site’s audience is largest in the UK, with 22.7 million visitors, followed by France, with 13.7 million visitors.

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

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

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

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

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

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

4.32 Printouts from the website www.boxofficemojo.com, for the film ‘The Social Network’.

4.33 Several articles from The Guardian, The Telegraph, BBC News Website, The Daily Mail Online, The Financial Times and The Mail in the UK in the period between November 2005 and October 2009 relating to the fame of Facebook in England.

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

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

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

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

4.38 The study ‘BrandZ Top 100 most valuable global brands 2011’ by Millward Brown, which states that Facebook, just seven years old, appears in the BrandZ Top 100 Most Valuable Global Brands for the first time at No. 35.

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

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

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

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

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

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

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

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

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

4.48 Printouts from www.socialmediamagic.com featuring the article ‘Almost a billion Users! Facebook and your business’, indicating, inter alia, that industry experts are predicting that Facebook will reach 1 billion users in 2012; considering that there are only 7 billion people on earth, this means that one in every seven people in the world, are connected to each other through Facebook.

4.49 Printouts from www.socialmediamagic.com featuring an article entitled ‘Researching and Creating Effective Facebook Adverts’.

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

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

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

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

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

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

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

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

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

Exhibit B5

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

5.1 Results of a Google search 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).

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

5.21 Reference from the independent website www.ojointernet.com, giving information about the opening of a new Facebook office in Paris and stating that the social network continues with its plans of consolidation in Europe (09/12/2008).

5.22 Reference from the independent website www.ojointernet.com, stating that ‘Facebook surpasses 150 million users’ and that, if Facebook were a country, it would be the eighth most populous, ahead of Japan, Russia and Nigeria (13/01/2009).

5.23 Reference from the independent website www.ojointernet.com, stating that ‘Facebook is now bigger than Myspace worldwide’ and that in November 2008 it had 200 million visits, and in December 222 million visits, including a chart with the constant growth of the number of users from December 2007 to December 2008 (23/01/2009).

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

5.25 Reference from the website www.actualidadterra.es affirming that the Facebook phenomenon is extending like wildfire, that it is a mass phenomenon with 200 000 new users every day, and that it has just become one of the companies with the most value on the network (25/10/2007).

5.26 News published on 15/01/2009 on www.genbeta.com showing that Facebook was the best social network in 2008, having an overwhelming victory with 69% of the votes, and that Facebook is taking over worldwide.

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

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

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

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

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

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

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

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

5.35 Printouts from the website www.liboh.es featuring the article ‘What is Facebook?’, dated 11/10/2007. The evidence states, among other things, that Facebook is the largest existing social network, the greatest exponent of the web 2.0 for many, and it is currently the seventh most visited site on Earth.

5.36 Article ‘Facebook has 750 million users’, published on 27/06/2011 on the website www.europapress.es.The evidence shows, inter alia, that in April 2010 the social network announced that they had 400 million registered profiles. Just three months later, by mid-July, they said the figure had reached 500 million.

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

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

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

Exhibit B6:

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

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

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

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

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

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

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

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

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

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

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

Exhibit B7

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

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

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

Exhibit B8

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

8.1 152 articles from the French newspaper Les Echos.

8.2 201 articles from the newspaper La Tribune.

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

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

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

Exhibit B9

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

Exhibit B10

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

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

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

Exhibit B11

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

Exhibit B12

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

Exhibit B13

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

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

Exhibit B14

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

EXHIBIT C

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

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 trade marks CTM No 9 151 192, No 9 151 168 and No 5 585 518 ‘FACEBOOK’/‘ ’ have been subject to long-standing and intensive use and are generally known in the relevant market as the name of the largest social networking website in existence (with already 540 million unique users worldwide in April 2010, more than 600 million active users in January 2011, 1.11 billion active users in March 2013 and 1,250 million active users in the first quarter of 2014), where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources.

Indeed, the brand studies, the reports on social networks and the international site rankings (which place FACEBOOK as the leading social networking site in 15 European Markets by the end of 2010 and on the 29^th place with a brand value of 14,349, million USD, in Interbrand Best Global Brands 2014), the share of the market by percentage reach evidenced by the documents, the impressive and constantly increasing number of active users, the various references in the press to its success, all unequivocally show that the earlier marks enjoy a high degree of recognition among the relevant public in connection with 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 the earlier CTM No 9 151 168 and No 9 151 192, 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 the earlier CTM No 5 585 518, 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 CTM No 9 151 168 and No 9 151 192, computer services in the nature of customized web pages featuring user-defined information, personal profiles and information in Class 42 covered by earlier CTM No 5 585 518, 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 CTM No 9 151 168 and No 9 151 192, introduction and social networking services in Class 45 covered by earlier CTM No 5 585 518 and social introduction, networking and dating services in Class 45 covered by earlier CTM No 9 151 168 and No 9 151 192 and more specifically in connection with social networking and related services covered by the opponent’s marks CTM No 5 585 518, No 9 151 168 and No 9 151 192 in Classes 38, 41, 42 and 45.

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

However, the evidence does not succeed in establishing that earlier CTM No 9 151 192, No 9 151 168 and No 5 585 518 have a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to social networking and related services in Classes 38, 41, 42 and 45, whereas there is little or no reference to the remaining goods and services.

Furthermore, it has to be mentioned that the evidence does not succeed in establishing that the earlier CTM No 9 776 618, No 10 782 555 and No 10 782 597 have a reputation for any of the goods and services on which the opposition is based and for which reputation has been claimed, namely goods and services in Classes 9, 16, 35, 36, 40, 42 and 45.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) CTMR 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) CTMR is not fulfilled, and the opposition must be rejected insofar as it is based on earlier Community trade mark registrations No 9 776 618, No 10 782 555 and No 10 782 597.

The examination of the present opposition will therefore continue on the grounds of Article 8(5) CTMR in relation to earlier Community trade mark registrations No 5 585 518, No 9 151 168 and No 9 151 192.

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) CTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, ‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 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 (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 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.

In the present case, the signs have been found to be similar to the extent that they have a similar structure consisting of a word (face-/claim-) + the same sequence of letters ‘-book’ placed at their end, which is further visually emphasised by the manner in which the element ‘ClaimBook’ is depicted in the contested sign. Indeed, the presence of the capital letter ‘B’ in this word, as explained above in section a) ‘The signs’, breaks it down visually into ‘Claim’ and ‘Book’. The figurative elements of the contested sign will not have, in the opinion of the Opposition Division, such a significant impact on consumers that their attention be detracted from the element ‘ClaimBook’.

In this regard, it must be remembered that the degree of similarity of the signs required under Article 8(5) CTMR differs from the one required under Article 8(1)(b) CTMR. Thus, whereas the protection provided for under Article 8(1)(b) CTMR 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) CTMR. Accordingly, the types of injury referred to in Article 8(5) CTMR 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, ‘TiMi KINDERJOGHURT’, paragraph 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 the following:

Class 35: Advertising; business management; business administration; office functions; procurement services for others [purchasing goods and services for other businesses]; updating of advertising material; import-export agencies; commercial information agencies; publicity agencies; rental of vending machines; rental of advertising space; rental of photocopying machines; office machines and equipment rental; publicity material rental; rental of advertising time on communication media; cost price analysis; management (advisory services for business -); business management assistance; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; layout services for advertising purposes; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; business consultancy (professional -); accounting; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; distribution of samples; relocation services for businesses; accounts (drawing up of statements of -); marketing studies; outsourcing services [business assistance]; invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; file management (computerized -); business management of performing artists; business inquiries; business information; commercial information and advice for consumers [consumer advice shop]; business investigations; marketing; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; fashion shows for promotional purposes (organization of -); organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; efficiency experts; psychological testing for the selection of personnel; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; publication of publicity texts; advertising; on-line advertising on a computer network; bill-posting; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; auctioneering; auditing.

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.

Admittedly some of the contested 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 when encountering the contested mark the relevant consumers will be likely to associate it with the earlier marks, that is to say, establish a mental ‘link’ between the signs in relation to some of the contested services, specifically some of the contested services in Class 35 (advertising; updating of advertising material; publicity agencies; rental of advertising space; rental of advertising time on communication media; layout services for advertising purposes; dissemination of advertising matter; marketing; presentation of goods on communication media, for retail purposes; sales promotion for others; publication of publicity texts; advertising; on-line advertising on a computer network), all the services in Class 38 and some in Class 45 (personal and social services rendered by others to meet the needs of individuals).

Therefore, taking into account and weighing up all the relevant factors of the case at hand, 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) CTMR (judgment of 26/09/2012, T‑301/09, ‘CITIGATE’, paragraph 96).

The same conclusion cannot be reached as far as the remaining contested services are concerned, namely business management; business administration; office functions; procurement services for others [purchasing goods and services for other businesses]; import-export agencies; commercial information agencies; rental of vending machines; rental of photocopying machines; office machines and equipment rental; publicity material rental; cost price analysis; management (advisory services for business -); business management assistance; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; business consultancy (professional -); accounting; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; distribution of samples; relocation services for businesses; accounts (drawing up of statements of -); marketing studies; outsourcing services [business assistance]; invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; file management (computerized -); business management of performing artists; business inquiries; business information; commercial information and advice for consumers [consumer advice shop]; business investigations; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; fashion shows for promotional purposes (organization of -); organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; efficiency experts; psychological testing for the selection of personnel; economic forecasting; production of advertising films; bill-posting; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; auctioneering; auditing in Class 35 and legal services; security services for the protection of property and individuals in Class 45.

The fact that the signs are similar to the extent they have a similar structure (xxxx+‘BOOK’) 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 and as opposed to the advertising services for which the likelihood of a link has been established, the remaining services in Class 35 that fall under the general category of advertising (for example marketing studies; distribution of samples; writing of publicity texts; news clipping services; advertising by mail order; publicity material rental; publicity columns preparation; outdoor advertising; direct mail advertising; television advertising) are so specific that it is considered that there is no obvious link with the reputed services of the earlier marks. These contested services are rendered by specialised companies which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services and create a personalised strategy regarding the advertising of those goods and services. They entail a variety of particular services which are unlikely to call to mind the earlier reputed social networking services.

The remaining contested services in this class as well as the remaining contested services in Class 45 are even farther removed from the earlier reputed ones and are rendered in such distinct areas (services to support other businesses – business administration, business management and office functions, 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 these services in Classes 35 and 45. In this regard it must be recalled that the question whether the relevant public will establish a link between the marks at issue is a question of fact which must be answered in the light of the facts and circumstances of each individual case.

In its submissions of 14/04/2015, the opponent claims that there is a link between the signs and that the use of the contested sign would take unfair advantage of and be detrimental to the reputation and distinctive character of the earlier marks. However, it did not file any evidence or at least put forward a coherent line of arguments, explaining why the public might establish a link between the signs and showing what the unfair advantage and/or detriment to distinctiveness and repute 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 services concerned.

In the present case, the opponent’s arguments are rather general statements about the unfair advantage and respectively the detriment to be caused to the distinctiveness and repute of the earlier marks, which fail to explain how the use of the contested sign in relation to the remaining contested services in Classes 35 and 45 would bring to mind the earlier marks and do not serve to determine if such association is such as a risk of injury is likely in the ordinary course of events.

Article 8(5) CTMR is not intended to prevent the registration of all marks identical with 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’ (judgment of 14/09/1999, C‑375/97, ‘General Motors’, paragraph 30).

This is confirmed by Rule 19(2)(c) CTMIR, according to which, if the opposition is based on a mark with a reputation within the meaning of Article 8(5) CTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would […] take unfair advantage of the distinctive character or the repute of the earlier trade marks or be detrimental to the repute of the earlier trade marks.

As regards the unfair advantage, the opponent merely states that the applicant’s services are identical/highly similar and linked to the earlier reputed services and that the contested CTMA is used/will be used for ‘entertainment and social services through websites and mobile applications’. However, as already shown above, the reputation has been established only in relation to social networking and related services in Classes 38, 41, 42 and 45, and the Opposition Division does not find it self-evident that the use of the contested sign for the remaining contested services in Classes 35 and 45 would bring to mind the earlier marks and further be likely to take unfair advantage of the distinctive character or the repute of the earlier marks. 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 services, but are simply general statements that the use of the contested sign would take unfair advantage of the image of the earlier marks and 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 contested services in question. Therefore, the Opposition Division considers that the arguments of the opponent cannot be deemed sufficient to establish that there is a link and further a future risk of unfair advantage when the contested sign is used in relation to these remaining contested services.

As regards the claim of detriment to the repute (tarnishing), the opponent also puts forward very general statements. It essentially states that ‘the risk of that detriment can, inter alia, occur where the contested goods and services have a characteristic or quality which may have a negative influence on the image of the an earlier mark with a reputation on account of its being identical or similar to the contested trade mark’ and that in its opinion ‘the use of the contested mark would also imply an evident detriment to the reputation of the earlier marks’. It also claims that this line of arguments has been accepted by the Office in the decision of 18/10/2012 ruling on opposition no B 1 727 620. It further mentions that ‘the goods/services protected by the contested mark may be detrimental to the opponent because, contrary to Facebook Inc.’s wishes, its ‘FACEBOOK’/‘ ’ trade marks could be associated through this new application ‘ClaimBook’ with a specific content and to connotations with which it does not intend to be associated’.

The Opposition Division is of the opinion that the circumstances in the present case do not suggest that use of the contested trade mark in connection with the contested services in Classes 35 and 45 is likely to bring to mind the earlier marks and further result in detriment to their reputation.

Tarnishment occurs where there is an association between the earlier reputed mark, either at the level of the signs or at the level of the goods or services, which is injurious to the earlier trade mark’s repute. In other words, this type of detriment takes place where the use of the contested mark would prompt inappropriate or negative mental associations with the earlier mark, or associations conflicting with the image the latter has acquired in the market (see, to that effect, decision of 23/11/2010, R 240/2004-2 – ‘WATERFORD’, paragraph 89).

In other words, ‘in each case of alleged tarnishment, it will be necessary to compare the connotations of each mark, in relation either to the goods or services covered or to the broader message which they may convey, and to evaluate the damage entailed’ (see, to that effect, paragraph 81 of the opinion of Advocate General Sharpston delivered on 26/06/2008 in C‑252/07, ‘Intel’).

In the present case, the contested application consists of a combination of the English words ‘Claim’ and ‘book’ and some figurative elements (a pencil and a combination of lines). When consideration is given to the meanings of these words in English (as explained in section a) above) or to the figurative elements, there are no indications to suggest that the contested sign has ‘connotations’ which would degrade the earlier marks in any way. Furthermore, the Opposition Division does not find it self-explanatory that the contested services in question possess a characteristic or a quality which is liable to have a negative impact on the earlier marks.

As regards the decision of OHIM’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 it is settled case-law that the legality of decisions is to be assessed purely by reference to the CTMR, and not the Office’s practice in earlier decisions (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’).

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, as already explained hereinabove.

Against this background, the Opposition Division considers that the arguments put forward by the opponent in the present case cannot be considered sufficient to establish a link between the signs and a non-hypothetical future risk of detriment to the repute of the earlier marks, since they fail to support a finding that the connotations of the later mark would be of such a nature as to harm the repute of the earlier marks.

As for the claim of detriment to distinctiveness, the opponent again limits itself to general allegations that the proliferation of marks with an identical structure and end (xxxx+BOOK) for identical, similar or complementary services will dilute the distinctive character of the earlier marks because the more exclusive the sign, the greater evocation of guarantee it produces among consumers.

In this regard, it must be recalled that detriment to distinctiveness cannot be found to occur merely because the earlier marks have a reputation and are identical with or similar to the mark applied for, because such an approach would apply an automatic and indiscriminate finding of likelihood of dilution against all marks that are similar to reputed trade marks and would obviously negate the requirement of proving detriment. Further, as the Court stated in ‘Intel’ Article 4(4)(a) TMD (the equivalent to Article 8(5) CTMR) must be interpreted as meaning that proof that the use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, or a serious likelihood that such a change will occur in the future.

The Court has further elaborated on the concept of ‘change in the economic behaviour of the average consumers’ in its judgment of 14/11/2013 C-383/12P ‘Wolf head image’. It indicated that it is an objective condition which cannot be deduced solely from subjective elements such as consumer’s perceptions. The standard of proof is higher. Therefore, in order to find a detriment or risk of detriment to the distinctiveness of the earlier trade mark, the mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient of itself (paras. 35-40).

It follows from the foregoing that the opponent should have shown that the economic value of the reputed trade marks will be impaired, in the medium or long term, as a consequence of the use of the later mark in the sense that consumers of the services for which the earlier marks are protected and have a reputation will be less inclined to associate them immediately with the undertaking that has built up the trade marks’ reputation.

The opponent may do this by submitting evidence that proves a likelihood of detriment on the basis of logical deductions made from an analysis of the probabilities (and not mere suppositions) and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case. However, in the present case, as already specified above, the opponent resorts to general statements which fail to explain how detriment to the distinctiveness of the earlier marks would take place.

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

Bearing this in mind and in the absence of any specific arguments and/or evidence in support of the existence of a link and of the claims of a likelihood of unfair advantage and of detriment to the distinctive character and the repute of the earlier marks, 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 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) CTMR and must be rejected insofar as it is directed at these services.

The examination of the opposition under this article will therefore continue only in relation to those services in Classes 35, 38 and 45 for which it has been established above that consumers will be likely to establish a mental ‘link’ with between the signs.

Risk of injury

Use of the contested mark will fall under Article 8(5) CTMR 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) CTMR 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’ (judgment of 06/06/2012, T‑60/10, ‘ROYAL SHAKESPEARE’, paragraph 53).

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). Due to the similarity between the signs and the identity/high similarity between the applied services and the earlier marks’ goods and services, the use of the trade mark application ‘ClaimBook’ would obtain an unfair benefit of the distinctiveness and reputation of the earlier marks because consumers would/could believe that the services offered under the contested mark are in some way related to the opponent’s company and so it will take advantage of their image.

The use of the contested mark would also imply an evident detriment to the reputation of the earlier marks (tarnishing). The goods/services protected by the contested sign may be detrimental to the opponent, because contrary to its wishes, the marks ‘FACEBOOK’/‘ ’ could be associated through this new application ‘ClaimBook’ with a specific content and to connotations with which it may not want to be associated.

Finally, the opponent argues that the use of the contested mark for the goods and services applied for would be detrimental to the distinctive character of the earlier trade marks (dilution). The proliferation of marks (XXXX+BOOK) will dilute the distinctive character of the earlier marks because the more exclusive the sign, the greater evocation of guarantee it produces among consumers, especially when the services it covers, as in the present case, are identical, similar or complementary.

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

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

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

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

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) CTMR 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 (judgment of 06/06/2012, T‑60/10 ‘ROYAL SHAKESPEARE’, paragraph 48; and judgment of 22/03/2007, T‑215/03, ‘VIPS’ paragraph 40).

The opponent essentially bases its claim on the following:

‘FACEBOOK’ is a social network service/online community and website, launched in February 2004;
The evidence of reputation as a whole clearly infers that FACEBOOK enjoys reputation in the field of social networks and related goods/services. The relevant market is that of Internet communications as well as associated goods/services, such as advertising, entertainment etc. These services belong to a commercial sector in which the earlier marks enjoy reputation, all these services rely in the new ways of communication through Internet.
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 by the mere fact the trade mark shares the distinctive element ‘BOOK’ with the well-known earlier marks ‘FACEBOOK’/’ ’ and the same structure ‘xxxx+BOOK’ and is used/will be used for entertainment and social services through websites and mobile applications;
The mere association of the contested mark with the positive qualities of the earlier marks gives rise to an evident exploitation and unfair benefiting by the trade mark application;
In the case at hand, where the applied for services are identical and linked to those for which the opposing marks are reputed, the coincidence in the suffix ‘BOOK’ and their common structure, CLAIM/FACE+BOOK could easily lead consumers to associate the signs;
The applicant would thus benefit from the investment of the opponent in promoting and creating a goodwill for its marks.

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, in so far 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.

(Judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 36.)

In the present case, taking into account the nature of the services applied for in Classes 35, 38 and 45, which consist of both services addressed to the general public (such as personal and social services rendered by others to meet the need of individuals in Class 45) but also of services that may target a more specialised public, such as business consumers or professionals with specific knowledge and expertise (for instance advertising in Class 35), the relevant public is the average European consumer.

First, it must be noted that all the contested services are connected to the earlier reputed services, as it will be shown in detail herein below.

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.
The contested providing user access to global computer networks; wire service; rental of access time to global computer networks; voice mail services; communications by fiber [fibre] optic networks; communications by computer terminals; providing telecommunications connections to a global computer network; electronic mail; telecommunications routing and junction services; message sending; providing access to databases; providing internet chatrooms; information about telecommunication; providing telecommunication channels for teleshopping services; wireless broadcasting; electronic bulletin board services [telecommunications services]; transmission of digital files; computer aided transmission of messages and images; transmission of greeting cards online; satellite transmission are different kinds of telecommunication services closely related social networking services. Indeed, the opponent’s reputed social network, in addition to providing an arena for people to interact with one another and share personal information online, allows users, among other possibilities, also to search for information on people, places or things. Furthermore, it has also been used for displaying content of a more general nature in various areas, ranging from news to literary or musical works, from sports articles to political issues. In addition, the opponent’s reputed social network platform makes available to its users various applications and creation tools that enable them, among other possibilities, also to create a Facebook page (for a local business or a place, for a company or institution, for a product, for a cause, etc.), including for communicating or administering a promotion or a commercial offer. Therefore, there is a connection between these contested services and the earlier services with reputation.
The contested television broadcasting; radio broadcasting; cable television broadcasting are concerned with the distribution of audio and/or video content to a dispersed audience via any electronic mass communication medium. On the other hand, it is a fact that nowadays broadcasting and social media link-ups are happening and an increasing number of broadcasters explore the potential of social media to disseminate news, for example by entering into partnerships with providers of social networking services to reach new audiences such as the one between BBC and Twitter Amplify (a product that gives broadcasters the opportunity to publish real-time in-tweet video clips that are accompanied by pre-roll or post-roll advertisements). It is therefore considered that these services are also linked to the earlier reputed ones.
With respect to the contested cellular telephone communication in Class 38, first it must be noted that over the past years these have come to include, in addition to the ‘classical’ voice call services that allow people to communicate with each other using a mobile phone, mobile social networking services. On social networking sites such as the opponent’s, besides communicating with existing friends, people can find and make friends with other people who share similar interests, went to the same school, are from the same company, etc. Similarly, in mobile social networking, users can discover, through matchmaking (an operation through which the common interests of the phones’ owners are detected) new friends just as they do on traditional social networking sites. Therefore, it is considered that these contested services also present certain connections with the opponent’s reputed ones.
The contested rental of facsimile apparatus; rental of telecommunication equipment; rental of message sending apparatus; rental of modems; rental of telephones are services by which one party is granted the temporary use of telecommunication equipment in exchange for an agreed amount of money. The remaining contested communications by telephone; communications by telegrams; paging services [radio, telephone or other means of electronic communication]; teleconferencing services; telephone services; telegraph services; telex services; facsimile transmission; transmission of telegrams are various types of telecommunication services. They are essentially concerned with allowing people to communicate with one another and transmit and exchange information through various means (facsimile, telex, telegrams etc) and respectively with making available the equipment necessary to that end. The opponent’s reputed social networking platform serves the same purpose, to allow people to communicate online and, as shown by the evidence, is aimed at ‘marking the world more connected’. It is, therefore, considered that these services are also linked to a certain extent to the earlier reputed ones.

Contested services in Class 35:

As regards the contested advertising (specified twice in the specification of the CTMA), first it has to be noted that these services include, as a broad category, also publication of publicity texts and layout services for advertising purposes, which although they may not appear to be immediately linked to the opponent’s reputed services, nevertheless a certain connection cannot be denied. The same applies as regards the remaining contested updating of advertising material; publicity agencies; rental of advertising space; rental of advertising time on communication media; dissemination of advertising matter; marketing; presentation of goods on communication media, for retail purposes; sales promotion for others; on-line advertising on a computer network in the same class.
Indeed, advertising on social networks is a rapidly growing trend and social networking websites, such as the opponent’s, are being extensively used at the moment as an advertising medium for businesses, through various forms of advertising from the traditional text-based ads and banner ads to more imaginative ways such as technology-savvy word-of-mouth techniques (sharing articles, videos and applications). The documents enclosed under Exhibit B4 (and more specifically the press articles referred to above under points 4.42 to 4.47, which show the advertising revenue obtained by the opposing party) 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 broad category of the contested advertising as well as the contested updating of advertising material; publicity agencies; rental of advertising space; rental of advertising time on communication media; layout services for advertising purposes; dissemination of advertising matter; marketing; presentation of goods on communication media, for retail purposes; sales promotion for others; publication of publicity texts; on-line advertising on a computer network 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 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.

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

Bearing in mind the foregoing, it is considered that, in view of the special connections between the earlier reputed services and the contested services, a substantial part of consumers may decide to turn to the applicant’s services in Classes 35, 38 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, is likely to take unfair advantage of the distinctive character or the repute of the earlier trade marks.

Other forms of encroachment upon reputation

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

As seen above, encroachment upon reputation is an essential condition for Article 8(5) CTMR to apply. Encroachment 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 would 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) CTMR insofar as it is directed against the following services:

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 in Classes 35 and 45 are concerned.

The opponent also based the opposition on CTM registration No 9 507 161 for the word mark ‘BOOK’, for which it claimed a reputation in the European Union and in all the Member States in relation to 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 in Class 38, 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 in Class 42 and 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 in Class 45.

However, the evidence submitted in the present case (which has been listed and analysed in section b) above) does not demonstrate that this earlier trade mark has also acquired a reputation in the relevant territory. In fact, the documents submitted refer to the earlier marks ‘FACEBOOK’/‘ ’. There are no references in the materials submitted to the extent of the use of the word mark ‘BOOK’, 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. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) CTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) CTMR is not fulfilled, and the opposition must be rejected insofar as it is based on earlier Community trade mark registration No 9 507 161 and in so far as it is based on this ground.

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

SECTION B: LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 CTM registration No 9 507 161 for the word mark ‘BOOK’.

B.1.) CTM registration No 9 507 161 for the word mark ‘BOOK’

The services

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

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 contested services are the following:

Class 35: Business management; business administration; office functions; procurement services for others [purchasing goods and services for other businesses]; import-export agencies; commercial information agencies; rental of vending machines; rental of photocopying machines; office machines and equipment rental; publicity material rental; cost price analysis; management (advisory services for business -); business management assistance; data search in computer files for others; marketing research; sponsorship search; business research; commercial or industrial management assistance; price comparison services; compilation of information into computer databases; news clipping services; business management consultancy; personnel management consultancy; business organization consultancy; business management and organization consultancy; business consultancy (professional -); accounting; telephone answering for unavailable subscribers; publicity columns preparation; tax preparation; shop window dressing; demonstration of goods; distribution of samples; relocation services for businesses; accounts (drawing up of statements of -); marketing studies; outsourcing services [business assistance]; invoicing; organization of trade fairs for commercial or advertising purposes; business management of hotels; commercial administration of the licensing of the goods and services of others; file management (computerized -); business management of performing artists; business inquiries; business information; commercial information and advice for consumers [consumer advice shop]; business investigations; typing; modelling for advertising or sales promotion; payroll preparation; employment agencies; fashion shows for promotional purposes (organization of -); organization of exhibitions for commercial or advertising purposes; arranging newspaper subscriptions for others; efficiency experts; psychological testing for the selection of personnel; economic forecasting; production of advertising films; bill-posting; direct mail advertising; advertising by mail order; radio advertising; television advertising; compilation of statistics; writing of publicity texts; public relations; document reproduction; secretarial services; personnel recruitment; photocopying services; business management of sports people; telemarketing services; systemization of information into computer databases; opinion polling; arranging subscriptions to telecommunication services for others; shorthand; administrative processing of purchase orders; transcription; word processing; business appraisals; auctioneering; auditing.

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.

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 auctioneering covers services rendered by specialised companies (auction agencies) that mediate the process of buying and selling of goods or services by offering them up for bidding, taking bids and then selling the item to the highest bidder.

The contested rental of vending machines consists of providing third parties with the right to use the goods in exchange for an amount of money to be paid by the users.

The remaining contested services in this class (the general indications business management, business administration and office functions, the remaining items that are included in or fall within the natural and usual meaning of these general indications as well as the services that pertain to the category of advertising) are aimed at supporting or helping other business do or improve their business. Business management services refer 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). The contested services falling under the category of advertising services (for example direct mail advertising, radio advertising, television advertising) are also provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

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 and distribution channels are also distinct. Therefore, they are found to be dissimilar.

Contested services in Class 45

The same conclusion of dissimilarity must be reached when comparing the contested services for which protection is sought in Class 45 (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.

Conclusion

According to Article 8(1)(b) CTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected insofar as based on CTM registration No 9 507 161 for the word mark ‘BOOK’.

The examination of the opposition will continue in relation to the following six earlier rights: CTMs No 5 585 518, No 9 151 192, No 9 151 168, No 9 776 618, No 10 782 555 and No 10 782 597 ‘FACEBOOK’/‘ ’

B.2.) CTM registrations No 5 585 518, No 9 151 192, No 9 151 168, No 9 776 618, No 10 782 555 and No 10 782 597 ‘FACEBOOK’/‘ ’

a) The goods and services

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

The contested services are the following:

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

Some of the contested services are identical to services of earlier marks No 5 585 518, No 9 151 192, No 9 151 168, No 9 776 618 on which the opposition is based (for instance the contested marketing research in Class 35 which is equally protected under the earlier CTM No 9 151 168 and No 9 151 192, the contested administrative processing of purchase orders in the same class which overlaps with the opponent’s electronic processing of bill payment data for users of computer and communication networks of earlier CTM No 9 776 618 or the contested security services for the protection of property and individuals in Class 45 which are covered by the earlier CTM No 5 585 518).

As regards the opponent’s CTM No 10 782 555 and No 10 782 597, although the services in question are not identical, it is clear that some of the contested services are similar to the services covered by these other earlier marks (for example the contested photocopying services in Class 35 and the earlier printing services in Class 40).

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the contested services with those of the earlier marks. The examination of the opposition will proceed as if all the contested services were identical to the services of the earlier marks No 5 585 518, No 9 151 192, No 9 151 168 and No 9 776 618 and respectively similar to the services of earlier marks No 10 782 555 and No 10 782 597.

b) The signs

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

c) Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

In terms of distinctiveness, the common element ‘-book’ of the earlier marks and the contested sign will be associated by part of the public with a written work or a number of printed/written pages bound together. Bearing in mind the relevant services, it is considered that this element is not particularly strong for some of them, as it may be seen as indicating the object of those services (for example printing services in Class 40 or legal services in Class 45). The part of the relevant public that understands the meaning of this element will not pay as much attention to it as to the other, more distinctive, elements of the marks. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The signs have no element which could be considered more dominant (visually eye‑catching) than other elements.

d) Distinctiveness of the earlier marks

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

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection in the European Union and in all the Member States in connection with all the goods and services for which they are registered. This claim has already been assessed under the ground of Article 8(5) CTMR and reputation has been established only in relation to social networking and related services in Classes 38, 41, 42 and 45.

As regards the remaining goods and services for which the earlier marks are registered, no enhanced distinctiveness or reputation has been established.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning in relation to any of the relevant services at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence (where applicable) of a weak element as stated above in section c) of this decision.

e) 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 level 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 both the public at large and business consumers. Depending on the nature and type of the services, the level of attention is likely to vary from average to higher than average.

f) Global assessment, other arguments and conclusion

The examination of the opposition has proceeded on the assumption that the remaining contested services in Classes 35 and 45 are identical to the earlier services covered by CTMs No 5 585 518, No 9 151 192, No 9 151 168, No 9 776 618 and respectively similar to the earlier services covered by CTMs No 10 782 555 and No 10 782 597. This represents 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.

Indeed, the coinciding part is located at the end of the earlier marks 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, ‘FACE-’ in the earlier marks versus ‘Claim-’ in the contested sign, has an impact on their overall appearance and is of such a nature as to create a dissimilar effect, enabling the public to safely distinguish, visually and aurally, between them.

Further, it has to be noted that the overall appearance of the marks is also quite distinct. Four of the earlier marks are word marks, while the other two are figurative marks in blue and white colours. On the other hand, the contested sign is also a figurative mark portraying figurative and verbal elements. It is true that in signs consisting of both verbal and figurative components, in principle it is the verbal component that usually has a stronger impact on the consumers; that does not mean that the figurative element in the contested sign will be ignored completely and/or overlooked by the relevant public. It is also true that the blue rectangle of the earlier CTMs No 9 151 168 and No 10 782 597 is not particularly imaginative; nevertheless, it will not go unnoticed either and will further increase the overall different impression of the marks.

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) CTMR, although the ambit of this article is greater than that of Article 8(1)(b) CTMR.

Additionally, as already specified above in the analysis of the grounds of Article 8(5) CTMR, the degree of similarity of the signs required under this article differs from the one required under Article 8(1)(b) CTMR. 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) CMTR.

Against this background and taking into consideration all the facts set out above, the Opposition Division finds that the different elements of the marks are clearly perceptible and safely counteract the similarities between the signs, resulting in a different overall impression of the marks. Consequently, the relevant public is not likely to believe that the earlier marks and the contested sign, even if applied on identical or similar 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) CTMR. 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 and 45.

COSTS

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

Danka GAŠPERANOVÁ

Oana-Alina STURZA

Simona MACKOVÁ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.

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