OPPOSITION No B 2 994 021

Airbnb, Inc., 888 Brannan Street, 4th Floor, 94103 San Francisco, United States of America (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Ciaomanager S.r.l., Via Ragazzi del '99, 17, 38123 Trento, Italy (applicant), represented by Biesse S.r.l., Via Corfù, 71, 25124 Brescia, Italy (professional representative).

On 09/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 994 021 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all of the goods and services of European Union trade mark application No 17 101 023 ‘Ciaobnb’ (word mark). The opposition is based on European Union trade mark registrations No 9 376 468 and No 11 933 611, both for the word mark ‘AIRBNB’. The opponent validly invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE GROUNDS FOR THE OPPOSITION

According to Article 46(1) EUTMR, the notice of opposition must be filed within a period of three months following the publication of the EUTM application.

According to Article 2(2)(c) EUTMDR, the notice of opposition shall contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), (5) or (6) EUTMR are fulfilled. In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents.

According to Article 5(3) EUTMDR, if the notice of opposition does not contain grounds for opposition in accordance with Article 2(2)(c) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

The contested EUTM application was published on 17/08/2017. The opposition period expired on 17/11/2017.

On 17/11/2017, the opponent submitted a notice of opposition against the contested EUTM application. In relation to the two earlier marks on which the opposition is based (as listed in ‘Reasons’ above) the opponent indicated only one ground for opposition, namely Article 8(1)(b) EUTMR. The notice of opposition was accompanied by a document titled ‘Grounds for the opposition’ in which the opponent exclusively relied on Article 8(1)(b) EUTMR.

On 29/05/2018, the opponent submitted further facts, evidence and arguments to support its claims. In these submissions, the opponent’s arguments were based on Article 8(1)(b) EUTMR and, additionally, on Article 8(5) EUTMR.

Although the notice of opposition, insofar as the ground of Article 8(1)(b) EUTMR is concerned, was correctly filed within the opposition period, the ground of Article 8(5) EUTMR was lodged after the expiry of the period of three months following the publication of the EUTM application against which it is directed. Consequently, the opposition is inadmissible insofar as it is based on Article 8(5) EUTMR.

Therefore, the opposition will be examined only in relation to Article 8(1)(b) EUTMR. For the sake of clarity, it is noted that the opponent’s claim for reputation of the earlier marks, and the evidence submitted to this effect, will be assessed as a claim for enhanced distinctiveness which is a relevant factor under Article 8(1)(b) EUTMR.

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

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

a) The goods and services

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

1) Earlier EU trade mark registration No 9 376 468

Class 35: Providing online business directories featuring temporary lodging; providing an online interactive website obtaining users comments concerning business organizations, service providers, and other resources; providing information, namely, compilations, rankings, ratings, reviews, referrals and recommendations relating to business organizations, service providers, and other resources using a global computer network; advertising and promotion services and related consulting; preparation of custom or non-custom advertising for businesses for dissemination via the web; dissemination of advertising for others via a global communications network; online advertising services for others, namely, providing advertising space on internet web sites; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers; advertising and advertisement services; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others; on-line trading services to facilitate the sale of goods and services by others via a computer network and providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods and services, buyers' and sellers' performance, delivery, and overall trading experience in connection therewith; advertising and advertisement services; on-line trading services in which seller posts items to be auctioned and bidding is done electronically, and providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods, buyers' and sellers' performance, delivery, and overall trading experience in connection therewith; advertising and information distribution services, namely, providing classified advertising space via the global computer network; providing consumer product and service information via the Internet; providing an online business information directory on the Internet; computerized database management; providing on-line computer databases and on-line searchable databases featuring classified listings and want ads; classified listings for rentals of a wide-variety of consumer and business goods; computer services, namely, providing on-line computer databases and on-line searchable databases featuring consumer information on a wide variety of topics of general interest to the consuming public; business management; business administration; office functions; providing online computer database and online searchable databases featuring rental and leasing advertisements for housing, apartments, condominiums, townhouses, real estate and commercial real estate.

Class 36: Providing an online interactive website featuring the listing and rental of temporary lodging; providing online computer database and online searchable databases featuring information, listings and announcements about housing, apartments, condominiums, townhouses, real estate, commercial real estate; real estate listing, rental and leasing services for residential housing, apartments, rooms in homes, sublets, vacation homes, cabins and villas and office space in commercial properties on a global computer network; providing reviews and feedback about listers and renters of real estate, form virtual communities and from social networking sites; electronic commerce payment services, namely, processing payments for the purchase of goods and services via an electronic communications network; providing purchase protection services in the field of on-line trading of goods and services by others via a global computer network; Insurance; financial affairs; monetary affairs; real estate affairs.

Class 38: Providing online interactive bulletin board for transmission of messages among computer users concerning listing, rental and leasing of real estate; electronic mail service; providing online electronic bulletin boards for transmission of messages among computer users concerning rankings, ratings, reviews, referrals, and recommendations relating to business organizations and service providers; telecommunications services, namely, the electronic transmission of data and information; providing an online, interactive bulletin board for the transmission of messages among computer users concerning hobbies, collectibles, trading, and the sale of goods and services via a global communications network; providing on-line forums and discussion groups for transmission of messages among computer users; electronic mail subscription services; and electronic transmission of images; telecommunications.

Class 39: Online trip and travel recommendations and reservation services; providing travel information over global computer networks, namely, providing search services for travel listings, travel information and related travel topics and for making reservations and bookings for transportation; providing travel information via a global computer, namely, providing reviews and recommendations of local attractions (sightseeing services); listing, arranging and reservation services for the sharing of vehicles and rides among vehicle owners and individuals seeking transportation, over a global computer network; listing, arranging and reservation services for the temporary parking of vehicles at listers' residences or businesses by vehicle owners seeking parking, over a global composter network; providing a website featuring information listings and bookings of car sharing and temporary parking services; providing a web site featuring listings and information concerning peer-to-peer transportation services; transport; packaging and storage of goods; travel arrangement; travel agency services, namely, making reservations and bookings for transportation.

Class 41: Providing online newsletters featuring lodging and travel information and reviews of lodging and travel providers; social club services, namely, arranging, organizing and hosting social events, get-to-gathers, parties and meet-ups for club members; special event and party planning and coordination services; education; providing of training; entertainment; sporting and cultural activities.

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

Class 43: Arranging temporary housing accommodations; providing online reservation services for temporary lodging; travel agency services, namely, making reservations and bookings for lodging; providing temporary lodging information via the Internet; services for providing food and drink; temporary accommodation; providing travel information over global computer networks, namely, providing search services for lodging.

Class 45: Providing a social networking web site for entertainment purposes; legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

2) Earlier EU trade mark registration No 11 933 611

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer hardware; computer peripherals; computer software; computer software for mobile devices; fire-extinguishing apparatus; downloadable connected software platform; software platform that facilitates the provision of information, peer-to-peer interaction and transactions, and the booking of temporary accommodations in the fields of travel, lodging, dining, and entertainment; application programming interface (API) software.

Class 35: Business consulting and management services; business consulting and management services in the nature of arranging, organizing, advising about and providing various services, including photography services and cleaning services; advertising; business management; business administration; office functions; providing a web site featuring the ratings, reviews and recommendations for commercial purposes posted by users; Providing a web site featuring the ratings, reviews and recommendations of lodging, accommodations, travel, dining, and entertainment-related establishments for commercial purposes posted by users; providing online business directories; providing online business directories featuring temporary accommodations; consulting services for owners of rental properties, namely assisting property owners to better advertise their property over the internet and to create their rental listings in order to maximize interest.

Class 36: Consulting services, namely, rental property consulting services.

Class 37: Providing, organizing and arranging cleaning services; consulting services for owners of rental properties, namely cleaning services.

Class 39: Online journals, namely, blogs and video logs in the fields of travel around the world; providing information in the fields of travel; social and collaborative travel.

Class 41: Social club services; organizing and hosting meet-ups and events; online journals, namely blogs and video logs featuring multimedia content; online journals, namely, blogs and video logs in the fields of entertainment around the world; photography services; providing information in the fields of entertainment; education; providing of training; entertainment; sporting and cultural activities; providing, organizing and arranging photography; social and collaborative entertainment services; consulting services for owners of rental properties, namely facilitation of photography services.

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; providing temporary use of non-downloadable, web-based, and cloud-based software; software as a service (SAAS) services; platform as a service (PAAS) services; providing an online non downloadable, web-based and cloud-based software platform; providing an online non-downloadable, web-based, and cloud-based connected software platform that facilitates the provision of information, peer-to-peer interaction and transactions, and bookings in the fields of travel, lodging, dining, and entertainment; application service provider featuring application programming interface (API) software.

Class 43: Online journals, namely, blogs and video logs in the fields of lodging and dining around the world; providing information in the fields of lodging and dining; social and collaborative lodging and dining.

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; authentication services; travel and lodging-related authentication services; consulting services for owners of rental properties, namely security services; concierge services; real property security services, in the nature of remote property locking and security controls; providing online and offline social networking and introduction services; providing a social networking website.

The contested goods and services are the following:

Class 9: Software; Computer software platforms; Computer application software; Freeware; Computer shareware; Interfaces for computers; Virtual reality software; Authentication software; Business management software; Computer programmes for data processing; Data communications software; Computer software for use as an application programming interface (API); Security tokens [encryption devices].

Class 35: Internet marketing; Business analysis, research and information services; Advertising, marketing and promotional services; Business assistance, management and administrative services.

Class 39: Travel information; Travel consultancy and information services; Travel courier services; Tour reservation services; Arranging of travel tours; Travel guide and travel information services; Travel reservation.

Class 41: Musical events (Arranging of -); Organising of recreational events; Organising events for cultural purposes; Training; Entertainment services; Publishing of reviews.

Class 42: Updating of computer software; Software creation; Software development; Computer software design; Website development services; Design of web pages; Programming of web pages; Web portal design; Hosting web portals; Maintenance of websites; Hosting web sites; Programming of customized web pages; Hosting of customized web pages; Web site design and creation services; Hosting websites on the Internet; Software as a service [SaaS]; Platform as a Service [PaaS]; Cloud computing; Encryption, decryption and authentication of information, messages and data.

Class 43: Providing temporary accommodation; Tourist inns; Arranging of accommodation for holiday makers; Temporary accommodation reservations; Hospitality services [accommodation]; Providing reviews of restaurants and bars; Hotel services; Information relating to hotels; Hotel reservations; Electronic information services relating to hotels; Booking of hotel accommodation.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For example, the contested software in Class 9 includes, as a broader category, the opponent’s computer software in Class 9 of earlier mark 2, and it is impossible for the Opposition Division to dissect ex officio the broad category of the contested goods. Advertising is identically contained in all of the lists of services in Class 35. The contested travel information in Class 39 refers to the same services as the opponent’s providing information in the field of travel in Class 39 of earlier mark 2; the same contested term includes, as a broader category, the opponent’s providing travel information over global computer networks, namely, providing search services for travel listings, travel information and related travel topics and for making reservations and bookings for transportation in Class 39 of earlier mark 1.

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

b) Relevant public — degree of attention

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

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

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

c) The signs

AIRBNB	Ciaobnb
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Although the signs are composed of one verbal element, it must be considered that the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

For a part of the public in the relevant territory, such as the public in the Anglophone territories, both signs are made-up words wherein each of the elements has its own literal meaning.

In particular, when encountering the earlier marks the English-speaking part of the public is likely to perceive two meaningful elements. The first element, ‘AIR’, means, inter alia, ‘the space around things or above the ground’ and ‘the mixture of gases that we breathe’. The second element, ‘BNB’, is likely to be associated with ‘Bed and Breakfast’ which refers to a small lodging establishment that offers overnight accommodation and breakfast, although the usual abbreviated form of this concept is ‘B&B’. It must be borne in mind that these meanings will be understood not only in the territories where English is the official language, but also throughout the European Union by those consumers who are sufficiently familiar with English as a foreign language.

The element ‘AIR’ of the earlier marks is weak for the English-speaking part of the public in relation to the goods and services that are related to travel and transport, since it alludes to transport ‘by air’. For the remaining goods and services, this concept is fanciful and the element’s distinctiveness is not impaired.

Regarding the distinctiveness of the element ‘BNB’ the following must be considered. Part of the goods and services that are at issue in the present assessment are supplied for the management or administration of establishments that provide temporary accommodation, are aimed at helping others to render such services via online platforms and software applications, or even through training and promotion. Therefore, a sufficiently close connection exists between this part of the goods and services and the element ‘BNB’, a notion that denotes a type of lodging.

The opponent argues that it does not operate ‘Bed and Breakfasts’; rather, the opponent operates a pioneering online marketplace that allows users to publish the offering of accommodations, vacations and experiences, and the bookings of the same. However, it must be recalled that the comparison of signs is an objective comparison that must be based on the inherent distinctiveness of the signs (or their elements). Moreover, distinctiveness of the elements must be assessed against the goods and services on which the opposition is based, but not the business activities for which the earlier marks are actually used, or for which they may have acquired enhanced distinctiveness through use.

In this context, for the English-speaking part of the public, the element ‘BNB’ has limited distinctiveness (ranging from none at all, to well below average) since it merely provides descriptive information about, or at least alludes to, the kind or subject matter of the goods and services, the specialisation of the service provider or other objective characteristics. Nevertheless, there are goods and services that are very remote from this particular type of business, e.g. goods in Class 9 that have a highly technical nature, entertainment services in Class 41 or other services that are not commonly provided specifically for the ‘Bed and Breakfast’ market niche etc. To that extent, the concept of the element ‘BNB’ is fanciful and the distinctiveness of this element is average for those goods and services.

In the contested sign, a significant part of the public will recognise the element ‘CIAO’ as an informal greeting in Italian, on account of its international use, including in the Anglophone territories. It is arbitrary in relation to the goods and services at issue and has an average degree of distinctiveness. This part of the public is likely to perceive the rest of the letters in the contested sign, ‘BNB’, as an element which has the same meaning as its counterpart in the earlier marks. Its degree of distinctiveness varies accordingly.

For the remaining part of the public in the relevant territory, however, the signs under comparison will be indivisible units that lack any clear or immediately perceptible meaning. Consequently, this part of the public will not perceive any elements in the signs and their degree of distinctiveness is not at stake.

For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will first assess the signs from this perspective as this is the most advantageous scenario for the opponent.

Visually, the signs coincide in the three-letter string ‘BNB’. However, the signs differ in the letters ‘AIR’ present in the earlier marks, and the letters ‘CIAO’ in the contested sign.

It is admittedly true that the signs have the same structure and both comprise a single word element. They have similar lengths. It is also acknowledged that, for the purposes of the comparison of word marks, the fact that the earlier marks are represented in upper case letters, whilst the contested sign is depicted in title case is immaterial.

Nevertheless, the differences in the letter sequences ‘AIR’ and ‘CIAO’ are striking.

In this regard, account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

This factor dramatically decreases the relevance of the letters ‘BNB’ that are placed in the endings of the signs where they are less likely to be noticed. It has to be borne in mind that the present assessment is carried out from the perspective of that part of the public which will not single out any elements in either of the signs. Rather, the public will perceive them as words that merely coincide in a few letters.

The opponent’s argument that the beginnings of the signs both contain the letters ‘A’ and ‘I’ does not contribute anything to the similarity between the signs, since their order and, consequently, their adjacent letters are clearly different and they do not form a memorable letter sequence that would have a relevant impact on the comparison.

Therefore, the signs are similar to a low degree visually.

Aurally, irrespective of how exactly the public may pronounce the signs, their pronunciations coincide in the sounds of the letters ‛B-N-B’. They are likely to be sounded out as separate phonemes since it would be cumbersome to enunciate this consonant cluster otherwise. However, the pronunciations of the signs differ in the sounds of the letters ‛AIR’ of the earlier marks and the sounds corresponding to the letters ‘CIAO’ present in the contested sign.

The opponent argues that the signs are phonetically very similar since the differentiating letters in each sign would be pronounced in one syllable. It is accepted that this may be so for a part of the relevant public, whilst the rest will enunciate the letters ‘AIR’ and ‘CIAO’ in several syllables, depending on the grouping of the vowels in that particular language. Be that as it may, the fact remains that there would be a vast difference in the sounds of these syllables, on account of the different consonants and the perceptible differences in the order of the vowels or diphthongs, irrespective of the actual manner of the pronunciation.

Therefore, and taking into consideration similar factors as stated for the visual comparison of the signs, it is considered that the degree of aural similarity between the signs varies from low to somewhat below average, but not higher than that.

Conceptually, neither of the signs has a meaning for the part of the public which the present assessment focuses on. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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 a reputation and they enjoy a high degree of recognition among the relevant public the European Union in connection with all of the registered goods and services. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

List of evidence

The opponent submitted the following evidence:

Annex 1: The article Hotel Investors May Be Ignoring The Airbnb Threat, dated 24/09/2017, published on the investors’ advice website ‘my.fool.com’. According to this article, Airbnb was founded in 2008 as a home-sharing start-up, and in 2017 it was worth USD 31 billion, putting it ahead of important players in the global hotel industry, such as Hilton, InterContinental and Hyatt Hotels. It is pointed out that Airbnb had more rooms available than the five biggest hotel brands combined, with their revenues jumping more than 80% in 2016. The author of the article suggests that Airbnb’s barnstorming would probably continue and notes that this travel site was expanding into ancillary businesses like experiences, allowing ‘hosts’ to offer tours or other kinds of activities designed for tourists, including the future plan to allow flight bookings on its platform. The author stresses Airbnb’s on-demand, user-based business model that was enabled by smartphones. It is also mentioned that Airbnb had moved into the business travel market and was fast becoming mainstream.

Annex 2: The Hotels 50 2018 annual report on the most valuable hotel brands, dated February 2018, drawn up by Brand Finance, the ‘world’s leading independent brand valuation and strategy consultancy’. According to the report, online community accommodation sites, like Airbnb, may be ‘the biggest threat to the hotels industry’. ‘Though the Airbnb brand is not included in the Brand Finance Hotels 50 league table by virtue of not owning properties themselves, Airbnb’s brand value rose by more than 51% to over USD 5.5 billion this year. This marks the first time in which Airbnb’s brand value exceeds that of all but one hotel brand valued in the Hotels 50 - Hilton. Given Hilton’s downward trend, it would not be surprising to see Airbnb surpass all hotel brands in the 2019 table. What is more, Airbnb may soon come into much more direct competition with hotels as it begins to target business travellers through their ‘Airbnb for Business’ program, which launched in the second half of 2017. Time will tell if hotels move to collaborate with Airbnb in the future or try to compete by providing authentic personalised services to consumers, raising the game for guest experience.’

Annex 3: The Global 500 2018 annual report, dated February 2018, drawn up by Brand Finance. Airbnb was ranked at 316 of the most valuable brands in the world in 2018.

Annex 4: The survey on The Most Innovative Companies 2018, dated January 2018, drawn up by the Boston Consulting Group. Airbnb was ranked 11^th of the most innovative companies. According to the survey, ‘the travel and transportation sector has expanded its presence as some companies—including Uber, Airbnb, and SpaceX—demonstrate the disruptive potential of digital technologies and digital business models wielded in combination.’

Annex 5: Four press articles, namely Airbnb Launches First Global Ad Campaign In Nine Markets, published on 09/05/2014 at ‘adage.com’; Airbnb Turns A Touching Berlin Wall Anniversary Story Into Ad Campaign, published on 07/11/2014 at ‘mashable.com’; Sweet Dreams? Airbnb Contest Lets You Sleep With The Sharks, published on 30/03/2016 at ‘cnbc.com’; and Airbnb France To Pay 50 Cities 13.5 Million Euros From Its Rentals, published on 30/01/2018 at ‘propertyportalwatch.com’. According to one of the articles, Airbnb’s advertising campaign was planned in the USA, the United Kingdom, Germany, France, Singapore, South Korea, Japan, Brazil and China on digital and mobile, as well as in-cinema, in-flight and in out-of-home placements, on YouTube, Lonely Planet, BBC, Facebook and Twitter in June 2014. Another article provides information on the fact that the Airbnb vacation rental platform contributed 13.5 million euros to fifty French cities from the money raised through fees to its rents, thus imitating the tax that exists in hotels and other tourist residences in France. The last one of the articles is dedicated to the Airbnb’s campaign offered together with Aquarium de Paris in France.

Annex 6: A selection of news articles, published from 07/07/2014 to 14/05/2018 (some undated), on ‘metro.co.uk’, ‘realbusiness.co.uk’, ‘selimsraasta.com’, ‘smallbusiness.co.uk’, ‘vinepair.com’, ‘airbnb.es’, ‘airbnbcitizen.com’, ‘italianfix.com’, ‘meetpie.com’, ‘pcmag.com’, ‘telegraph.co.uk’, ‘independent.co.uk’, ‘marketplace.org’, ‘travelandleisure.com’, ‘passthekeys.co.uk’, ‘international.agi.it’, ‘brides.com’ and ‘express.co.uk’. Essentially, these articles provide promotional information to investors and the Airbnb community members, and give travel advice to the general public by highlighting the most unusual or interesting Airbnb accommodations in the following countries: the United Kingdom, Italy, France, Spain and Austria, for example Experience With Airbnb – Unexpected Surprises in Pavia, Italy; 6 Of The Coolest Places To Stay In Burgundy On Airbnb; and 21 Crazy But Amazing Airbnb Rentals You Should Book Now. One of the aspects covered by these articles is the significant boost to the local economies and people that the Airbnb business has brought, for example How Airbnb Has Become A Source Of Funding For UK Entrepreneurs’ Businesses; New Study: Airbnb Community Contributes $175 Million to Barcelona’s Economy; Airbnb’s Economic Impact Across The UK; Airbnb Growing At “Breakneck” Speed In The UK; 64% More Guests In Mecklenburg-Vorpommern In 2017 Thanks To Airbnb; Female Hosts In Austria Earned Around €40 Million On Airbnb In 2017; Vacation Rental Sites Are Helping To Save French Châteaux; and Airbnb Hosts And Guests Generated An Economic Activity Of €4.2 Billion In Spain In 2016.

Annex 7: The article Airbnb’s Rise And The Sharing Economy, published on 06/01/2017 at ‘ejinsight.com’, dedicated to the fact that AMP Capital, a large global investment manager, considered Airbnb to be the most valuable lodging provider in the world. ‘Airbnb is the most recognizable international brand in the emerging “accommodation sharing economy”, which refers to the growing number of property owners who are making their dwellings available for short-term rentals. […] The accommodation sharing economy is facilitated via a number of internet platforms, most notably Airbnb, which have greatly boosted the viability of short-term rentals as an alternative to traditional hotels. These new platforms increase the ease of marketing properties, managing bookings and facilitating payment, and have led to an explosion in the use of short term rentals.’

Annex 8: The article Airbnb Finding Favour With German And Spanish Travellers, published on 08/01/2016 at ‘tnooz.com’.

Annex 9: The fact-sheet from the opponent (undated), showing top countries in the number of listings, including France, Italy, Spain and the United Kingdom, with the total number of 1,245.000 listings.

Annex 10: The article Airbnb Now Has More Listings Worldwide Than The Top Five Hotel Brands Combined, published on 10/08/2017 at ‘businessinsider.de’. According to the article, the U.S.A. remain Airbnb's biggest market with 660,000 listings, followed by France, Italy, Spain and the UK.

Annex 11: The document titled Airbnb Community Data, printed on 15/05/2018 from ‘airbnbcitizen.com’. The document shows some key indicators of Airbnb activities, for example the number of guest arrivals and the typical income earned by the host, in the following countries: the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

Annex 12: The European Commission’s Exploratory Study Of Consumer Issues In Online Peer-to-peer Platform Markets. Case Study: Airbnb, dated February 2017. The study provides extensive information about the opponent’s business platform and it is mentioned that Airbnb is by far the most popular accommodation sharing platform in the EU, followed by its competitors ‘Idealista.es’ (Spain), ‘Imoti’ (Bulgaria), ‘HomeAway’ (worldwide) or ‘Wimdu’ (worldwide).

In addition, as it is pointed out in the opponent’s submissions accompanying the evidence, Airbnb was among the Top 20 ‘CoolBrands’ (12^th), according to the results of the ‘Cool Brand’ ranking in 2016/2017. The opponent has submitted a screenshot of the ranking to back up this statement and explains that the ‘Cool Brands’ are chosen by an expert council and 2,500 members of the British public.

Assessment of the evidence

It is clear from the evidence that the earlier trade marks have been subject to intensive use and are generally known in the relevant market, where Airbnb enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. Users (peer consumers and peer providers) can access the Airbnb platform in all of the EU Member States. The marketing efforts, the various references in the press to the brand’s success and the brand rankings suggest that a substantial part of the general public is familiar with the opponent’s trade marks. Although the use has not been particularly long (since 2008), there is overwhelming evidence that the Airbnb business has grown at a ‘breakneck speed’, which is common for business models that are based on mobile technologies. The evidence refers to the brand as having caused ‘an explosion in the market of short-term rentals’ and as becoming ‘mainstream’. The key indicators of the business activities associated with the brand, such as the numbers of listings and guests demonstrate the immense popularity of the Airbnb platform throughout the relevant territory.

Based on the above, the Opposition Division concludes that the evidence submitted by the opponent demonstrates that the ‘AIRBNB’ trade marks enjoy a high degree of recognition among the relevant public and that they had acquired enhanced distinctiveness in the European Union before the filing date of the contested EUTM application (11/08/2017).

However, the evidence does not succeed in establishing that the earlier marks have enhanced distinctiveness for all of the goods and services which the opponent’s claim refers to. The evidence mainly relates to the following goods and services:

1) Earlier EU trade mark registration No 9 376 468

Class 35: Providing online business directories featuring temporary lodging; providing online computer database and online searchable databases featuring rental and leasing advertisements for housing, apartments, condominiums, townhouses and real estate.

Class 43: Providing online reservation services for temporary lodging.

2) Earlier EU trade mark registration No 11 933 611

Class 9: Software platform that facilitates the provision of information, peer-to-peer interaction and transactions, and the booking of temporary accommodations in the fields of travel, lodging, dining, and entertainment.

Class 35: Providing a web site featuring the ratings, reviews and recommendations of lodging, accommodations, travel, dining, and entertainment-related establishments for commercial purposes posted by users; providing online business directories featuring temporary accommodations.

Class 42: Providing an online non-downloadable, web-based, and cloud-based connected software platform that facilitates the provision of information, peer-to-peer interaction and transactions, and bookings in the fields of travel, lodging, dining, and entertainment.

There is no or little reference to the remaining goods and services. This is clear, for example, from the press clips, the brand rankings, the key indicators of the Airbnb community in numerous Member States, and the European Commission’s Case Study, where Airbnb is essentially referred to as an online platform, and a related mobile application, where peer providers can publish the offering of accommodations, vacations and experiences and peer consumers can book the same.

Consequently, insofar as the remaining goods and services are concerned, 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 clear meaning for any of the goods and services in question from the perspective of the part of the public which the present assessment is focused on. To that extent, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods and services have been assumed identical to those on which the opposition is based. They are directed at the public at large and at professionals, whose degree of attention will not be low. On the contrary, in relation to the purchases in question the public’s attentiveness will vary from average to high.

Although the earlier marks have acquired enhanced distinctiveness through use in connection with part of the goods and services on which the opposition is based, it has to be kept in mind that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The Opposition Division has focused the present assessment on the part of the public in the European Union for which the signs are conceptually neutral and for which the distinctiveness of the common element between the signs, ‘BNB’, is not an issue. This is the best light in which the opponent’s case can be considered.

However, as shown in detail in section c) of this decision, even for this part of the public there are immediately perceptible differences between the signs that keep their overall impressions sufficiently far apart. The finding of a somewhat below average degree of aural similarity from the perspective of a part of the public is incapable to dispel the differences residing in the initial parts of the words ‘AIRBNB’ and ‘Ciaobnb’ resulting in a low similarity on the visual level. Indeed, the differences are so striking that they prevail the enhanced degree of distinctiveness of the earlier marks that has been established for some of the goods and services. It is, therefore, unlikely that the public may believe that the goods and services in question originate from the same or economically-linked undertakings.

Considering all the above, even assuming that the goods and services are identical and taking into consideration the enhanced degree of distinctiveness of the earlier marks for part of the opponent’s goods and services, there is no likelihood of confusion on the part of the public for which the signs under comparison have no meaningful elements.

This absence of a likelihood of confusion equally applies to the remaining part of the public for which the common element, ‘BNB’, has limited distinctiveness for some of the goods and services, for the reasons given in section c) of this decision. This is because, as a result of the diminished distinctive character of that element, this part of the public will perceive the signs as being even less similar. However, in relation to those goods and services for which the element ‘BNB’ is considered to be distinctive, it is important to note that the potentially higher similarity between the signs is counteracted by the fact that for these goods and services the earlier marks have not acquired enhanced distinctive character.

The opponent argues that the public may assume that the contested trade mark, ‘Ciaobnb’, designates a special service that ‘AIRBNB’ is offering, e.g. accommodations in Italian properties, or that ‘Ciaobnb’ and ‘AIRBNB’ are working together and have some business relationship, e.g. for accommodations in Italy. The Opposition Division accepts that the public may perceive the contested sign’s element ‘CIAO’ as somehow associated with Italy. However, this concept will put even more distance between the trade marks. Additional difference between the signs may be perceived due to the semantic content carried by the earlier marks’ element ‘AIR’ (notwithstanding its reduced distinctiveness for some of the goods and services).

Therefore, it is clear that for the remaining part of the public there is no likelihood of confusion either.

Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Zuzanna STOJKOWICZ

Solveiga BIEZA

Biruté SATAITE-GONZÁLEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.