OPPOSITION Nо B 3 050 437

 

Airbnb, Inc., 888 Brannan Street, 4th Floor, San Francisco, 94103 California, United States of America (opponent), represented by Nordemann Czychowski & Partner Rechtsanwältinnen und Rechtsanwälte mbB, Helene-Lange-Straße 3, 14469 Potsdam, Germany (professional representative) 

 

a g a i n s t

 

Piotr Pręgowski, ul. Berneńska 16c, 03-976 Warszawa, Poland, and Jerzy Władysław Pręgowski, ul. Ateńska 47, 03-978 Warszawa, Poland (applicants), represented by Michał Jędrzejewski, ul. Rogalińska 1/44, 01-206 Warszawa, Poland (professional representative).

On 24/02/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 050 437 is upheld for all the contested services.

 

2.	European Union trade mark application No 17 431 206 is rejected in its entirety.

 

3.	The applicants bear the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 17 431 206 ‘farmbnb’ (word mark), namely against all the services in Classes 38 and 42, following a decision further to absolute grounds examination, which partially rejected the application in respect of some of the services. The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 182 496 ‘AIRBNB’ (word mark). The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

 

The Opposition Division will first examine the opposition in relation to earlier international trade mark registration designating the European Union No 1 182 496 ‘AIRBNB’ (word mark), for which the opponent claimed repute in the European Union.

 

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

 

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

 

 The signs must be either identical or similar.

 

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

 

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

 

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

In the present case, the applicants 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.

a) Reputation of the earlier trade mark

According to the opponent, as mentioned above, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that 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 03/11/2017. Therefore, the opponent was required to prove that the trade mark 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:

Class 9: Computer application messaging software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to communicate with each other; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows messaging among guests of lodging accommodations owned and hosted by others and among the hosts who list lodging accommodations for rent and sale; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to plan, announce, invite others to attend and evaluate real world meetings and events; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to solicit each other to perform a wide range of personal and customized services, housekeeping, cooking and related services, personalized travel, itinerary and private tour and activity services; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to arrange for the remote exchange of keys to lodgings, homes and vehicles and for locking and unlocking lodgings homes and vehicles; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software management tools to permit users to manage, organize, calendar and share with others travel bookings, activity dates, photographs, opinions and preferences; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software management tools to permit users to arrange for temporary lodging check-in help; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that permits listers of goods, real property and services for rent or sale to receive suggested improvements to their listing advertisements; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that permits listers of goods, real property and services for rent or sale to arrange for professional photographs of the listed goods, property and services; computer application software; computer application software for mobile phones, portable media players, handheld computers and related mobile devices; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software to facilitate the sale of goods and services by others via a computer network and to provide 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; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to list and rent temporary lodging, access information, listings and announcements about housing, apartments, condominiums, townhouses, real estate, commercial real estate and rental and leasing advertisements for the foregoing; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to provide reviews and feedback about listers and renters of real estate, temporary lodging, transportation, sharing of vehicles and rides and temporary parking; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to make and receive payments for the rental, purchase and sale of goods and services; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to search for travel, transportation, temporary accommodation, vehicle and ride sharing and temporary vehicle parking listings, travel information and related topics and for making reservations and bookings for transportation, temporary accommodations, vehicle and ride sharing and temporary parking; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to provide travel reviews and recommendations for local attractions; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows vehicle owners and users to list, arrange and reserve shared vehicles and rides; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to list, arrange and reserve temporary parking of vehicles at residences and businesses; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to list and book car sharing, ride sharing and temporary parking; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to access information and listing of peer-to-peer transportation; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to engage in social networking featuring travel, transportation, temporary lodging, shared vehicles and rides, temporary parking and the rental and listing of real estate.

Class 42: Computer services, namely, remote management of electronic messaging systems for others; computer services, namely, remote management of electronic messaging systems for others that allows users of mobile phones, portable media players, handheld computers and related mobile devices to communicate with each other; providing temporary use of web-based messaging software applications that allows users of mobile phones, portable media players, handheld computers and related mobile devices to communicate with each other; providing temporary use of web-based messaging software applications that allows users of mobile phones, portable media players, handheld computers and related mobile devices to send and receive messages among guests of lodging accommodations owned and hosted by others and among the hosts who list lodging accommodations for rent and sale; providing temporary use of a web-based software application for identifying and defining the scope and components of projects; providing temporary use of a web-based software application for providing an online marketplace for buyers and sellers of goods and/or services on a global computer network; providing temporary use of a web-based software application for providing a two-way system for users of an online marketplace to evaluate and provide feedback regarding parties they have interacted with via the online marketplace; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to plan, announce, invite others to attend and evaluate real world meetings and events; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to solicit each other to perform a wide range of personal and customized services, housekeeping, cooking and related services, personalized travel, itinerary and private tour and activity services; providing temporary use of webbased software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to arrange for the remote exchange of keys to lodgings, homes and vehicles and for locking and unlocking lodgings homes and vehicles; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to manage, organize, calendar and share with others travel bookings, activity dates, photographs, opinions and preferences; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to arrange for temporary lodging check-in help; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list goods, real property and services for rent or sale and receive suggested improvements to their listing advertisements; providing temporary use of web-based computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to list of goods, real property and services for rent or sale and arrange for professional photographs of the listed goods, property and services; providing temporary use of web-based software application that facilitates use of the internet by users of mobile phones, portable media players, handheld computers and related mobile devices; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to facilitate the sale of goods and services via computer network and to provide 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; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list and rent temporary lodging, access information, listings and announcements about housing, apartments, condominiums, townhouses, real estate, commercial real estate and rental and leasing advertisements for the foregoing; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to provide reviews and feedback about listers and renters of real estate, temporary lodging, transportation, sharing of vehicles and rides and temporary parking; providing temporary use of webbased software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to make payments for the purchases of goods and services; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to search for travel, transportation, temporary accommodation, vehicle and ride sharing and temporary vehicle parking listings, travel information and related topics and for making reservations and bookings for transportation, temporary accommodations, vehicle and ride sharing and temporary parking; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to provide travel reviews and recommendations for local attractions; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list, arrange and reserve shared vehicles and rides; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list, arrange and reserve temporary parking of vehicles at residences and businesses; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list and book car sharing, ride sharing and temporary parking; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to access information and listings of peer-to-peer transportation; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to engage in social networking featuring travel, transportation, temporary lodging, shared vehicles and rides, temporary parking and the rental and listing of real estate; software as a service (SAAS) services featuring messaging software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to communicate with each other; software as a service (SAAS) services featuring messaging software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to send and receive messages among guests of lodging accommodations owned and hosted by others and among the hosts who list lodging accommodations for rent and sale; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to plan, announce, invite others to attend and evaluate real world meetings and events; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to solicit each other to perform a wide range of personal and customized services, housekeeping, cooking and related services, personalized travel, itinerary and private tour and activity services; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to arrange for the remote exchange of keys to lodgings, homes and vehicles and for locking and unlocking lodgings homes and vehicles; software as a service (SAAS) services featuring software management tools that allows users of mobile phones, portable media players, handheld computers and related mobile devices to manage, organize, calendar and share with others travel bookings, activity dates, photographs, opinions and preferences; software as a service (SAAS) services featuring software management tools that allows users of mobile phones, portable media players, handheld computers and related mobile devices to arrange for temporary lodging check-in help; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list goods, real property and services for rent or sale and receive suggested improvements to their listing advertisements; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list goods, real property and services for rent or sale and arrange for professional photographs of the listed goods, property and services; software as a service (SAAS) services featuring software that facilitates use of the internet by users of mobile phones, portable media players, handheld computers and related mobile devices; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to facilitate the sale of goods and services via computer network and to provide 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; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list and rent temporary lodging, access information, listings and announcements about housing, apartments, condominiums, townhouses, real estate, commercial real estate and rental and leasing advertisements for the foregoing; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to provide reviews and feedback about listers and renters of real estate, temporary lodging, transportation, sharing of vehicles and rides and temporary parking; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to make payments for the purchases of goods and services; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to search for travel, transportation, temporary accommodation, vehicle and ride sharing and temporary vehicle parking listings, travel information and related topics and for making reservations and bookings for transportation, temporary accommodations, vehicle and ride sharing and temporary parking; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to provide travel reviews and recommendations for local attractions; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list, arrange and reserve shared vehicles and rides; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list, arrange and reserve temporary parking of vehicles at residences and businesses; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to list and book car sharing, ride sharing and temporary parking; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to access information and listings of peer-to-peer transportation; software as a service (SAAS) services featuring software that allows users of mobile phones, portable media players, handheld computers and related mobile devices to engage in social networking featuring travel, transportation, temporary lodging, shared vehicles and rides, temporary parking and the rental and listing of real estate.

As already mentioned, following a decision further to absolute grounds examination, which partially rejected the application in respect of some of the services, the opposition is directed against the remaining services, namely:

Class 38: Telecommunication of information (including web pages); access to content, websites and portals.

Class 42: Hosting web sites; creating and maintaining web sites for others; provision of search engines for the internet; creation of computer software for internet portals, chatrooms, chat lines and internet forums.

In order to determine the mark’s 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 mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 27/11/2018, within the relevant time limit, the opponent submitted the following evidence:

Attachment 1: results of a survey on the evidentiary issue of whether ‘AIRBNB’ is a ‘well-known mark’, to ascertain consumers’ active, unaided knowledge of the designation ‘AIRBNB’, conducted by Institut für Demoskopie Allensbach among the relevant public in Denmark, France, Germany and the Netherlands in August/September 2018. According to the survey, spontaneous awareness of the sign was found among an average of 49% of all of the respondents in the four EU Member States, and an average of 41% of the total population in these countries had active knowledge of the sign. The evidence contains the methodology of the survey and other relevant data.

Attachment 2: two articles, namely: ‘Hotel Investors May Be Ignoring The Airbnb Threat’, dated 24/09/2017, published on the investors’ advice website my.fool.com, and ‘How Much Is Airbnb Really Worth?’, dated 11/05/2018, published on Trefis. According to the first 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 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. In the second article, Airbnb’s operation is defined as an ‘accommodation marketplace that allows people to list living spaces so that they can be leased or rented by users around the world looking for short-term lodgings.’

Attachment 3: Hotels 50 2018 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.’

Attachment 4: Global 500 Finance Report 2018, dated February 2018, drawn up by Brand Finance, where ‘AIRBNB’ ranks 316 of the most valuable brands in the world that year.

Attachment 5: The Most Innovative Companies 2018 Survey, dated January 2018, drawn up by The Boston Consulting Group, where ‘AIRBNB’ is 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.’

Attachment 6: five 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; ‘Airbnb France To Pay 50 Cities 13.5 Million Euros From Its Rentals’, published on 30/01/2018 at propertyportalwatch.com; ‘Sweet Dreams? Airbnb Contest Lets You Sleep With The Sharks’, published on 30/03/2016 at cnbc.com; and ‘Airbnb In Collaboration with Wonderful Copenhagen’, published on 09/04/2018 at standby.dk. 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. One of the articles is dedicated to the Airbnb’s campaign offered together with Aquarium de Paris in France. The last article provides information on the possibility to book locally arranged ‘experiences’ in Copenhagen through Airbnb.

Attachment 7: a selection of news articles, published from 07/07/2014 to 15/06/2018 (some undated), on different platforms, such as selimsraasta.com, vinepair.com, airbnb.es, airbnbcitizen.com, italianfix.com, meetpie.com, pcmag.com, marketplace.org, travelandleisure.com, international.agi.it, brides.com, romania-insider.com, img.radio.cz, majorcadailybulletin.com, and a translation of an interview published by El Mundo on 24/04/2018. Essentially, part of 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 EU countries such as Italy, France, Spain, Austria, Germany and the Czech Republic, 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’. Another aspect covered by these publications is the significant boost to the local economies and people that the Airbnb business has brought, for example ‘New Study: Airbnb Community Contributes $175 Million to Barcelona’s Economy’; ‘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’; ‘Airbnb Hosts And Guests Generated An Economic Activity Of €4.2 Billion In Spain In 2016’; ‘Over One Million Tourists Used AIRBNB To Visit Czechia In 2017’; ‘Airbnb Hosts In Palma Earned An Average 7,000 Euros Last Year’.

Attachment 8: an 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.’

Attachment 9: an article ‘Airbnb Finding Favour With German And Spanish Travellers’, published on 08/01/2016 at tnooz.com.

Attachment 10: a fact-sheet from the opponent (undated), stating that by March 2017, ‘AIRBNB’ had 4 000 000 listings worldwide in more than 191 countries, and a total of approx. 1 070 000 listings in France, Italy and Spain alone. The opponent adds in its submissions, that ‘AIRBNB’ had more than 150 million users worldwide, while (at the time of submitting the submissions) it currently has more than 2 000 000 active listings in Europe.

Attachment 11: an 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 US remains Airbnb’s biggest market with 660,000 listings, followed by France, Italy and Spain. Globally, the opponent under its mark ‘AIRBNB’ offers nearly 5 million listings in more than 191 countries and has more bookable listings available than the top five hotel chains combined.

Attachment 12: a document from the opponent (airbnbcitizen.com) ‘Airbnb Community Data’, printed on 05/15/2018, showing some key indicators of Airbnb activities, for example the number of guest arrivals and the typical income earned by the host, in the following EU countries: Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.

Attachment 13: 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).

On 12/09/2019, after expiry of the time limit, the opponent submitted additional evidence.

In the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on the date referred to above can remain open, as the evidence submitted within the time limit is sufficient to prove the reputation of the earlier trade mark.

Assessment of the evidence

It should be recalled that the evidence should be assessed as a whole, that is, each indication should be weighed up against the others, with information confirmed by more than one source generally being considered more reliable than facts derived from isolated references. Indeed, the more independent, reliable and well-informed the source of the information is, the higher the probative value of the evidence will be.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was known during the relevant time period and the real intentions of the EUTM proprietor at that time (by analogy, 27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to recognition of the mark outside the relevant term is taken into account because it refers to periods that are very close in time to the relevant one (i.e. some months after the filing date of the contested application).

It is clear from the evidence that the earlier trade mark has been subject to intensive use and is 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 mark. 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. The several press references to the brand’s success dated within the relevant period, as well as, inter alia, the European Commission’s Exploratory Study Of Consumer Issues In Online Peer-to-peer Platform Markets. Case Study: Airbnb, dated February 2017, together with the rates of spontaneous awareness and active knowledge of the ‘AIRBNB’ brand (49% and 41%, respectively) in Denmark, the Netherlands, France and Germany, as revealed in a reliable market survey conducted some months after the relevant date in 2018, strongly contribute to the finding of a high degree of brand awareness on the part of the public.

Based on the above, the Opposition Division concludes that the evidence submitted by the opponent demonstrates that the ‘AIRBNB’ trade mark enjoys a high degree of recognition among the relevant public and that it has acquired enhanced distinctiveness in the European Union before the filing date of the contested EUTM application (03/11/2017).

It can be safely concluded that the evidence succeeds in establishing that the earlier mark has reputation for, at least, the following goods and services relevant to the present opposition:

Class 9: Computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to list and rent temporary lodging, access information, listings and announcements about housing, apartments, condominiums, townhouses, real estate, commercial real estate and rental and leasing advertisements for the foregoing; computer application software for mobile phones, portable media players, handheld computers and related mobile devices, namely, software that allows users to search for travel, transportation, temporary accommodation, vehicle and ride sharing and temporary vehicle parking listings, travel information and related topics and for making reservations and bookings for transportation, temporary accommodations, vehicle and ride sharing and temporary parking.

Class 42: Providing temporary use of web-based messaging software applications that allows users of mobile phones, portable media players, handheld computers and related mobile devices to send and receive messages among guests of lodging accommodations owned and hosted by others and among the hosts who list lodging accommodations for rent and sale; providing temporary use of web-based software application that allows users of mobile phones, portable media players, handheld computers and related mobile devices to search for travel, transportation, temporary accommodation, vehicle and ride sharing and temporary vehicle parking listings, travel information and related topics and for making reservations and bookings for transportation, temporary accommodations, vehicle and ride sharing and temporary parking.

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.

Therefore, the examination of the opposition will continue on the basis of the goods and services explicitly mentioned above.

b) The signs

AIRBNB	farmbnb
Earlier trade mark	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.

Both signs are word marks. In the case of word marks it is the word as such that is protected and not its written form. Therefore, for the purposes of the comparison, it is irrelevant whether the signs are presented in upper or lower case characters.

Although both 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 countries, like Malta and Ireland, the earlier mark is a made-up word wherein each of the two components has its own meaning. The first component, ‘AIR’, means, inter alia, ‘the space around things or above the ground’ and ‘the mixture of gases that we breathe’ (see Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/air). The second one, ‘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 distinctive character of the component ‘AIR’ is limited for the English-speaking part of the public in relation to the goods and services at issue, since they are related to travel (it alludes to travel ‘by air’).

Regarding the distinctiveness of the element ‘BNB’, it must be considered that the relevant goods and services are supplied for the management or administration of establishments that provide temporary accommodation or are aimed at helping others to render such services via online platforms and software applications. Therefore, a sufficiently close connection exists between the goods and services and the component ‘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, the 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 mark is actually used, or for which it may have acquired enhanced distinctiveness through use.

In this context, for the English-speaking part of the public, the element ‘BNB’ has limited distinctiveness 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.

In the contested sign, the English-speaking part of the public will understand the component ‘farm’ as, inter alia, ‘an area of land, together with the buildings on it, that is used for growing crops or raising animals’ (see Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/farm); while the component ‘bnb’ will have the same meaning and distinctive character as in the earlier mark. Given the structure of the contested sign, it is likely that this part of the public will perceive ‘farm’ as the place in relation to which the services are provided (e.g. access to websites and provision of portals in relation to accommodation in farms, as the applicants acknowledge), so its degree of distinctive character will also be limited.

While part of the remaining public, such as the French- and the Spanish-speaking parts, will understand the earlier mark’s component ‘AIR’ (e.g. given that it exists as such in French, and it has a close equivalent in Spanish – ‘aire’), the degree of distinctive character in these cases will be normal, since the equivalent to the English expression ‘by air’ is different (‘par/en avion’ in French, and ‘en avión’ in Spanish); thus no clear meaning in respect of the relevant goods and services is conveyed. Also the degree of distinctiveness of the component ‘BNB’ of both signs and of ‘farm’ of the contested sign for this part of the public will be normal (e.g. ‘BNB’ does not exist as such in French and Spanish, and the equivalents of ‘farm’ are not that close – ‘ferme’ in French, and ‘granja’ in Spanish). Another part of the public will perceive both signs as meaningless, therefore being distinctive.

Visually, the signs coincide in the string of letters ‘*A*R*BNB’. However, the signs differ in the letter ‘*I’ present in the earlier mark, and the letters ‘F**M’ in the contested sign.

The signs have also the same structure and a similar length. Therefore, they are considered visually similar to a below-average degree overall.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‛B-N-B’. They will be sounded out as separate phonemes since it would be cumbersome to enunciate this consonant cluster otherwise. For a part of the relevant public (e.g. the Spanish-speaking part) the pronunciation of the signs will also coincide in the sound of the letters ‘A’ and ‘R’ of ‘AIR’ and ‘FARM’ respectively, while for other parts of the public (e.g. the English-speaking part) the coincidence in the presence of those letters in both signs is aurally diluted (e.g. eəʳ vs fɑːʳm). Therefore, the aural similarity between the signs is below-average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that understands the signs, they will be conceptually similar to a below-average degree (given the limited distinctive character of the coinciding component ‘BNB’). For the part of the public that perceives a meaning only in one of the signs, the signs are conceptually not similar; while for the part of the public that sees both signs as meaningless, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

c) The ‘link’ between the signs

 

As seen above, the earlier mark is reputed and the signs are visually and aurally similar to a below-average degree, while the conceptual aspect varies depending on the relevant public’s perception. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

 

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 

 • the degree of similarity between the signs;

 

 • the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 

• the strength of the earlier mark’s reputation;

 

• the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 

• the existence of likelihood of confusion on the part of the public.

 

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The marks have been found visually and aurally similar to a below-average degree, as already mentioned, and conceptually either similar to a below-average degree, not similar or the conceptual aspect does not influence the similarity between the signs. It should be remembered that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. Thus, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (see judgment of 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, §  53 and the case-law cited therein).

As shown in section b) of this decision, the similarity between the earlier mark, ‘AIRBNB’, and the contested sign, ‘farmbnb’, results essentially from the letters/sounds ‘BNB’ and it is further supported by the fact that both signs contain invented words with similar length and structure, including aurally.

The opponent’s mark is reputed in connection with an online platform, and a related mobile application, where peer providers can offer accommodations, vacations and experiences and peer consumers can book these offers and also obtain provision of information in the fields of lodging.

The contested sign seeks protection for telecommunication services (including provided online) in Class 38 and IT services in Class 42, as listed above.

These contested services are either similar (contested services in Class 38) or identical (e.g. provision of search engines for the internet and the opponent’s services in Class 42) to the opponent’s reputed goods and services in Classes 9 and 42. This is because, in relation to the telecommunication services, they have the same purpose (to allow users to communicate and to access to information), distribution channels and usual origin. Furthermore, they can also be complementary. While as far as the opponent’s and the applicants’ services in Class 42 are concerned, they are all IT services, either identical or closely related, which will be provided by the same undertakings.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark in relation to the abovementioned services, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.

They will likely be related as referring to the same model of provision of accommodation related services, as both signs have similar morphological structures, namely both are composed of two components, with similar length, where the suffix ‘BNB’ coincides.

d) Risk of injury

 

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

 

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

 

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

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

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 The earlier mark has a very strong reputation across the European Union.

 The signs at issue are visually, phonetically and conceptually similar. The contested sign mirrors the ‘AIRBNB’ mark, since ‘farmbnb’, and the last part ‘BNB’ have no meaning in connection with the contested services.

 ‘BNB’ is not the abbreviation for ‘bed & breakfast’. Rather, the opponent under its trade mark ‘AIRBNB’ operates a pioneering online marketplace that allows users to publish the offering of accommodations, vacations and experiences and the booking of the same.

 The average consumer will assume that the contested sign, ‘farmbnb’, is a service offered by Airbnb (e.g. accommodations in farms) or that the contested services are offered in connection with Airbnb.

 Airbnb has been the innovation driver in this business field using a fanciful and invented mark like ‘AIRBNB’. The opponent’s main competitors use trade marks which are entirely different and which are neither composed of using the element ‘BNB’, nor are they conceptually similar otherwise, like ‘Booking.com’, ‘HomeAway’, ‘trivago’, ‘Hotels.com’ or ‘Expedia’.

 Additionally, the contested application seeks protection for services identical, or similar to, those for which the earlier ‘AIRBNB’ mark is registered, and the applicants are imitating the look-and-feel of the opponent’s website.

These facts make it clear that the contested application was filed to be used in an identical or similar business model for which the shared element ‘BNB’ has no meaning.

 From all this it is apparent that the contested application has an inherent free-riding character which is detrimental to the distinctive character and is taking unfair advantage of the repute of the earlier ‘AIRBNB’ mark.

In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment, which takes into account all the factors relevant to the circumstances of the case.

The more immediately and strongly the earlier mark is brought to mind by the later sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 41, 43).

The evidence submitted by the opponent demonstrates that, from the point of view of users or travellers, ‘AIRBNB’ is a brand that is associated with the attractive image of personalised services to consumers and authentic guest experience at a fair price (e.g. as seen in Attachments 2 and 3). On the other hand, the evidence shows that ‘AIRBNB’ is a collaborative online platform allowing the members of the Airbnb community to list their home or other property for short-term rent thus turning their property into a profitable venture (e.g. as seen in Attachment 8). Therefore, the average consumers of such accommodation are usually those who are looking for an alternative to the usual hotel services combined with some authentic experience. The applicants operate an online platform for rural accommodation, they are making use of a business model identical to that of the opponent and are, therefore, in direct competition with the opponent. The websites have also a similar layout.

Therefore, it is reasonable to conclude that the public would associate the contested mark to the earlier mark and perceive it as covering services in relation to accommodation at farms/rural tourism.

The association between the signs at issue enables the transfer of the earlier mark’s attractiveness to the contested sign, thus making the marketing of the applicants’ services easier by their association with the earlier mark with a reputation. This may lead to an unacceptable situation of commercial parasitism where the applicants are allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up repute for its mark, as it may stimulate the sales of the applicants’ services to an extent that is disproportionately high in comparison with the size of their promotional investment.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. 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 mark. It follows that there is no need to examine whether other types also apply.

f) Conclusion

 

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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 applicants are the losing party, they must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Opposition Division

 

 

María del Carmen COBOS PALOMO

Alicia BLAYA ALGARRA

Helena GRANADO CARPENTER

 

 

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.