OPPOSITION Nо B 3 094 036

Booking.com BV, Herengracht 597, 1017 CE Amsterdam, Netherlands (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Booking in Sweden AB, Flygplatsvägen 32, SE‑392 41 Kalmar, Sweden (applicant).

On 25/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 036 is upheld for all the contested services.

2. European Union trade mark application No 18 064 601 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 09/09/2019, the opponent filed an opposition against all the services of European Union trade mark application No 18 064 601 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 8 955 353 ‘BOOKING.COM’ (word mark), for which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 8 955 353, ‘BOOKING.COM’, for which the opponent claimed repute in the EU.

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 applicant establishes due cause for the use of the contested trade mark.

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

a) Reputation of the earlier trade mark

According to the opponent, 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 15/05/2019. 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 demonstrate that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 35: Advertising, marketing, public relations services, sales promotion, market research, arranging and conducting of trade fairs and exhibitions; consultancy in relation to all the aforesaid services; and including the provision of all the aforesaid services on-line.

Class 39: Travel and tour agency services, ticket reservation and booking agency services relating to travel, providing of information relating to travel and travel destinations; advisory and consultancy services relating to all the aforesaid services; and including the provision of all the aforesaid services on-line.

Class 43: Hotel reservation services, holiday accommodation reservation services and resort reservation services; providing of information relating to hotels, holiday accommodation and resorts; appraisal of hotel accommodation; advisory and consultancy services relating to all the aforesaid services; and including the provision of all the aforesaid services on-line.

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 30/04/2020, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

The opponent submitted an affidavit, dated 28/04/2020, signed by the senior vice president and chief legal officer of ‘Booking.com’ together with 21 exhibits listed below. The declaration provides an overview of the company, which is a Dutch company based in Amsterdam incorporated in 1996. It stated that the company has been providing hotels and consumers with an online hotel reservation service where hotels all over the world (including the European Union) can advertise their rooms for reservation and consumers all over the world (including the European Union, where it has 26 offices) can make reservations. Exhibit 3 explained the business model and indicates the number of downloads of the app (more than 20 million), the number of reviews (more than 112 million) and the app’s rating (almost 5 stars). It provides a large amount of detailed information and figures in relation, inter alia, to the ‘BOOKING.COM’ reservations (in Germany, the Netherlands and Sweden), advertising campaigns, strategy and investment spent, the acknowledge of reputation by different courts, brand awareness (with data collected by independent agencies), brand rankings and sponsorships.

 Exhibit 1: screenshots from the ‘Booking.com’ global website, with the title ‘The best hotels & accommodations’, giving general information about the company. The sign is shown, and reference to the fact that the earlier mark is registered as .

 Exhibit 2: detailed information of ‘Booking.com’ office locations in the European Union and worldwide.

 Exhibit 3: excerpts showing the possibility of downloading applications, which enable consumers to make reservations on their mobile devices, and which provide information about the app’s number of downloads, the number of reviews and the app’s rates.

 Exhibit 4: documents referring to ‘Booking.com’ advertising campaigns together with information concerning #BookingHero Competition’s EU winners, dated in 2018.

 Exhibit 5: a video showing a ‘Booking.com’ advertising campaign in Sweden, , which clearly demonstrates the earlier mark as identifier of the relevant services.

 Exhibit 6: an overview of the number of newsletter subscribers between 2016 and 2019, in Germany, the Netherlands and Sweden.

 Exhibit 7: excerpts of decisions from the WIPO arbitration and mediation centre, international and national courts and trade mark offices in Europe, acknowledging the well-known character of ‘BOOKING.COM’ brand.

 Exhibit 8: a brand awareness report for Germany, the Netherlands and Sweden, showing the perception of the ‘BOOKING.COM’ brand for the years 2014 until 2018, indicating an increase of the awareness in this period from around 65-70 % up to 80-85 %. There is information about the methodology used for the ‘BOOKING.COM’ brand awareness study, and information on the third-party agencies (i.e. ‘Dynata’ and ‘Kantar’) selecting the respondents who were people between 25 and 45 years old, who had been travelling in the previous 12 months.

 Exhibit 9: positioning of the ‘Booking.com’ brand in ‘Ranking The Brands.com’, in several rankings, over several years. For instance, in 2019, the brand occupied third position in ‘BrandZ Top 30 Most Valuable Dutch brands’ and 20th position in ‘Best Global Websites’.

 Exhibit 10-16: excerpts of several rankings: Kantar ‘BrandZ Top 30 Most Valuable Dutch Brands’, ‘Byte Level Research Best Global Websites’, ‘Brand Finance US 500’ and ‘Global 500’ rankings; Synergie ‘The Inspiring 40’ ranking, Reputation Institute ‘UK RepTrak 100’ ranking; Micompany / RuG / MetrixLab ‘Top 100 Dutch Customer Performance Index’.

 Exhibit 16: an excerpt of the ‘BOOKING.COM’ website, showing customers’ reviews.

 Exhibit 17: sample of citations from ‘BOOKING.com’ affiliated hotels.

 Exhibit 18: a number of documents in relation to Booking.com UEFA Champions League sponsorship. For instance, in the article published on the UEFA website, dated 2017, it is reported that both companies have announced a four-year global partnership for several competitions from 2018 to 2022, including UEFA EURO 2020.

 Exhibits 19: an excerpt taken from the International Cricket Council (ICC) website in relation to ‘BOOKING.COM’ sponsorship. It is stated that ‘Booking.com’ has grown from a small Dutch start-up to one of the largest e-commerce travel companies in the world.

 Exhibit 20: a selection of a great number of articles from different newspapers, dated between 2015 and 2019, featuring the ‘BOOKING.COM’ brand in Sweden, the Netherlands and Germany.

 Exhibits 21: extracts from social media pages, offering information such as the numbers of followers/subscribers (over 15 million on Facebook, 1.3 million on Instagram, 164 000 on Twitter and 38 600 on YouTube).

Assessment of the evidence

As far as the witness statement is concerned, Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, in the present case, as has become obvious from the comments above, the witness statement is very detailed and is supported by ample evidence contained in the attached 21 exhibits.

The evidence shows that the company was founded in 1996, in the Netherlands, and the mark has been subject to long-standing and intensive use for many years and is generally known for temporary accommodation services in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The brand awareness surveys, reservation figures and marketing expenditure shown by the evidence (in relation to Germany, the Netherlands and Sweden) and the various references in the press to its success all unequivocally demonstrate that the mark enjoys a high degree of recognition among the relevant public. For instance, the surveys conducted by third-party agencies demonstrate a high degree of recognition in the abovementioned countries (more than 80 %, exhibit 8), it has also proven a sponsorship with UEFA. In addition, the mark appears in several brand rankings, occupying notable positions, appears in a large number of articles in newspapers and magazines. The global numbers in terms of app downloads and followers on the main social media platforms are very high and, although indirectly, it demonstrates a big success of the company worldwide, including the EU. Therefore, it is obvious that the earlier mark enjoys a strong reputation among the relevant consumers, but only for providing temporary accommodation in Class 43.

b) The signs

BOOKING.COM
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).

The English word ‘booking’, included in both signs, means ‘the arrangement that you make when you book something such as a hotel room, a table at a restaurant, a theatre seat’, etc. (information extracted from Collins Dictionary on 16/08/2020 at https://www.collinsdictionary.com/dictionary/english/booking). It will be understood by the English-speaking part of the public, and consumers with a basic understanding of English, considering that this term is commonly used in the context of the relevant services, especially in the hotel accommodation field and restaurants. However, it is also plausible that a significant part of the relevant public will not grasp any particular meaning and perceive it as fanciful. For the part of the public for which it is meaningful, this term is descriptive to the extent that the services may be used to make/facilitate reservations. However, for those consumers who perceive the word as meaningless, this element has a normal degree of distinctiveness. The last element ‘.COM’ of the signs refers to a generic top-level domain. Therefore, it merely indicates that it is the name of the website, and thus the means of provision (the platform) through which the services are offered and/or delivered. Therefore, this element is non-distinctive for the relevant services. The distinctiveness of the signs’ elements is, as a rule, relevant for their comparison. However, in the present case, it is irrelevant whether the coinciding element is meaningful for the public, and whether that meaning is in some way related to the services at issue, since it would be identical in both cases and, therefore, the signs would be on an equal footing in this respect. Moreover, the additional elements of the signs are clearly not sufficient to distinguish them, for the reasons explained below.

The verbal element ‘europe’ of the contested sign will be understood by the relevant public as referring to the European continent, its nations or the European Union and can be interpreted in various possible ways (e.g. as an indication that the applicant’s undertaking is located in Europe, or that the services provided are provided in Europe or meant for the European market). Considering the above, this element will be perceived as a descriptive reference to the territorial scope of the applicant’s economic activity and is, therefore, non-distinctive for the relevant services. This, together with the second position of this element, means that the relevant public will not pay very much attention to it, or at least, no more than to the coinciding elements of the signs.

The inverted-drop-shaped device of the contested sign will likely be perceived as a map pin, a mark widely used in platforms to indicate the location of a given place. Read together with the verbal element ‘booking’, it will be seen as indicating the locations of the places, activities booked. Therefore, it is considered weak. The stylisation of the contested sign’s verbal element is merely decorative and has very little, if any, distinctive character. In any case, it must be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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.

In view of the foregoing, the signs are visually and aurally similar to an average degree (despite the additional non-distinctive word and, visually, the figurative aspects of the contested sign). Conceptually, they are similar or not similar, depending on whether the coinciding word ‘booking’ conveys a meaning. However, the different concept introduced by the additional verbal element ‘europe’ of the contested sign has a very limited, if any, impact since it cannot indicate a commercial origin.

The signs are similar to the extent that they coincide in the verbal elements/structure ‘booking******.com’, and the differences are limited to elements which are insufficient to distinguish the signs. Therefore, 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 similar. 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 opponent argued that

It is more than likely that a consumer will attribute the goodwill acquired by the opponent through years of brand promotion, including heavy advertising, and through the consistent quality to the services offered under the contested application, especially since the latter is highly similar to the famous earlier marks on a visual and phonetic level ….

The fact that the contested application entirely incorporates the earlier marks, and considering that the additional term ‘EUROPE’ and the map pointer device are both weakly distinctive for the services at stake, will undoubtedly result in the consumer calling the earlier marks to mind when confronted with it. Moreover, the services are highly similar, Additionally, the evidence provided by the opponent manifestly demonstrates that the earlier marks are not just reputed but enjoy a reputation of exceptional strength.

The probability that consumers will establish a link between the earlier marks and the contested application is further increased by the fact that the contested application will be used in connection with online booking services, which is the exact same business sector for which the earlier marks enjoy reputation. The applicant is a Swedish booking service for Swedish hotels and holiday accommodation, as shown on its corporate website and social media (enclosures 3 and 4).

The opposition is directed against the following goods and services:

Class 41: Education, entertainment and sports.

Class 43: Providing temporary accommodation.

In the present case, the signs are visually and aurally similar to an average degree, and conceptually similar or not similar, depending on whether the concept of ‘booking’ is understood or not. There are differences between the signs insofar as the contested sign contains additional verbal and figurative elements. However, the earlier mark is fully included in the contested sign, which reproduces the same format, ‘booking’ plus ‘.com’, with the addition of the word ‘europe’, which is non-distinctive. The relevant public will clearly perceive that the contested sign includes the same verbal elements of the earlier mark, together with the mentioned additional elements. Therefore, although the inherent distinctive character of the earlier mark is very low for the relevant services (for part of the relevant public), the visual, aural and conceptual similarity deriving from the coinciding elements would reflect in the minds of (some of) the relevant consumers, when encountering the signs. The opponent’s mark was accepted for registration on the basis of distinctiveness acquired through use since, for the consumers understanding the meaning, it signifies the online presence of a company which takes bookings. However, the scale of use shown in the evidence, means that the opponent is entitled to rely upon an enhanced level of distinctive character to a reasonably high degree in relation to its Class 43 services.

An earlier mark can have a particularly distinctive character not only per se, but also because of the reputation it enjoys with the public (see, by analogy, judgment of 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24), and, where a trade mark has acquired a particularly distinctive character because of its renown, an argument that it possesses merely a very weak inherent distinctive character is ineffective in the context of the assessment of the existence of a link between the marks at issue and, thus, an injury within the meaning of Article 8(5) EUTMR (17/07/2008, C‑488/06 P, Aire limpio, EU:C:2008:420, § 67 and 68).

Therefore, a link will inevitably be established if the contested sign is used in relation to providing temporary accommodation in Class 43, which is identical to the opponent’s reputed services. With respect to the services education, entertainment and sports in Class 41, although they may not appear to be directly and immediately linked to the opponent’s services in Class 43 under the ‘Canon criteria’, nonetheless there is a certain proximity between them. The compared services relate to neighbouring markets, where a ‘brand extension’ of the opponent could seem natural. It is not uncommon nowadays that (at least successful) platforms providing temporary accommodation services, also offer diverse ancillary cultural, sport and leisure activities. For instance, the booking or sale of tickets/visits to museums, spectacles, sport activities and excursions. Furthermore, the field of hotels is to some extent connected with educational, entertainment and sports events, since it is also usual that, for instance, seminars, conventions, shows and sports are held in hotels. Consequently, the business areas are objectively related, and the public may consider that the relevant services, bearing a similar designation, come from undertakings with commercial links.

Therefore, taking into account and weighing up all the relevant factors of the present case, in particular the strong reputation of the earlier trade mark and the limited distinctive character of the additional elements of the contested sign, when encountering such a sign, the relevant consumers will be likely to associate it with the earlier mark, that is to say, establish a mental ‘link’ between the signs, even for those services that are less similar to the services for which reputation has been proved. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

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.

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).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The opponent based its claim on the following:

The outstanding level of reputation of the earlier marks makes it even more likely that the contested application will take advantage of the reputation.

The opponent’s earlier marks benefit from an enormous reputation and prestige for the relevant services in the relevant territory. This prestige directly results from the opponent’s thorough attention to the quality of its services.

The image of quality and trustworthiness of the opponent’s earlier marks would easily be transferred to the contested application, given that it has been submitted for services highly similar to those of the earlier marks, for which the opponent is well known.

Although it is not necessary to demonstrate any intention on the part of the applicant to ride on the coattails of the earlier well-known ‘BOOKING.COM’ marks, in the present case, given the high similarity of the services, it is highly likely that the applicant did indeed intend to profit from the efforts made by the opponent in building up goodwill by seeking registration of a sign that incorporates the term ‘BOOKING.COM’ and which consumers will immediately link to the opponent’s well-known ‘BOOKING.COM’ brand.

This is all the more so considering that the contested application not only incorporates the earlier marks in their entirety, but also includes the reproduction of a map pointer.

In light of all the above, it is highly likely consumers would attribute to the applicant’s services the positive image they associate with the opponent’s services. As a result, by not having to undertake its own marketing efforts, the applicant would clearly exploit the reputation and prestige of the opponent’s earlier marks. Nothing further is required, following the L’Oréal decision, in order to establish unfair advantage.

The applicant has not submitted any arguments to defend its application.

The more immediately and strongly the earlier mark is brought to mind by the later sign, the greater the likelihood that 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).

Therefore, the evaluation of detriment or unfair advantage must be based on an overall assessment of all the factors relevant to the case (including the similarity of signs, the reputation of the earlier mark, and the respective consumer groups and market sectors), with a view to determining whether the marks may be associated in a way that may adversely affect the earlier trade mark.

The owner of the earlier mark is not required to demonstrate actual and present harm to its mark for the purposes of Article 8(5) EUTMR, but it must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 82). When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may make of its mark, the opponent cannot be required to wait for it to occur in order to be able to prohibit that use.

The applicant’s intention is not a material factor. Taking unfair advantage of the distinctiveness or repute of a trade mark may be a deliberate decision, for example where there is clear exploitation and riding on the coattails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

There is no evidence of subjective intention. However, owing to the wide use of ‘BOOKING.COM’ for many years and the significant level of reputation of the opponent’s mark, the fact that this reputation is connected with positive characteristics and high consumer satisfaction, as well as the fact that the services are identical or belong to (neighbouring) markets which may fall within the expanding sector and/or may be associated with the trendy image projected by the mark, the contested registration is highly likely to take unfair advantage of the earlier mark’s reputation. The objective effect of use of the application will be to gain a marketing advantage for the applicant. There is a high probability that the use of the contested mark may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the earlier mark and the considerable investments undertaken by the applicant to achieve that reputation. This is because the applicant’s mark will call to mind the opponent’s mark and will, therefore, appear instantly familiar to the public concerned, thereby making it easier for the applicant to establish its mark and to sell its services without the usual marketing expenditure. Consumers may be encouraged to choose these goods and services by the association that they will make between the signs, for instance, believing that the contested sign is a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates, or to the specific territory (europe) to which it is related.

Other types of injury

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

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 applicant is the losing party, it 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

Edith Elisabeth VAN DEN EEDE

Félix ORTUÑO LÓPEZ

Gonzalo BILBAO TEJADA

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.