OPPOSITION No B 3 100 157

Facebook, Inc., 1601 Willow Road, 94025 Menlo Park, United States of America (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Fantors Co., Ltd., 2nd Floor 218-ho, 128, Teheran-ro, Gangnam-gu, 06234 Seoul, Republic of Korea (applicant), represented by Thomas Kurt Albert Verscht, Josephsburgstr. 88a, 81673 München, Germany (professional representative)

On 29/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 157 is rejected in its entirety.

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

REASONS

On 22/10/2019, the opponent filed an opposition against all the services of European Union trade mark application No 18 085 506 (figurative mark).

The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 17 918 069 for the word mark ‘FACEBOOK’ (earlier mark 1).

2. European Union trade mark registration No 9 151 192 for the word mark ‘FACEBOOK’ (earlier mark 2).

3. European Union trade mark registration No 9 151 168 for the figurative mark (earlier mark 3).

4. European Union trade mark registration No 5 585 518 for the word mark ‘FACEBOOK’ (earlier mark 4).

5. United Kingdom trade mark registration No 3 329 154 for the word mark ‘FACEBOOK’ (earlier mark 5).

6. European Union trade mark registration No 9 507 161 for the word mark ‘BOOK’ (earlier mark 6).

The opponent invoked Article 8(1)(b) EUTMR for all the earlier marks and Article 8(5) EUTMR for earlier marks 1-5.

EARLIER UK RIGHT — EARLIER MARK 5

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) and Article 8(5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that earlier mark 5, which is an earlier UK trade mark, no longer constitutes a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on this earlier right.

SURRENDER — EARLIER MARK 6

According to the records of the Office, earlier European Union trade mark registration No 9 507 161 for the word mark ‘BOOK’ (earlier mark 6) was totally surrendered by the opponent on 13/07/2020 and the declaration of total surrender was entered in the European Union Trade Mark Register on 07/09/2020.

Consequently, as earlier mark 6 no longer has a standing of an ‘earlier trade mark’ within the meaning of Article 8(2) EUTMR, the opposition must be rejected as far as it is based on this earlier right.

EVIDENCE OF REPUTATION AND ENHANCED DISTINCTIVENESS — EARLIER MARK 2

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier mark 2, for which the opponent claimed repute (under Article 8(5) EUTMR) and enhanced distinctiveness (under Article 8(1)(b) EUTMR) in the European Union.

Under Article 8(1)(b) EUTMR, the opponent claimed that the earlier trade mark enjoys enhanced distinctiveness in the European Union in connection with the relevant goods and services. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

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.

This means that the ground for refusal under Article 8(5) EUTMR is only applicable when the opponent proves reputation of the earlier trade mark. The reputation must be prior to the filing of the contested trade mark and it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

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 24/06/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired enhanced distinctiveness and reputation in the European Union prior to that date. The evidence must also show that the enhanced distinctiveness and reputation were acquired for the goods and services for which the opponent has claimed enhanced distinctiveness and reputation, namely:

Class 9: Computer software development tools; computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks.

Class 35: Marketing, advertising and promotion services; market research and information services; promoting the goods and services of others via computer and communication networks; facilitating the exchange and sale of decorating supplies, cleaning preparations, toiletries, cosmetics, candles, pharmaceuticals, small items of metal hardware, machines and machine tools, hand tools, consumer electronics, computers, computer peripherals, telephones, cameras, CD’s and DVD’s, household electric machines, vehicles, cycles, jewellery, clocks and watches, printed matter, leather goods, handbags, purses and wallets, furniture, housewares, household or kitchen utensils and containers, textiles, clothing, footwear, headgear, haberdashery, floor coverings, games and playthings, gymnastic and sporting equipment, foodstuffs, drinks, alcoholic beverages and candy via computer and communication networks; online retail store services featuring online delivery of digital media, namely images movies, musical and audiovisual works and related merchandise; charitable services, namely promoting public awareness about charitable, philanthropic, volunteer, public and community service and humanitarian activities; buyer to supplier matching services rendered through an online computerized network; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

Class 38: Providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online communications links which transfer web site users to other local and global web pages; facilitating access to third party web sites via a universal login; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, audio and video images; providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; providing access to computer databases in the fields of social networking, social introduction and dating; providing an online forum for the buying and selling of products and materials and exchanging of sourcing data via a computerized network; electronic transmission of bill payment data for users of computer and communication networks.

Class 41: Providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photosharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; electronic publishing services for others; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks; arranging and conducting competitions for video gamers and computer game players; Contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community service and humanitarian activities and sharing of creative work product; providing information regarding news, cultural and academic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

Class 42: Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites.

Class 45: Social introduction, networking and dating services; providing social services and information of a social nature in the field of personal development, namely self-improvement, self-fulfillment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities; providing information regarding social and political matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

The opponent also claimed enhanced distinctiveness (but not reputation) for the following services:

Class 36: Financial transaction processing services, namely clearing and reconciling financial transactions via computer and communication networks; electronic processing of bill payment data for users of computer and communication networks; electronic funds transfer services; bill payment services; financial exchange services, namely, providing a virtual currency for use by members of an online community via computer and communication networks; providing information regarding economic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks.

In order to determine the mark’s level of enhanced distinctiveness or 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 29/04/2020 the opponent submitted the following evidence:

 Attachment 1: a printout of the entry ‘Facebook’ from Wikipedia, in English, dated 24/03/2015. It contains detailed information about the history, development and rising popularity of ‘Facebook’, an online social networking service launched in 2004. The document states, inter alia, that Facebook had more than 1.11 billion users as of March 2013 and 1.39 billion users at 31/12/2014. It also states that according to comScore, ‘Facebook’ is the leading social networking site based on monthly unique visitors and that according to Alexa, the Facebook website is ranked in 2nd place for all websites in worldwide traffic. The mark is used both in word and figurative format, for instance as follows:

.

 Attachment 2: the following printouts, in all of which the earlier mark is referred to in the same/similar way as described in attachment 1.

o A printout from investor.fb.com with Facebook’s Q3 2019 results in English, showing, inter alia, that in Europe there were 274 million daily active users (and 364 million monthly active users) in Q3 2017, and 288 million daily active users (and 387 million monthly active users) in Q3 2019.

o A printout from the website www.internetworldstats.com, entitled ‘Facebook Users in the World’, in English, referring to 2011 and 2012 and showing the number of Facebook users in the world, the Facebook usage and Facebook statistics by world geographic regions between 31/03/2011 and 31/03/2012. For Europe, the documents show the number of Facebook users between 200 260 360 (in March 2011) and 232 835 740 (in March 2012) and a Facebook penetration (the ratio of Facebook users in relation to the total estimated population in each world region, expressed as a percentage) between 24.5 % (in March 2011) and 28.5 % (in March 2012).

o A similar printout from the same website, also in English, referring to 2016. As of June 2016, the number of Facebook users in Europe was 328 273 740 and the penetration in Europe was 39.5 %.

o Another similar printout from the same website, also in English, dated 17/08/2018. As of June 2017, the number of Facebook users in Europe was 343 273 740 and the penetration in Europe was 41.7 %.

 Attachment 3: an article from news.yahoo.com, in English, entitled ‘Number of active users at Facebook over the years’ showing that the number of Facebook users was 1 million at the end of 2004, 100 million in August 2008, 350 million at the end of 2009, 901 million in March 2012 and 1.11 billion in March 2013.

 Attachments 4-15: printouts from http://www.statista.com, in English, dated April 2015, December 2016, March 2017, August 2018 and 2020. They mention high numbers of active Facebook users and a high percentage of penetration in various EU countries between 2011 and 2019 (e.g. 36.82 million users in Germany or 30.39 million users in France as of May 2016; 11 million monthly active users in the Netherlands in 2018; 53.33 % Facebook user penetration rate in Sweden in 2016).

 Attachments 16-19: various types of documents, all in English, and in all of which the earlier mark is referred to in the same/similar way as described in attachment 1.

o Results of a search in Alexa (www.alexa.com) concerning the traffic on the website www.facebook.com, dated June 2013. It states that ‘there are no sites with a better three-month global Alexa traffic rank than Facebook’ and demonstrates that Facebook is in 1st place in the Global Ranking.

o Printouts from www.alexa.com, dated March 2015, featuring updated site overviews for www.facebook.com, showing, inter alia, that Facebook is in 2nd place in the Global Ranking and in 2nd place in Germany.

o An update for www.facebook.com on Alexa, dated December 2016, in which Facebook appears in 3rd place in the Global Ranking and in 4th place in France.

o Another update for www.facebook.com on Alexa, dated August 2018, in which Facebook appears in 3rd place in the Global Ranking and in 5th place in Germany.

 Attachment 20: documents entitled ‘Observatoire des Réseaux Sociaux’ (Social Network Observatory) dated November 2012, ‘Observatoire des Réseaux Sociaux 2013’ and print-outs from www.laurenceperchet.wordpress.com, dated 24/03/2015, and featuring an article entitled ‘Comment les français utilisent-ils les réseaux sociaux en 2014?’ (in French, with no English translation provided). As is apparent from the studies, Facebook occupies 1st position with 95 % in 2012 and 97 % in 2013. The earlier mark is once again used both in word and figurative format, in the same/similar ways as described in attachment 1.

 Attachment 21: printouts from www.interbrand.com, in English, featuring the ‘Best Global Brands’ rankings for 2012, 2013, 2014, 2015, 2016 and 2017. The evidence demonstrates that Facebook ( ), referred to in the document as ‘social media giant’, ranked in 69th place with a brand value of USD 5 421 million in 2012, 52nd place with a brand value of USD 7 732 million in 2013 (being the biggest riser in the 2013 Report), 41st place with a brand value of USD 14 349 million in 2014, 23rd place with a brand value of USD 22 029 million in 2015, 15th place with a brand value of USD 32 593 million in 2016, and 8th place with a brand value of USD 48 188 million in 2017.

The evidence mentions, inter alia, that:

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

 Attachment 22: the following printouts, all in English, and in all of which the earlier mark is referred to in the same/similar way as described in attachment 1.

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

o A printout of the report ‘Digital in 2017: Global Overview’ from www.wearesocial.com/uk from August 2018 (report dated in January 2017). It mentions, inter alia, that ‘social media use surged by more than 20 % in 2016, with Facebook in particular, posting impressive increases, despite already being the world’s most popular social platform for the past decade’.

 Attachment 23: printouts from www.rankingthebrands.com from December 2016, in English, with ‘The Youth 100’ 2012 ranking of UK’s most loved and liked brands, as decided by over 1 000 young people, showing Facebook in 18th place. The earlier mark is used as described in attachment 1.

 Attachment 24: printouts from www.rankingthebrands.com from December 2016, in English, with ‘The Most Valuable Social Media Brands’ 2013 ranking, showing Facebook in the 1st position globally. The earlier mark is used as described in attachment 1.

 Attachment 25: an article entitled ‘Las 40 redes sociales más populares’ (‘The 40 most popular social networks’), in Spanish, from 2012, published at WebEmpresas20.com. It mentions Facebook in 1st place in the global ranking of social networks. The earlier mark is used as described in attachment 1.

 Attachment 26: an article entitled ‘Las 30 redes sociales más utilizadas’ (‘The 30 most used social networks’), in Spanish, from 2016, published at WebEmpresas20.com. It mentions Facebook again in 1st place in the global ranking of social networks. The earlier mark is used as described in attachment 1.

 Attachment 27: an article entitled ‘¿Cuáles son las redes sociales con más éxito en España?’ (‘Which are the most successful social networks in Spain?’), in Spanish, from 2014, published at Expansión.com. Facebook is mentioned in 1st place. The earlier mark is used as described in attachment 1.

 Attachment 28: a ranking entitled ‘Las 10 redes sociales más usadas en el mundo’ (‘10 social networks most used worldwide’), in Spanish, from 2015, published by the newspaper 20 Minutos (20minutos.es). Facebook is mentioned in 1st place. The earlier mark is used as described in attachment 1.

 Attachment 29: an article entitled ‘91 Leading Social Networks Worldwide’ from 14/04/2015, published by Practical Ecommerce. It shows a ranking of social networks where Facebook appears in 1st place with the following mention: ‘Facebook is the world’s largest social network with over 1.4 billion members and annual revenues exceeding $ 12 billion’. The earlier mark is used as described in attachment 1.

 Attachment 30: an article entitled ‘Facebook Remains the Largest Social Network in Most Major Markets’ from 08/04/2016, published by eMarketer, with the following mention: ‘With the exception of China, Russia and a few other countries, Facebook continues to dominate the social network scene in major markets worldwide’. The earlier mark is used as described in attachment 1.

 Attachment 31: a printout from SimilarWeb dated 01/02/2017, showing the ranking of most visited websites in Austria, with Facebook appearing in 3rd place. The earlier mark is used as described in attachment 1.

 Attachment 32: an article entitled ‘RANKINGS 2017 Global Top 100 Brand Corporation Study’ published by the European Brand Institute where Facebook is mentioned in 10th place. The earlier mark is used as described in attachment 1.

 Attachment 33: an article from The Wall Street Journal entitled ‘Is Facebook worth $ 100 billion?’, dated 14/07/2011. The earlier mark is used as described in attachment 1.

 Attachment 34: an article entitled ‘Facebook Revenue and Advertising Statistics and Fact (February 2017)’ published by DMR. The earlier mark is used as described in attachment 1.

 Attachment 35: printouts, dated 04/05/2011, from www.comscore.com (a leader in measuring the digital world) publishing the following information: ‘Facebook ranks as top display ad publisher in Q1 2011’; ‘Popular social networking site Facebook.com led all online publishers in Q1 2011 with 346 billion display and impressions, representing 31.2 % market share. Facebook’s market share has increased 15 percentage points from 16.2 % in Q1 2010’. The earlier mark is used as described in attachment 1.

 Attachment 36: several documents in English, in which the earlier mark is used as described in attachment 1.

o Printouts from www.google.com/adplanner showing Google’s AdPlanner Top 1 000 sites in April 2010 and in July 2011. Facebook.com social networking website tops the list, with 540 000 000 unique visitors (users) and 35.2 % reach in 2010 and 880 000 000 visitors and 51.3 % reach in 2011.

o An article entitled ‘Facebook Tops Google Ad Planner’s Top 1000 Sites’, referring to April 2010.

 Attachment 37: an article in English entitled ‘How to Retarget Content to Facebook Custom Audiences’, dated 09/07/2014, published at www.socialmediaexaminer.com.

 Attachment 38: an article in English entitled ‘How to Implement a Loyalty Program Using Social Media’ dated 23/03/2015, published at www.socialmediaexaminer.com. It provides advice on how to run loyalty programs on, inter alia, Facebook.

 Attachment 39: an article in English entitled ‘The Biggest Sites on Facebook in Germany, France and Ireland’ published by NEWSWHIP and referring to December 2015.

 Attachment 40: an article in English entitled ‘Whippies 2016: The Best Publishers Of The Year On Facebook and Instagram’ published by NEWSWHIP.

 Attachment 41: an article in English entitled ‘Facebook adverts’ published on ‘Advertising on Facebook | Facebook Business’, dated 2017.

 Attachment 42: an article in English entitled ‘11 Examples of Facebook Ads That Actually Work (And Why)’ dated 30/11/2016, published by HubSpot.

 Attachment 43: an article in English entitled ‘The Complete Guide to Getting Started with Facebook Ads’ dated 09/01/2017, published by Buffer Social.

 Attachment 44: a chart from www.statista.com entitled ‘Product brands with the most Facebook fans as of February 2017 (in millions)’ with the text/info in English.

 Attachment 45: a chart from www.statista.com entitled ‘Product brands with the most Facebook fans as of April 2018 (in millions)’ with the text/info in English. It mentions, inter alia, that ‘Facebook is arguably the world’s most popular social network’.

 Attachment 46: an article in English entitled ‘Top 30 Most Visited Websites In The World - 2018 Edition’ dated 09/07/2018, published by Hot In Social Media (hotinsocialmedia.com). Facebook is mentioned in 3rd place with 22.3 billion monthly visits.

 Attachment 47: an article in English entitled ‘The most engaged sites on Facebook in June 2018 from the UK, Ireland, and Germany’ dated 01/08/2018, published by NEWSWHIP.

 Attachment 48: a two page extract from the ‘EUROPE DIGITAL YEAR IN REVIEW 2010’ study by comScore, dated in February 2011, in English. It mentions, inter alia, the title ‘Europeans Spend More Time on Facebook than Any Other Site’ and ‘Facebook, with more than 230 million visitors, is the 3rd most popular site in all of Europe and ranks higher than any other media property at keeping consumers’ attention’. In the ranking entitled ‘Percentage of Time Spent on Top 100 Properties in Europe’, Facebook is in the top position with 11.7 %.

 Attachment 49: an article entitled ‘Facebook supera a Google en ingresos por publicidad’ (‘Facebook surpasses Google in advertising revenues’), published on 11/05/2011 on the Spanish site www.muyinternet.com (the documents are in Spanish with a partial English translation). The evidence states that ‘a new study by the London firm Enders Analysis has revealed the torture suffered by large companies like Google and Yahoo, by being surpassed by Facebook in advertising revenues’ (almost USD 1 billion more than Google’s).

 Attachment 50: an article entitled ‘La publicidad de Facebook durante 2010 generó 1 860 millones de euros’ (‘Ads in Facebook in 2010 create 1 860 million euros’), published on 18/01/2011 on the Spanish site www.muyinternet.com (the documents are in Spanish with a partial English translation).

 Attachment 51: a printout in English from the website royal.pingdom.com entitled ‘Facebook may have surpassed Google in the US, but what about other countries?’, dated 19/03/2010, which demonstrates the international site rankings for Facebook, Google and Twitter in different countries, based on data from Alexa. For instance, Facebook is ranked in 2nd position in France, Italy, Spain and the UK, while it occupies 3rd position in Germany. According to the evidence, ‘the massive user base Facebook has gathered in just a few years is nothing short of amazing. Remember, they have only been around since 2004’.

 Attachment 52: a printout in English from www.topics.nytimes.com, dated 21/06/2011, referring to an article published in the digital version of The New York Times, updated on 27/05/2011. The evidence states, inter alia, that ‘Facebook, the world’s largest social network, announced in July 2010 that it had 500 million users around the world’. Further, it is mentioned that ‘in country after country, Facebook is cementing itself as the leader and often displacing other social networks, much as it outflanked MySpace in the United States’.

 Attachment 53: an extract in English from the online encyclopedia ‘Wikipedia’ providing information about the film ‘The Social Network’, ‘a 2010 drama film about the founding of the social networking website Facebook and the resulting lawsuits’.

 Attachment 54: an article in English entitled ‘The first Facebook election?’ dated 21/03/2010, published by Channel 4 News, affirming that ‘there are 24 million Facebook users in the UK, almost the same number of people who voted in the last general election’.

 Attachment 55: an article in English published on www.fastcompany.com, on 26/04/2011, in which Facebook (referred to as ‘the 400-million-user strong King of Social Media’) appears at No 1 in the ranking of the world’s most innovative companies of 2010.

 Attachment 56: a printout of an article in English entitled ‘Germany’s Social Users Check in Several Times Daily’ published by eMarketer (www.emarketer.com) on 25/03/2015.

 Attachment 57: an article in English entitled ‘comScore report: Facebook retains Social Media crown for UK Millenials’, dated 22/09/2016, and published on www.iabeurope.eu. It is mentioned, inter alia, that ‘Facebook’s multi-platform reach in July 2016 among Millenials was a staggering 90.2%’.

 Attachment 58: comScore press release in English dated 15/04/2009 ‘Facebook Ranks as Top Social Networking Site in the Majority of European Countries’. Facebook occupies 1st position in the ranking in social networking category in Belgium, Denmark, Spain, France, Italy, Finland and Sweden, 2nd position in Ireland, the Netherlands and Austria, 3rd position in Portugal, and 4th position in Germany. Furthermore, it is mentioned that the site’s largest audience is in the UK, with 22.7 million visitors, followed by France, with 13.7 million visitors.

 Attachment 59: a copy of the title page of the Time magazine in English dated 31/05/2010, showing the Facebook logo and the title ‘facebook... and how it’s redefining privacy’ and stating that ‘with nearly 500 million users, Facebook is connecting us in new (and scary) ways’, and a copy of the respective article.

 Attachment 60: an article from the UK newspaper The Telegraph, dated 07/07/2011, entitled ‘One in nine people has a Facebook account worldwide’ and stating, inter alia, ‘One in nine people now have a Facebook account as 750 million across the world have signed up to it’.

 Attachment 61: an article in English entitled ‘Facebook: No. 1 Globally’ from Business Week (businessweek.com), dated 13/08/2008.

 Attachment 62: ‘EUROPE DIGITAL YEAR IN REVIEW 2010’ study by comScore, in English, dated in February 2011 (35 pages). Two pages of the same document were submitted as attachment 48. It is mentioned, inter alia, that ‘by the end of 2010, Facebook was the leading social networking site in 15 out of 18 European Markets’, and demonstrates the share of the market by percentage reach, both in Europe and broken down by country (e.g. 63.6 % for Europe, 81.2 % for Finland, 78.1 % for Italy).

 Attachment 63: the following documents, in English:

o a printout from www.rangkingthebrands.com from 2016, showing Facebook appearing in various rankings, for example ‘50 Best Places to Work’ by Glassdoor, ‘Best Global Brands’ by Interbrand or ‘The World’s Most Valuable Brands’ by Forbes;

o a printout entitled ‘How to ask for recommendations on Facebook’ published in Metro News on 01/09/2017;

o various Facebook ads case studies published on Facebook Business (KIA Motors Europe, Quaker Oats UK, Disney Spain, HBO España), relating to 2017;

o various website printouts, screenshots and articles concerning the activities of Facebook in the fields of, for example, gaming, education, dating, digital wallets, health emergencies or artificial intelligence, dated between 2008 and 2019;

o various articles about Facebook trade mark and domain names disputes, dated between 2008 and 2019;

o a printout of an article entitled ‘Facebook brings its Marketplace to 17 European countries’, referring to 2017.

 Attachment 64: a chart of EUIPO decisions concerning Facebook.

 Attachment 65: a chart of various national decisions in the European Union (from courts and national IP offices) concerning Facebook and ‘-BOOK’ trade marks.

 Attachment 66: certifications issued by the Chambers of Commerce in Mallorca, Alicante, Bilbao, Seville, Barcelona, Madrid and Valencia, between December 2010 and March 2011, certifying the high degree of well-known character, prestige and reputation of the opponent’s trade marks (‘FACEBOOK’, , and ), with corresponding English translations. For example, the certificate of the Chamber of Commerce of Bilbao of 21/12/2010 states that ‘as a result of a survey conducted among Biscayan enterprises, in the Historic Territory of Biscay, there is a sufficient and proven degree of awareness of the trade mark ‘FACEBOOK’ of the United States company Facebook Inc. to permit appreciating its well-known character in the sector of advertising, communication, social networking, etc.’.

In attachments 37 to 66, the earlier mark is also used as described in attachment 1.

Assessment of the evidence

Some of the above evidence relates to the United Kingdom (UK). However, it follows from Article 8(1) and Article 8(5) EUTMR, worded in the present tense, that the conditions for applying them must also be fulfilled at the time of taking the decision. As the UK is no longer a member of the EU, the evidence relating to its territory cannot be taken into account to prove enhanced distinctiveness and reputation ‘in the EU’.

Having evaluated all the documents listed above, the Opposition Division concludes that earlier mark 2 has enhanced distinctiveness and reputation in the European Union for some of the services on which the opposition is based and for which the opponent claimed enhanced distinctiveness and reputation.

The notable amount of evidence submitted by the opponent leaves no doubt that the earlier trade mark ‘FACEBOOK’ has been subject to long-standing and intensive use (as registered or with small variations) and is generally known in the relevant market as the name of the largest social networking website in existence (with already more than 600 million active users in January 2011, 1.11 billion active users in March 2013, 1.35 billion monthly active users as of the third quarter of 2014 and 1.79 billion active users as of the third quarter of 2016), where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources.

The brand studies, the reports on social networks and the international site rankings (that place ‘FACEBOOK’ as ‘the leading social networking site in 15 European Markets by the end of 2010’ and, according to Interbrand Best Global Brands 2017, in 8th place), the share of the market by percentage reach evidenced by the documents, the impressive and constantly increasing number of active users and the various references in the press to its success, all unequivocally demonstrate that earlier mark 2 enjoys a very high degree of recognition among the relevant public in connection with the following services:

Class 38: Telecommunications services, namely electronic transmission of data, messages and information; providing online forums for communication on topics of general interest; providing online chat rooms; audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, audio and video images; providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple websites; providing access to computer databases in the fields of social networking and social introduction.

Class 41: Providing computer, electronic and online databases for recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photosharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks.

Class 42: Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, and engage in social, business and community networking; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer services in the nature of customized web pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites.

Class 45: Social introduction; networking services.

More specifically, it enjoys a very high degree of recognition in connection with social networking and related services to the extent covered by the aforementioned services in Classes 38, 41, 42 and 45.

Furthermore, the existence of the reputation of the earlier mark ‘FACEBOOK’ has also been confirmed by previous decisions of the Office as well as by the certifications and decisions of national authorities.

Consequently, earlier mark 2 enjoys enhanced distinctiveness and reputation for the services specified above. In particular, as far as the services in Class 45 are concerned, it is considered that enhanced distinctiveness and reputation have been proven for social networking services.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier mark 2.

a) The goods and services

The goods and services on which the opposition is based, and for which enhanced distinctiveness was proven, are inter alia the following:

Class 45: Social networking services.

The contested services are the following:

Class 45: Online social networking services; online social networking services accessible by means of downloadable mobile applications.

All the contested services are included in the opponent’s broad category of social networking services in Class 45. Consequently, they are identical.

b) Relevant public — degree of attention

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

In the present case, the services found to be identical are directed at the public at large whose degree of attention will be average.

c) The signs

FACEBOOK
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 word ‘FACEBOOK’ does not exist as such in any of the languages of the European Union. Although this word is defined by the online Wiktionary open-content dictionary as ‘a reference book or electronic directory made up of individuals’ photographs and names’ or ‘a college publication distributed at the start of the academic year by university administrations with the intention of helping students get to know each other better’ (information extracted from Wiktionary on 06/03/2021, at https://en.wiktionary.org/wiki/facebook), it appears that these meanings are limited to the United States of America. This is also reflected in the Wikipedia online encyclopaedia, which seems to confirm the term ‘facebook’ as being ‘a common or web directory found at some American universities consisting of individuals’ photographs and names. In particular, it denotes publications of this type distributed by university administrations at the start of the academic year, with the intention of helping students get to know each other’ (information extracted from Wikipedia on 06/03/2021 at https://en.wikipedia.org/wiki/Face_book).

The English-speaking part of the relevant public will, however, naturally mentally dissect ‘FACEBOOK’ into elements that have a clear and specific meaning for them. Therefore, they are likely to perceive it as a combination of the English words ‘FACE’ and ‘BOOK’, without however attributing a concept as a whole to the juxtaposition of these words, other than the sum of its parts. The word ‘FACE’ refers, inter alia, to ‘the front part of a person’s head from the forehead to the chin, or the corresponding part in an animal’ (information extracted from Lexico on 06/03/2021 at https://www.lexico.com/definition/face), and the word ‘BOOK’ means, inter alia, ‘a written or printed work consisting of pages glued or sewn together along one side and bound in covers’ (information extracted from Lexico on 06/03/2021 at https://www.lexico.com/definition/book).

In French and Portuguese, the word ‘FACE’ has essentially the same meaning as in English.

The inherent distinctiveness of ‘FACEBOOK’ (or of its elements if they are separated out) in relation to the relevant services in Class 45 is average, including for that part of the public who perceives a meaning therein, as explained above.

For the contested sign, the verbal element ‘bookooroo’ as a whole has in principle no meaning for the public in the European Union, although a part of the English-speaking public could perceive it as an allusion to a dated North American expression ‘buckaroo’ meaning ‘a cowboy’ (information extracted from Lexico on 15/03/2021 at https://www.lexico.com/definition/buckaroo). Moreover, the English-speaking public will grasp the allusion to a ‘book’ (see definition above) due to the sequence of letters ‘book-’ at the beginning of the verbal element ‘bookooroo’.

The opponent argued that ‘ooroo’ would be understood as a colloquial Australian expression meaning ‘see you later’ or ‘good bye’ and that it is very weak for the relevant online networking services because it is a hint to the purpose of the services (exchanging information among people and keeping in touch). To support its argument, the opponent submitted evidence to prove the meaning of ‘ooroo’.

However, the Opposition Division cannot agree with this assertion. The average consumer in the European Union is not acquainted with colloquial Australian expressions, including ‘ooroo’ as claimed by the opponent. Consequently, the alleged meaning of ‘ooroo’ will not be understood by the relevant public and ‘ooroo’ will not be perceived as a separate meaningful element (let alone a very weak element). This also means that the public will not easily dissect the word ‘bookooroo’ into ‘book’ and ‘ooroo’.

In view of all the above, the verbal element ‘bookooroo’ has no meaning in relation to the relevant services in Class 45 and is, therefore, distinctive to an average degree.

The element at the beginning of the contested sign will be perceived as a highly stylised letter ‘b’. However, contrary to the opponent’s assertions, the public is unlikely to recognise in the stylisation of the letter ‘b’ the images of a surfboard, a ukulele, a native Australian and other graphics. These images are so small that they are barely perceptible and are, therefore, considered negligible. As these images are likely to be disregarded by the relevant public, they will not be taken into consideration.

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 or of a verbal element (the initial part) the one that first catches the attention of the reader. Consequently, the fact that the beginning of the marks/elements clearly differs (namely ‘FA-’ v ‘BO(O)-’) has a particular significance in the present case.

Visually, the signs coincide in the sequence of letters ‘BOOK’. However, this sequence of letters is placed in a different position in the marks and is prefixed or suffixed by other letters.

The marks clearly differ in their remaining letters, namely ‘FACE’ in the earlier mark and ‘OOROO’ in the contested sign. Moreover, the contested sign also contains the highly stylised letter ‘b’ at its beginning which has no counterpart in the earlier mark.

Therefore, the signs are visually similar to an extremely low degree, bordering on visual dissimilarity.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛BOOK’, present identically in both signs in different positions. The pronunciation clearly differs in the sound of the letters ‛FACE’ of the earlier sign and ‘OOROO’ of the contested mark, which have no respective counterparts in the other mark. The stylised letter ‘b’ at the beginning of the contested sign will be perceived as a stylisation of the first letter of the verbal element ‘bookooroo’ and is unlikely to be pronounced.

Due to the peculiar sequence of consonants and vowels, the contested sign has a very distinct and repetitive rhythm and intonation which is totally different from the rhythm and intonation of ‘FACEBOOK’.

Therefore, the signs are aurally similar to an extremely low degree, bordering on aural dissimilarity.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The English-speaking public will recognise the meaningful word ‘BOOK’ in the earlier mark and will also grasp the allusion to a ‘book’ in the element ‘bookooroo’ of the contested sign. However, as the sequence of letters ‘-ooroo’ in the contested sign has no meaning for the relevant English-speaking public, the word ‘book’ will not be easily dissected from the element ‘bookooroo’. Moreover, the earlier mark also contains the meaningful word ‘FACE’, and the contested sign includes the concept of the single letter ‘b’. Overall, there is only a very low degree of conceptual similarity for the English-speaking public.

For the remaining part of the public who do not understand ‘BOOK’, there is nothing to link the marks conceptually. Consequently, the marks are not conceptually similar for this part of the public.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier trade mark has a reputation and enjoys an enhanced distinctiveness. The evidence of reputation and enhanced distinctiveness has already been examined above and it was found that earlier mark 2 enjoys a very high degree of enhanced distinctiveness for the relevant services in Class 45.

e) Global assessment, other arguments and conclusion

The services are identical. The earlier trade mark has a very high degree of distinctiveness acquired through use. The relevant public is the public at large, who will have an average degree of attention.

The marks have an extremely low degree of visual and aural similarity, bordering on dissimilarity. Conceptually, the marks either have a very low degree of similarity or are not similar.

The similarities between the marks are so minimal that the public will not think that the identical social networking services provided under both marks have the same or related commercial origin, despite the very high degree of distinctiveness of the earlier mark.

The coincidence in the sequence of letters ‘BOOK’, which is meaningful for the English-speaking public, is not sufficient to cause confusion between the marks. Contrary to the opponent’s arguments, ‘BOOK’ is not a separate distinctive element in the contested sign. The sequence of letters ‘BOOK’ is fully integrated in the element ‘bookooroo’ and will not be easily dissected.

Considering all the above, there is no likelihood of confusion (including association) on the part of the public. Therefore, the opposition under Article 8(1)(b) EUTMR must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 17 918 069 for the word mark ‘FACEBOOK’ (earlier mark 1).

 European Union trade mark registration No 9 151 168 for the figurative mark (earlier mark 3).

 European Union trade mark registration No 5 585 518 for the word mark ‘FACEBOOK’ (earlier mark 4).

Earlier marks 1 and 4 are identical to the earlier mark that has already been compared. Earlier mark 3 is the word ‘facebook’ depicted in standard white bold lower-case letters set against a blue background which does not make this earlier mark more similar to the contested mark than earlier mark 2. Moreover, earlier marks 1, 3 and 4 cover the same scope of services in Class 45 enjoying the same degree of enhanced distinctiveness (because the findings on the reputation and enhanced distinctiveness apply mutatis mutandis to these earlier marks as well). Consequently, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

In view of the above outcome, it is not necessary to suspend the present proceedings due to the pending cancellation action against earlier mark 1.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier mark 2.

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).

a) Reputation of the earlier trade mark

The evidence of reputation has already been examined above and it was found that earlier mark 2 enjoys a very high degree of reputation for social networking services in Class 45.

The opposition is directed against the following services:

Class 45: Online social networking services; online social networking services accessible by means of downloadable mobile applications.

b) The signs

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

c) The ‘link’ between the signs

As seen above, the earlier mark is highly reputed, and the signs are similar to some extent (which is extremely low). 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 services in Class 45 are identical and the earlier mark enjoys a very high degree of reputation. However, even in these circumstances, the marks are similar to such a low degree that the public is unlikely to make a clear mental link between them. The similarity in the coinciding string of letters/sounds ‘BOOK’ is unlikely to bring the earlier mark to the mind of the average consumer. The marks contain sufficient differences so that the public will not mentally associate the marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition based on earlier mark 2 is not well founded under Article 8(5) EUTMR and must be rejected.

The opponent has also based its opposition under Article 8(5) EUTMR on the following earlier trade marks:

 European Union trade mark registration No 17 918 069 for the word mark ‘FACEBOOK’ (earlier mark 1).

 European Union trade mark registration No 9 151 168 for the figurative mark (earlier mark 3).

 European Union trade mark registration No 5 585 518 for the word mark ‘FACEBOOK’ (earlier mark 4).

Earlier marks 1 and 4 are identical to the earlier mark that has already been compared. Earlier mark 3 is the word ‘facebook’ depicted in standard white bold lower-case letters set against a blue background which does not make this earlier mark more similar to the contested mark than earlier mark 2. Moreover, earlier marks 1, 3 and 4 cover the same scope of services in Class 45 enjoying the same degree of reputation (because the findings on reputation apply mutatis mutandis to these earlier marks as well). Consequently, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no mental link will be established between the contested sign and earlier marks 1, 3 and 4.

In view of the above outcome, it is not necessary to suspend the present proceedings due to the pending cancellation action against earlier mark 1.

COSTS

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

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

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

The Opposition Division

Kieran HENEGHAN

Vít MAHELKA

María del Carmen SUCH SÁNCHEZ

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.