Airbnb began in 2007, when two flatmates in San Francisco rented out three air mattresses in their living room because the hotels were full.
It soon turned into a start-up. When the hoped-for investment failed to materialise and the company urgently needed money, the founders designed Barack Obama and John McCain breakfast cereals as a way of raising seed capital. That creativity paid off: via a start-up accelerator, Airbnb grew into the global platform we know today.
A global brand naturally calls for solid trademark protection, which regularly comes in handy. It did so again recently, when Airbnb filed an opposition against the trademark airbnbx (no, not the most original name). The opposition was based on likelihood of confusion and Airbnb also relied on the reputation of its marks. That proved a smart strategy. The Opposition Division of the European Union Intellectual Property Office (EUIPO) ultimately refused the application in its entirety, but did so on both grounds. Likelihood of confusion alone was therefore not enough.
That airbnbx closely resembles AIRBNB was not the problem. For a successful claim of likelihood of confusion, all the goods and services of the contested mark must be at least similar to those covered by the earlier marks. Following a partial cancellation, Airbnb's registrations are limited to temporary accommodation and leisure activities. The EUIPO found three of the goods not to be similar to Airbnb's goods and services: downloadable cryptographic keys for receiving and issuing crypto-assets, computer programs for trading in shares and bonds, and banking software. According to the Opposition Division, this specialised financial field is too far removed from bookings and accommodation, and the use and distribution channels differ. For these goods, there was therefore no likelihood of confusion.
This is where the reputation ground came in. The Opposition Division found that, before the application was filed, AIRBNB had a high degree of recognition in the European Union, based among other things on surveys in four Member States in which 71% of respondents recognised the mark when it was mentioned. With airbnbx, the public will therefore think of Airbnb, even for the three goods that are far removed from the platform. By using that sign, the applicant would benefit from the mark's appeal without having invested in that reputation itself. The application was therefore refused in its entirety. Likelihood of confusion alone would not have been sufficient here.
The takeaway is clear: even where an infringement seems obvious, careful preparation is needed. As a trademark owner, you naturally want to prevent such near-identical marks from remaining on the register.
Author: Arnaud Bos
Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.