AMERICAN GIANT AIR BNB INC FAILED THE OPPOSITION AGAINST THE TRADEMARK APPLICATION ‘CIAO BNB
Ciaomanager S.r.l., a small company from northern Italy, filed in 2017 a EU word trademark application for the sign ‚Ciaobnb‘ for products in classes 9, 35, 39, 41, 42 and 43. Airbnb Inc. opposed the application on the basis of its earlier trademarks ‚Airbnb‘, but EUIPO rejected the opposition.
By decision of April 9, 2019, the Opposition Division of EUIPO rejected the opposition filed by Airbnb Inc in 2016 against the EU trademark application ‚Ciaobnb‘, on grounds of lack of likelihood of confusion with the earlier trademark ‚Airbnb‘, registered for the same classes.
In assessing the similarity of the signs, EUIPO found the two signs to be different for many reasons.
In first place, EUIPO found that the word ‚BNB‘ tends to be associated by consumers with the concept of „Bed&Breakfast“, that is to say, a small receptive structure offering overnight stay and breakfast. Part of the services brought by the opposition concern the management and administration of facilities that provide temporary accommodation through online platforms or software applications; consequently, a sufficient connection between the mentioned services and the type of accommodation evoked by the notion of ‚BNB‘ exists.
The opposing party observed that it does not provide the typical ‚Bed & Breakfast‘ services, but an online platform service for the publication of accommodation offers by users themselves. Unlike the opponent argued, the Office held that the comparison of the signs must be assessed against the goods and the services on which the opposition is based, but not the business activities for which the earlier trademark is actually used, or for which it may have acquired distinctiveness through use. The element ‚BNB‘, therefore, appears to descriptive as it alludes to the type of products and services provided. The initial parts of both signs, respectively ‚AIR‘ and ‚CIAO‘, were considered sufficiently distinctive with respect to the goods and services requested, as well as different from each other. In addition, the consumer’s perception of word signs focuses on the first part of the sign, thus confirming the difference between the two.
With regards to the distinctive character of the earlier signs, the Office acknowledged that Air Bnb Inc. enjoys a consolidated position in the industry, as attested by the various independent sources produced as evidence in the proceedings. Therefore, the trademark ‘AirBnb’ acquired distinctiveness before the filing date of the contested trademark application. However, the acquired distinctiveness only concerns part of the goods/services opposed and therefore, with regards to the rest of the goods/services, the assessment rests on their distinctiveness per se.
In the light of all these considerations, the opposition was rejected.