eBay keeps Sportbay at bay, but not in all contested classes of goods

Having a widely known reputation as an online market place alone is no guarantee for success where contesting a trade mark in opposition proceedings that has also been applied for in other classes than those for which your reputed trade marks have been registered. On 7 September 2015, the Benelux Office for Intellectual Property (BOIP) delivered its decision in the opposition proceedings that eBay Inc. (‘eBay’) had installed against the trade mark ‘Sportbay’, applied for by Nesterovas Linas, trading under the name Sportbay / Open Sales Europe (‘Sportbay’). In its judgement, the BOIP made it clear that in opposition, a risk of confusion will only be held to be present where the signs, as well as the goods and services involved, are similar. Any extended ‘confusion based’ scope of the protection of the invoked trade marks – on the basis of these trade marks having a repute – cannot lead to a different approach.

Sportbay applied for the combined word and figurative mark ‘Sportbay’ in classes 22, 25, 28 and 35. eBay installed opposition proceedings against this trade mark on the basis of four word marks for ‘EBAY’: one Benelux word mark registered in classes 35, 38 and 42, one Community word mark registered in classes 14, 16, 25 and 35, one Community word mark registered in classes 9, 28 and 41 and one Community word mark registered in class 42. The signs to be compared are the following:

The BOIP first held that eBay only proved normal use has been made of the invoked trade marks in class 35 (online marketplace services) and class 42 (the provision of an interactive online bulletin board for the posting, promotion, sale and resale of goods through a worldwide computer network). Sportbay had requested eBay to show normal use of the invoked trade marks was made during the relevant period (21 May 2007 – 21 May 2012), which it was entitled to request on the basis of the trade marks having been registered more than five years before publication of the Sportbay trade mark.

eBay failed to show normal use was made of the invoked trade marks during the relevant period in any of the relevant classes other than classes 35 and 42. In substantiating this finding, the BOIP first stressed that because eBay also invoked Community trade marks, the requirements for showing normal use are more stringent than in case it would only have invoked Benelux trade marks (following the decision of the CJEU in Onel (C-149/11). On the basis of the documents submitted by eBay, including print screens of the Dutch and English Wikipedia pages about eBay and print screens of various eBay websites such as www.theebayshop.com, the BOIP concluded that eBay did not show that it has used the invoked trade marks normally in all of the invoked classes of goods and services during the relevant period. Many of the documents submitted were undated or had a date falling outside of the relevant period. Although the BOIP noted that the date of a document falling outside the relevant period does not necessarily mean no prove of use can be derived from such documents, the content of the documents could not prove normal use in the relevant classes other than class 35 and 42. For instance, some print screens only showed a limited number of users had been active on a particular website and on others, the mere statement that international shipping of goods was offered on the website was not sufficient to prove such shipping has actually occurred.

In order to determine whether there exists a likelihood of confusion between the eBay trade marks and the Sportbay trade mark, the BOIP first held that only the goods and services in the invoked classes 35 and 42 are similar to the goods and services in class 35 for which ‘Sportbay’ was applied for. The goods and services in the other classes involved in the opposition proceedings (class 22, 25 and 28) are dissimilar to the goods and services for which the invoked eBay trade marks are registered.

The BOIP then held there exists a certain level of conceptual, visual and aural similarity between ‘Sportbay’ and ‘EBAY’.

The most dominant part of both the invoked trade marks and the contested trade mark is ‘bay’. The BOIP held ‘sport’ and ‘e’ to be descriptive as these parts relate to the goods and services for which the marks are respectively applied for and registered. The (English) word ‘bay’ has the same meaning in both marks among the relevant public, i.e. ‘a broad inlet of the sea where the land curves inwards, ‘an area specially allocated or marked off’ or ‘a space created by a window line projecting outwards from a wall’ (Source: Oxford English Dictionary). As the word ‘bay’ is included in the invoked and contested marks, the BOIP concludes there is a certain level of conceptual similarity between these marks.

Visually, despite the contested trade mark being a mark consisting of both word and figurative elements, the BOIP ruled that the figurative elements do not enable the relevant public to pay attention to any other elements than the word elements of ‘Sportbay’, because the figurative elements hardly differ from regularly used fonts. Therefore, there is a limited level of similarity between the signs, according to the BOIP.

In the light of both the visual and aural comparison of the signs, the BOIP cites established case law from which it follows that the first part of a mark will usually be regarded as the most significant part by the relevant public (e.g. General Court in the Mundicor case, T-183/02 and T-184/02). However, taking into account the descriptive nature of the first parts of the marks, the identical last part of both marks will not escape the public’s attention. Hence, the BOIP concludes there is also a limited level of aural similarity between eBay and Sportbay.

On that basis, the BOIP ruled that the public may believe that those goods and services for which the Sportbay trade mark is applied for and which are to be held similar to those for which the eBay trade marks are registered, originate from the same or economically linked undertakings. In this regard, eBay argued that its trade marks should be attributed a repute and should therefore be held to enjoy a wider scope of protection. The BOIP, however, notes it does not have to look into this argument because it cannot influence the outcome of the opposition proceedings. In such proceedings, also where the invoked trade marks enjoy a wider scope of protection, a risk of confusion is only present where the signs, as well as the goods and services in issue are similar. The (possible) repute of its trade marks could therefore not prevent eBay to see its claims in opposition to be partially denied, as Sportbay will be registered as a trade mark in class 22, 25, 28 and 35 except where the services in class 35 are similar to the services for which eBay’s trade marks are registered.