Word play doesn’t work out

19th Aug 2021

Milena Velikova feels there may be some sympathy for the Proprietor here.

AirBnb, Inc. (the Applicant) applied to invalidate a device mark incorporating the textual element “Hairbnb” filed by Allan Ritchie (the Proprietor), shown below.

The mark was registered for various services in class 43, which all exclusively relate to animals, such as boarding for pets, cattery services, pet day care services and so on. The invalidity action was based on s5(2) and (3) of the Trade Marks Act 1994.

The Hearing Officer (HO) considered the services in question, which belong to class 43 for both marks. The Applicant’s covered broad terms, such as “arranging temporary housing accommodations” and “providing online reservation services for temporary lodging”, while the Proprietor’s covered boarding and day care services for pets. To carry out his assessment, the HO relied on various case law and legal doctrines, such as: complementarity of services; identity of services included in a more general category versus using a narrower terminology; and not straining language unnecessarily to produce a narrow meaning of the services.

The HO concluded that the degree of similarity between the services in question sits between low and medium, since the terms relating to short-term, alternative accommodation overlap, and the intended purpose of the services possess a certain level of complementarity, as the users of the Applicant’s services may also seek cattery services or animal boarding if they own a pet.

Elements of importance

When comparing the marks, the HO observed that the elements of importance which need to be taken into consideration are the textual elements “hair” and “bnb” in the Proprietor’s mark, since the additional elements, such as the colour combinations, the paw print and the roof device will not affect the overall distinctiveness of the mark. When these elements were compared to the Applicant’s wholly textual mark AIRBNB, the HO concluded that the marks are visually similar to a medium degree but aurally similar to a high degree, due to the fact that the letter “H” in “Hairbnb” would be pronounced softly, meaning the mark could be misheard as “Airbnb”.

The average consumer in this case was determined to be a member of the general public who will pay a medium to high degree of attention when selecting the services at issue. This, combined with the comparison of marks and services above, and the enhanced and acquired distinctive character of the Applicant’s mark, still led the HO to the conclusion that there is no likelihood of direct or indirect confusion between the marks in question.

Reputation

The evidence put forward by Airbnb was sufficient to demonstrate that the mark AIRBNB enjoys a strong reputation in the UK in relation to the provision of an online marketplace which allows users to view and book accommodation. This evidence included press releases, awards, information on the popularity of the website, the number of stays booked through the platform and even a report from the European Commission that includes a case study on the Applicant. Therefore, the HO was of the opinion that a link could be established between the Applicant’s mark and the Proprietor’s mark in the mind of the consumer, that the Proprietor may benefit from the positive image associated with Airbnb and its mark, and that this positive image could transfer to the Proprietor and his mark. The HO considered that this may lead to an attraction towards the Proprietor’s services that may not otherwise have been the case and will therefore give the Proprietor an unfair advantage by increasing demand for his services.

Natural conclusion

This case is a reminder of the importance of pleading s5(3), even when you think there is a good chance that a likelihood of confusion will be found. A natural conclusion can also be drawn that, where a mark has a reputation, the threshold for proving indirect confusion appears to be much higher than that used for proving that a link can be established between two marks in the mind of the consumer. This conclusion emphasises that proving likelihood of confusion can be very difficult and that proprietors with longstanding commercial activities and use of a particular mark should always rely on s5(3) within their pleadings.

Many readers may sympathise with the Proprietor in this case, a small businessman based in Scotland with a knowledge and love for his furry friends, and who – as he pointed out in his counterstatement – believes that the public will recognise the name of his business as a pun and appreciate that there is no connection with Airbnb.

Unfortunately for the Proprietor, in the world of trade marks, where brands are often viewed in a vacuum, it may be harder to see where the pun ends and the infringement begins.

Key points

If a mark has been used for some time and the owner has an opportunity to prove reputation, it should always supplement a likelihood of confusion claim with a s5(3) claim, as it may turn out to be the strongest case
The threshold for proving indirect confusion appears to be much higher than for proving that a link can be established between two marks in the mind of the consumer