Twitter, Inc. v. Luchan Song

Twitter, Inc.


The Board fully endorses the conclusion reached by the OD with respect to the finding of reputation of the opponents earlier word mark TWITTER in the EU for all of the services in respect of which it is protected. The extreme popularity of the website proves that the trade mark, which occupies a consolidated position among the leading brands, is indeed known by a large number of EU consumers. Moreover, based on the complex nature of the TWITTER social network and the many open possibilities it offers for the users, the Board deems the reputation of the opponents sign to extend to all of the services covered by the earlier mark, rather than just to ‘a website for social networking as claimed by the applicant since the existence of a functioning social network necessarily implies the offering of a broad range of related services. Contrary to the opponents view, the applicants goods in Classes 14, 18 and 25 are dissimilar to the opponents services. Therefore, there is no risk of confusion despite the similarity between the signs and the high distinctiveness of the opponents sign. As regards the opponents claim under Article 8(5), it is clear that the goodwill developed by the opponent with respect to the growth and development of its TWITTER-branded services is significant. The earlier mark is immediately recognized and associated with the social network that bears its name. Bearing in mind that the sense of belonging is very important for young people, and the fact that it is often combined with a psychological need to demonstrate the group-membership by wearing external signs immediately apparent to other members, the goods claimed by the applicant, bearing the trade mark TWITTER could be very well bought for this reason alone. Buying a TWITTER watch as a present to someone who is known to be a TWITTER user is for example an action motivated by the fondness for the earlier mark. Moreover, the applicants goods could be seen as merchandising products coming from the opponent. Contrary to what the applicant claims, it is not necessary for the opponent to prove the actual occurrence of the event described. It is sufficient to show that there is a risk of free riding, i.e. that the applicants mark might benefit and therefore gain an unfair advantage from the repute or distinctiveness of the older mark, which is the case here. The appeal is dismissed.

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