Nesterovas Linas, trading under the name Sportbay / Open Sales Europe, applied for the figurative and word mark SPORTBAY covering classes 22,25,28 and 35, in April 2012.
e-Bay opposed Sportbay's application based on an earlier Benelux word mark registered in classes 35, 38 and 42, a Community trade mark registered in classes 14, 16, 25 and 35, a Community trade mark registered in classes 9, 28 and 41 and a Community trade mark registered in class 42.
e-Bay's earlier registrations had been registered for more than five years, therefore, Sportbay requested that e-Bay show normal use of the mark during the period 21 May 2007 - 21 May 2012. e-Bay provided use of the mark on services in classes 35(online marketplace services) and 42 (the provision of an interactive online bulletin board for the posting, promotion, sale and resale of goods through a worldwide computer network). The Benelux Office for Intellectual Property (BOIP) did not accept that e-Bay had provided use in relation to the remaining goods and services covered by their registrations.
The BOIP agreed that there exists a level of conceptual, visual and aural similarity between the marks SPORTBAY and e-Bay and that there was a likelihood of confusion between the mark in relation to class 35 "online marketplace services" and 42 "the provision of an interactive online bulletin board for the posting, promotion, sale and resale of goods through a worldwide computer network." However, no likelihood of confusion was considered in relation to classes 22, 25, 28 and part of class 35 covered by Sportbay's application.
e-Bay argued that its reputation as an online auction and shopping website should be considered when assessing the risk of confusion in relation to all of the goods and services covered by Sportbay's application. The BOIP held that a risk of confusion will only be considered present where the signs and the relevant goods and services are similar. Whether or not a mark has reputation in the market will not change the outcome of the opposition.
Sportbay is to be registered on the Benelux register in classes 22, 25, 28 and a limited list of services in class 35.
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