Trademarking “Advertising” in Class 35: Business Lesson from Airbnb Case

Registering a trademark for “advertising” under Class 35 of the Nice Classification might not make sense for your business, unless you actually provide advertising services to your clients. This crucial nuance was one of the key conclusions of the General Court in the recent case T‑94/24 Airbnb, Inc. vs EUIPO.

On 15 September 2010 Airbnb, Inc. filed an application for registration of an AIRBNB trademark in the EU. Among the services in respect of which the registration was sought was advertising in Class 35. On 5 March 2020 an Australian company Airtasker Pty Ltd filed an application with EUIPO for revocation of the AIRBNB mark on the basis of Article 58(1)(a) of Regulation 2017/1001.

Under Article 58(1)(a) of Regulation 2017/1001, the rights of the proprietor of an EU trademark are to be declared to be revoked if, within a continuous period of five years, the trademark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

EUIPO held that Airbnb, Inc. had not shown genuine use of the AIRBNB mark in connection with advertising and consequently the trademark should be revoked in relation to this service.

Airbnb, Inc. appealed, claiming that EUIPO erroneously equated advertising with “services of an advertising company”. The company argued that the evidence provided shows that it advertises services offered by its hosts, which is sufficient to prove genuine use of the AIRBNB mark in connection with advertising.

The court did not agree, noting that the mere distribution of Airbnb, Inc.’s newsletters or magazines featuring accommodation and events offered by its hosts does not mean the contested mark is used in connection with advertising services. The court considered that presenting accommodation or experiences offered by hosts as part of the content of its magazines and newsletters is an intrinsic part of Airbnb, Inc.’s business activity.

It was further clarified in the decision that the promotion of the services provided by hosts is not intended to advertise those services as a means of maintaining or creating market shares for those hosts, but to facilitate the sale of the services offered by Airbnb, Inc. Therefore, EUIPO correctly asserted that the promotion of its own services cannot be classified as the provision of “advertising” services to third parties.

Comment

The Airbnb, Inc. vs EUIPO case serves as a reminder for businesses seeking trademark protection. It underscores the fundamental principle that a trademark’s protection can be revoked if it’s not used for the goods or services it was registered for. Crucially, this ruling clarifies that advertising in Class 35 refers to providing advertising services to others (like an advertising agency), not simply advertising your own products or services.

Many companies mistakenly believe that by advertising their own offerings, they are automatically using advertising in Class 35, thereby extending their trademark’s scope. As the Airbnb case demonstrates, this is a common pitfall that can lead to the revocation of a mark for non-use. Therefore, carefully consider your actual business activities when selecting goods and services to apply for.