When a bigger brand challenges your trade mark: lessons from Airbnb and bnb-side 

A six-room guesthouse in Dorset taking on one of the world’s best-known travel brands has all the ingredients of a David v Goliath story. But being the smaller business doesn’t mean that bnb-side is bound to lose the trade mark dispute. 

Airbnb has opposed an application to register the bnb-side name as a trade mark. The guesthouse was established to help fund Portland's b-side arts festival and reportedly now provides an important source of income for it. 

The dispute raises a question about how far a famous brand’s trade mark rights can stretch. It also reminds growing businesses that a name can become a valuable commercial asset quickly, and that checking the legal position early can help avoid a much bigger problem later. 

How far can a famous brand’s rights stretch?

The size and profile of the businesses involved may make the dispute eye-catching, but they will not decide the outcome. The case will turn on the trade mark rights involved, how the names are used and the strength of the arguments on each side.  

A key question is how far a famous brand can go in claiming trade mark rights over ‘bnb’ when the term is descriptive and non-distinctive in the accommodation sector, particularly as ‘bnb’ appears to be the only similarity between the names. 

There’s a balance between protecting the reputation and goodwill a business has built and allowing others to use language that may have a genuine descriptive purpose. If ‘bnb’ is indeed the only similarity, bnb-side would seem to have the stronger argument when it comes to the similarity between the two names. 

Airbnb’s reputation still matters, however, so the position is not clear-cut. Well-known brands can benefit from wider trade mark protection, including where another name could take unfair advantage of or damage their reputation, but those rights are not unlimited. 

What happens when a trade mark is challenged?

Receiving a trade mark opposition from a much larger company can understandably feel daunting, but it’s important to assess the claim’s strength before deciding how to respond. 

A UK Intellectual Property Office (UKIPO) opposition is a formal process for deciding whether a trade mark application should be registered. Both sides have the opportunity to put forward their case and supporting evidence. 

There may also be scope to find a commercial resolution before a final decision is reached. Depending on the circumstances, that could involve agreeing limits around how a name is used or finding another solution that protects the interests of both sides. 

The key for smaller businesses is not to assume that a challenge from a larger brand means you have no options. The first step is to understand the rights being relied on, the strength of the challenge and the commercial implications of the different ways you could respond. 

A brand name can be a valuable commercial asset 

The bnb-side dispute also shows how quickly value can build around a name. 

The guesthouse reportedly generates almost half of the b-side arts festival’s annual income. That means there may be significant customer recognition, reputation and goodwill tied up in the name. 

Having to rethink a brand once that value has been built can be disruptive and expensive. Websites, social channels, marketing materials and signage may all need to change, while the business may also need to rebuild recognition around a new identity. 

That is why trade mark searches and conversations about brand protection are worth having early. Registering a company name, securing a domain or starting to trade does not give you the all-clear from a trade mark perspective. 

Check before you commit

If you’re preparing to launch or invest in a new brand, you should: 

• Check existing trade marks before investing in a name – registering a company, buying a domain or starting to trade doesn’t automatically mean you’re free to use that name from a trade mark perspective. Websites, packaging, signage, advertising and product launches can all make a later rebrand more disruptive and expensive. 

• Carry out trade mark searches early – identifying potentially conflicting rights before launch gives you more opportunity to change course before significant time and money have been committed. 

• Consider protecting your own brand – if the name is capable of trade mark protection, think about whether registration would help protect the reputation and value you are building. 

While the Airbnb and bnb-side dispute may ultimately turn on its own particular facts, the broader lessons for businesses are clear:  check your position early, protect your brand where appropriate and deal with potential conflicts before they become costly to resolve. 

Planning to launch, protect or defend a brand?

Our intellectual property and brand protection lawyers can help you assess existing trade mark rights, protect your brand and respond to challenges before they become more disruptive or costly.