In September, we blogged on the successful opposition by Facebook to a trade mark registration in Australia for ‘Friendbook’. Facebook has had further success in the Australian Trade Marks Office, protecting their brand through a successful opposition to an international registration of the trade mark FACEMBA.
Application 1504587 for the word mark FACEMBA was an international registration that designated Australia. It was filed in the name of company FACEMBA, LDA under the Madrid Protocol on 30 April 2012.
International trade mark registrations under the Madrid Protocol
The system of international registration of marks is governed by two treaties:
- the Madrid Agreement Concerning the International Registration of Marks, which being dated in 1891 is one of the International System’s earliest Treaty regimes, and
- the Protocol Relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996.
After achieving registration in a home country, a brand owner can apply to register their mark with WIPO. Following registration of the mark in the Madrid regime, brand owners can then ‘designate’ further jurisdictions where protection can be achieved using a streamlined system.
Each designated country still examines the trade mark in accordance with their own trade mark legislation, with opportunities to oppose registration in the designated jurisdictions.
Blocking FACEMBA in Australia
Facemba’s international registration originated from Portugal. The trade mark was filed in Class 38 for ‘provision of an Internet platform for social networking services’. Australia, Switzerland, China, Russia and Singapore were designated for registration.
IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 30 August 2012. On 28 February 2013 Facebook, Inc filed a Notice of Opposition. A hearing was held on 18 June 2014. Facebook was required at that hearing, on the balance of probabilities, to successfully establish at least one ground of opposition to the mark.
In this case, as with the earlier decision of Friendbook, Facebook was successful under section 60 of the Australian Trade Marks Act 1995 because
- Facebook’s trade marks, before the priority date for the registration of FACEMBA trade mark in respect of those goods or services, acquired a reputation in Australia; and
- Given the reputation of Facebook’s trade marks, the use of the FACEMBA trade mark would be likely to deceive or cause confusion.
Establishing reputation was hardly a hurdle for Facebook. As the evidence before the Hearing Officer indicated:
- Facebook is arguably the worldwide leader in online networking services.
- at the relevant time, Facebook had approximately 11 million active users in Australia and was the third most trafficked website in Australia. ‘Some 67% of Australian regular users use the FACEBOOK website, for an average of seven hours and six minutes per month.’
- the Hearing Officer described Facebook’s revenue and advertising in Australia and globally under the FACEBOOK trade mark as ‘massive, which certainly fulfils the “substantial” requirement referred to above.’
- the FACEBOOK branded social networking site has been the subject of ‘numerous books, a movie, third party case studies, printed and online press and brand surveys.’
Whereas FRIENDBOOK was confusing because of the ‘BOOK’ suffix, FACEMBA was likely to cause confusion because of the FACE prefix. As the Hearing Officer decided:
Having regard to the evidence of the Opponent’s reputation in the area of social networking and Internet platforms, I consider that deception or confusion with the Holder’s mark is likely. Consumers confronted with a social networking platform with the prefix FACE- would be caused to wonder if it was associated with the Opponent.
The Hearing Officer thought this particularly true given the University origins of Facebook, and MBA being strongly associated with a Masters of Business Administration.
An effective opposition in Australia has prevented the trade mark from being registered here.
Registration through the Madrid regime has been achieved in China (perhaps due to Facebook’s restricted presence there) and an application is on foot in Russia. Registration in Singapore was abandoned after a technical objection from that jurisdiction.
To the casual observer, defending an established brand from a new trade mark can seem ‘heavy handed’ or aggressive. However, while Australian trade mark law does not have a legal concept of ‘dilution’ in the same sense as the United States, it is crucial that trade mark owners are vigilant in ensuring they have up-to-date and ongoing protection. Facebook, for example, has a strong interest in maintaining their control of the prefix ‘FACE’ in the social media space; although a casual search of the Australian register reveals multiple ‘FACE’ marks already registered in Class 38. The risk to brand can be critical.
Trade mark watch services and brand portfolio reviews are effective tools. Given Facebook’s enviable position as a global brand, their brand protection strategy is sensible and, it seems, effective.
Appeals from the Australian Trade Marks Office are possible; however, it seems Facebook has managed to block FACEMBA for now.
Luke Hawthorne (Luke.Hawthorne@nortonrosefulbright.com / +61 2 9330 8736) is a lawyer in Norton Rose Fulbright’s Australia IP practice.