A trade mark application for “FriendBook” has been refused by the Australian Trade Marks Office, following a successful opposition from Facebook.

Australian company Northsword Pty Ltd filed an application on 19 February 2012 for the word mark “FriendBook” in respect of Class 45 services for:

Consultancy services relating to social planning; dating and social introduction services provided via online personal advertisements; escort agencies (social); providing information, including online, about personal and social services meeting the needs of individuals; social escort agency services; social escorting; social work services.

Facebook faces off with Friendbook

Facebook opposed this application under Australia’s Trade Marks Act 1995 under Section 60, which allows opposition to a proposed registration of a trade mark on the grounds that:

  1. another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
  2. because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

To satisfy the first part of the above test, Facebook relied on the reputation of seven different marks. Facebook has a large portfolio of trade marks in Australia, which offer protection for its brand across a number of classes of goods and services. The first limb of that test was easily satisfied.

The second limb was also satisfied. Australian trademark law, generally speaking, assesses the following factors when deciding whether a mark is likely to deceive or cause confusion:

  • the nature of the goods/services claimed;
  • the way in which the marks are used;
  • the comparison of the marks – including any stylistic elements used;
  • the class of customer to which the mark is directed; and
  • whether the goods/services are cheap items or expensive items (for example, customers purchasing luxury or expensive items are thought to exercise more caution).

In assessing the confusion, the Trade Marks Hearing Officer considered that:

  • the two trademarks are not the same when you consider the trademarks as a whole;
  • however, the respective trademarks share the same structure of a single syllable word beginning with the letter “F” preceding the highly unusual word BOOK when you consider they are being applied to online social networking services; and
  • the word “book” does not appear to have any descriptive meaning when applied to such services and is therefore a striking term that consumers are likely to recognize and remember.

She concluded that, overall:

given the reputation evidenced by the opponent in its FACEBOOK trade mark both overseas and in Australia, a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the FACEBOOK trade mark and the applicant’s FRIENDBOOK trade mark, particularly when these trade marks are applied to the same social networking services.

Commentary

The success of Facebook’s opposition is interesting, as opposition to a mark based on reputation in Australian trade mark law can be a ‘double-edged sword’. An evolving principle in Australia is the notion that a if registered trade mark’s reputation is overwhelming that can be taken into account in the assessment of whether an opposed mark is likely to deceive or cause confusion. For Ian Thorpe, the Olympic swimmer, his trade mark Thorpedo was found to be so synonymous with him that it reduced the risk that consumers would be confused by similar marks. That argument does not appear to have been raised by Northsword.

An appeal (and in some instances an application for an order for review) may be made to the Federal Court or the Federal Circuit Court in Australia. At the time of this blog post, it still remains to be seen whether Australians will be browsing their “Friendbooks” any time soon.

This article was prepared by Luke Hawthorne of Norton Rose Fulbright’s Sydney office (luke.hawthorne@nortonrosefulbright.com and +61 2 9330 8736).