Facebook, Inc v Facemba, LDA

[2014] ATMO 83

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Facebook, Inc to protection of International Registration Designating Australia 1504587 (IR 1121555)(38) - facemba - filed in the name of FACEMBA, LDA.

Delegate:	Jock McDonagh
Representation:	Opponent: Tracey Berger & Catherine Sedgley, of Spruson & Ferguson Intellectual Property Holder: No representation.
Decision:	14 ATMO 83 Reg. 17A.29 opposition – Ground pursued under section 60 established – IRDA refused protection.

Background

1. Application 1504587 is an international registration designating Australia (“IRDA”).  It was filed in the name of FACEMBA, LDA (“the Holder”) under the Madrid Protocol on 30 April 2012.

2. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs. This section makes provisions for the Trade Marks Regulations (“the Regulations”) to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.”  

3. Details of the IRDA are as follows:

Trade mark:	facemba
Trade mark application: International Registration:	1504587 1121555
Filing Date:	30 April 2012
Specification:	Class 38: Provision of an Internet platform for social networking services

1. Following examination of the IRDA, IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 30 August 2012.

2. On 28 February 2013 Facebook, Inc (‘the Opponent’) filed a Notice of Opposition (‘the Notice’) to extension of protection of the IRDA to Australia pursuant to Reg 17A.29 of the Regulations.

3. Thereafter the Opponent filed evidence in support, being a declaration by Kathleen Johnston (Lead Intellectual Property Counsel of the Opponent) made 27 August 2013. The Holder did not file any evidence.

4. I heard the matter in Sydney as a delegate of the Registrar of Trade Marks on 18 June 2014. Tracey Berger and Catherine Sedgley, both of Spruson & Ferguson Intellectual Property, represented the Opponent. There was no appearance on behalf of the Holder.

Grounds of Opposition

1. The Notice nominated most grounds of opposition available under the Trade Marks Act 1995 (“the Act”). At the hearing, Ms Berger advised me that the Opponent did not abandon any of its grounds of opposition; however, the following four grounds were primarily relied upon by the Opponent:

• Contrary to law (Section 42(b))
• Prior substantially identical or deceptively similar trade mark (Section 44)
• The IRDA was made in bad faith (Section 62A)
• Reputation (Section 60)

1. To succeed in its opposition the Opponent bears the onus of establishing at least one of its nominated grounds of opposition. As will become apparent, I have only found it necessary to address the section 60 ground in this decision and this is discussed below. Of course, should the decision be appealed, it is open to the Opponent to plead any ground it considers relevant in proceedings before the Court.

Standard of Proof

1. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]

Evidence

1. I note from the Johnston declaration (“Johnston”) that the Opponent is the owner of the following Australian trade mark registrations:

Registration	Trade Mark	Classification  goods/services	Priority Date
1088856	FACE	16, 25, 35, 41 & 45	2.12.05
1100642	FACEBOOK	35 & 38	23.02.06
1211165	FACEBOOK	9, 38 & 42	19.11.07
1425810 (IR 1075094)	9, 35, 36, 38, 41, 42 & 45	16.0710

Section 60 Trade mark similar to trade mark that has acquired a reputation in Australia:

1. Section 60 of the Act provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)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

   (b)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.

   Note:For priority date see section 12.

2. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. Further, at [86], Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

5. The Opponent submitted, and I accept, that both the Opponent’s FACEBOOK trade marks and the Holder’s mark consist of the common English word FACE as a prefix, with the Opponent’s marks combined with the common English word BOOK and the Holder’s mark containing MBA, which is the abbreviation for Masters of Business Administration.

6. Johnston states that the Opponent’s FACEBOOK trade mark was first used in 2004 in the USA in relation to a social networking site for university students. In 2006, the Opponent’s services became available to the general public. Use of the FACEBOOK trade mark commenced in Australia from September 2006.

7. I am satisfied that Johnston establishes that the Opponent had used its FACEBOOK trade marks in Australia and globally on its internet platform for social networking for well over five years before the Holder’s priority date. The Opponent is arguably the worldwide leader in online networking services.

8. Johnston demonstrates that at the priority date the number of FACEBOOK users was approximately 11 million active users in Australia and that the Opponent’s website 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.

9. The Opponent’s revenue and advertising in Australia and globally under the FACEBOOK trade mark can be described as massive, which certainly fulfils the “substantial” requirement referred to above.

10. The renown of the Opponent and its FACEBOOK branded social networking site have been the subject of numerous books, a movie, third party case studies, printed and online press and brand surveys.

11. I am satisfied that as at 30 April 2012, the trade mark FACEBOOK used by the Opponent had required a reputation in Australia in respect of social networking and other Internet platform services.

12. 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.

13. This would be particularly so given that the FACEBOOK services had their origins in the area of university students. Consumers would naturally assume that the Opponent might create a social network or offer other services directed to MBA students or graduates.

14. I am satisfied that the Opponent has established this ground of opposition for the services claimed by the Holder. 

Decision

1. Prior to the Raising the Bar amendments (in force from 15 April 2013), then regulation 17A.34 provided:

   17A.34   Decision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

   (2)       The Registrar must tell the International Bureau of his or her decision.

2. In order for the Opponent to be successful, it is only necessary for it to establish one of its nominated grounds of opposition. In this instance, I find that the Section 60 ground has been made out and I refuse to extend protection to the IRDA. That being so, I do not need to consider any of the remaining grounds of opposition, and I make no formal determination or finding in relation to those grounds.

Costs

1. The Opponent sought its costs.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Holder as per Schedule 8 of the Regulations.

Jock McDonagh
Hearings Officer
Trade Marks Hearings
10 September 2014