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

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.
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.”
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

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.
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.
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.
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

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)

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

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

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Facebook, Inc v Facemba, LDA

Details

AGLC: Facebook, Inc v Facemba, LDA [2014] ATMO 83
Case: [2014] ATMO 83
Decision Date: 10 September 2014

CaseChat Overview and Summary

This decision concerns an opposition proceeding before the Registrar of Trade Marks, brought by Facebook, Inc. (the Opponent) against an International Registration Designating Australia (IRDA) filed by Facemba, LDA (the Holder). The dispute centred on whether protection should be extended to the IRDA in Australia.

The primary legal issue before the Registrar was to determine whether any of the grounds of opposition raised by the Opponent had been established, thereby requiring the refusal of protection for the IRDA. Specifically, the Registrar was required to consider the grounds of opposition and decide whether to refuse protection entirely or extend it in part, with or without conditions.

The Registrar's reasoning focused on the grounds of opposition as provided for under the relevant regulations. It was determined that the Opponent only needed to establish one ground of opposition for success. The Registrar found that the ground of opposition under Section 60 of the relevant legislation had been made out. Consequently, the Registrar refused to extend protection to the IRDA and made no determination on the remaining grounds of opposition. As the successful party, the Opponent was awarded its costs against the Holder.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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. 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. 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.

Ratio Decidendi

Legal Principle Established

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