Facebook, Inc. v Northsword Pty Ltd

[2014] ATMO 74

TRADE MARKS ACT 1995

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

Re:Opposition by Facebook, Inc. to registration of trade mark application 1475392 (45) - FRIENDBOOK - filed in the name of Northsword Pty Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Stephen Rebikoff of Counsel instructed by Davies Collison Cave Applicant: Not present at the hearing
Decision:	2014 ATMO 74 s. 52 opposition: sections 42, 44 and 60 pressed – s 60 ground of opposition established for all services - trade mark use likely to deceive or cause confusion - no requirement to consider other grounds.

Background

1. Northsword Pty Ltd (‘the applicant’) filed application number 1475392 on 19 February 2012 in class 45 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  FriendBook

Trade mark application:      1475392

Filing Date:  19 February 2012

Specification:  Class 45: 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

1. Facebook, Inc. (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 14 December 2012. Thereafter the opponent filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 29 May 2014. Mr Stephen Rebikoff of Counsel instructed by Adam Sears of Davies Collison Cave appeared for the opponent. The applicant did not attend the hearing but did provide written submissions for consideration.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Act.  The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [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]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on those grounds under sections 42, 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 42, 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services, there is no requirement for me to consider any of the other grounds of opposition.

Evidence

1. The evidence provided for this matter consists only of the following two declarations filed as evidence in support:

Declarant	Position	Date Made	Exhibits
Cheryl Hrvoj	Solicitor for Davies Collison Cave	16 September 2013	1 to 7
Kathleen Johnston	Lead Intellectual Property Counsel of Facebook, Inc	12 September 2013	KJ-1 to KJ-35

Section 60 ground - 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. In McCormick & Co Inc v McCormick[3](‘McCormick’) Kenny J discussed the meaning of “reputation” as follows:

   What is intended by the word “reputation” in section 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.

   Compare The Oxford English Dictionary. In s60, 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?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[4] said that the reputation required to be demonstrated was:

One of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

[3] [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].

[4] [2000] FCA 1587; (2000) 50 IPR1.

10.  It is for me to determine therefore whether the opponent has established that before 19 February 2012 its trade marks were recognized by the Australian public generally, or at least by a significant number of persons in the relevant marketplace, and whether because of that reputation the use by the applicant of its trade mark on the designated services would be likely to deceive or cause the public confusion.

Reputation of the opponent’s FACEBOOK trade mark

11.  The opponent relies upon its FACEBOOK trade mark which is the subject of registration nos. 1100642, 1101190, 1154693, 1211165, 1425810, 1484390 and 1484391 in relation to this ground. I note from the evidence that the FACEBOOK trade mark is used by the opponent in a number of ways and in a number of different fonts. Below are copies from the evidence (exhibit KJ-1 accompanying the Johnston declaration) of a few of the forms in which the opponent has used its FACEBOOK trade mark:

(Trade Mark Registration No. 1425810)

FACEBOOK

(Trade mark Registration No. 1154693)

12.  According to the Johnston declaration in 2004 the opponent’s services as an online social networking site were first offered to university students in the United States under the FACEBOOK trade mark. By the end of 2005, FACEBOOK services were available to more than 25,000 high schools and 2,000 universities throughout the United States, Canada, Mexico, the United Kingdom, Australia, New Zealand and Ireland. In 2006 the opponent’s FACEBOOK services became available to the general public (exhibit KJ-8).

13.  Paragraph 13 of the Johnston declaration are some impressive growth statistics for the opponent’s FACEBOOK services at an international level. These statistics demonstrate that the opponent’s FACEBOOK services are used by billions of users across the globe. Exhibit KJ-15 contains a table outlining details of the opponent’s approximate global sales revenue for the financial years 2009 to 2013 which are very substantial as are the figures for its advertising expenditure in exhibit KJ-16. It is clear from this evidence that the opponent’s use of its FACEBOOK trade mark before 19 February 2012 has resulted in a very considerable international reputation. However, the opponent needs to demonstrate that a reputation existed in Australia.

14.  According to the Johnston declaration on 31 March 2011 there were 12,333,780 FACEBOOK users from Oceania/Australia (exhibit KJ-12). According to Alexa, a web information company at: alexa.com, the opponent’s FACEBOOK website is the second most popular site in the world after Google® and that in terms of regional traffic ranks, FACEBOOK is rated third in Australia (exhibit KJ-10). Further to this The Nielsen Company’s report (exhibits KJ-13 and KJ-14) titled, “Aussies on FACEBOOK”, an Australian-specific study on FACEBOOK user numbers and growth reported:

·FACEBOOK reaches two thirds of all online Australians and half of the total Australian population each month.

·FACEBOOK has close to 11 million active users each month in Australia.

·Australians spend approximately 7 hours and 6 minutes per month on FACEBOOK.

·Approximately 75% of users spend time on FACEBOOK every day.

·Around one in four consumers say FACEBOOK is the first media of the morning and the last at night.

15.  The evidence supports the opponent’s assertions that a significant percentage of Australia’s population uses its FACEBOOK services. During the period August 2011 to August 2013 the opponent’s FACEBOOK services were referred to in over 96, 798 newspaper articles in major Australian printed publications including Herald Sun, The Australian, The Daily Telegraph, The Courier Mail and the Sydney Morning Herald (exhibit KJ-19). Many of these articles have been published after 19 February 2012 and are not relevant to establishing a reputation as at that date. However, the number of  articles published before the priority date of the opposed trade mark are more than sufficient evidence to demonstrate that the opponent did have a very considerable reputation in its FACEBOOK trade mark in Australia at 19 February 2012 in relation to social networking services. What remains to be determined is if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

Likely to deceive or cause confusion

16.  For the necessary comparison, I would set out the matters as follows. I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, may be quite different. I am to consider any of the modes of business that would notionally be within the scope of the registration, should it be granted in the terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion[5].

[5] Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)

17.  As mentioned earlier, section 60 does not require that the services upon which the opponent uses its trade mark be of a specified standard of similarity with the services of interest to the applicant. There can be little doubt that many of the respective services claimed by the parties are the same. The respective services of the opposed trade mark and the opponent’s trade mark registrations is as follows:

Applicant’s claimed services

Opponent’s services

Class 45: 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

Class: 45 Social introduction, networking and dating services; providing social services namely social network services in the field of personal development, namely self-improvement, personal growth, charitable, philanthropic, volunteer activities, public and community services and humanitarian activities; information on social networking services with respect to personal development, namely self-improvement, personal growth, charitable, philanthropic, volunteer activities, public and community service activities, and humanitarian activities

18.  The opponent’s evidence confirms that its services above are what it has used its FACEBOOK trade mark on and it has gained a very significant reputation for these services. I am satisfied that the applicant and the opponent are likely to offer the same social introduction services online.

19.  Under section 60 there is no requirement that the trade marks be substantially identical or deceptively similar. However, in this particular case, I believe it is necessary to consider the similarities between the trade marks. This is because there is more likely to be deception and confusion in the market place in the situation where the respective marks are applied to the same or similar goods and services[6] and the trade marks share a commonality of features.

[6] Shachihata Industrial Co Ltd v. Magic Market Corp (1984) 3 IPR 519

20.  A comparison of the respective trade marks reveals the only features of the trade marks are the terms FRIENDBOOK and FACEBOOK. There are no additional terms or graphic devices in either trade mark. Both the opponent and the applicant made submissions on whether or not deception or confusion was likely to occur between the trade marks. Mr Rebikoff argued that due to the same nature of the services claimed by both the applicant and the opponent, that the applicant’s use of the highly distinctive and unusual word BOOK preceded by a single syllable word beginning with the letter “F” would create an association in the mind of the public with the opponent’s well known FACEBOOK trade mark.

21.  Mr Guthridge, the representative for the applicant, posed a counter argumenin his written submissions. He argued that FRIENDBOOK and FACEBOOK were inherently different trade marks as:

The intention is to use this trademark to develop a friendship network of actual friends as opposed to the wide acceptance of people accepted on “Facebook” which purports to be a network of friends but is anything but a network of friends…Facebook appears to be a network of “faces” rather than “friends” and the term facebook adequately describes the network as it is reliant on images of people. 

22.  Mr Guthridge went on to state:

The registration of a compound word like “facebook” is entirely appropriate as it is a new as it is for “friendbook”. This does not mean that it is open for facebook to have a monopoly on any compound word that contains the suffix “book”…whilst the words facebook and friendbook share the same suffix this is true for many hundreds of other words in common use that use the word “book” as a suffix eg. Workbook, schoolbook, bluebook, songbook, notebook, logbook…Friendbook is a new compound word and should be elidible for trade mark registration in the same manner as facebook was able to trade mark that word. The two words are completely different new compound words. Facebook and Friendbook do not sound the same or similar.

23.  Indeed, the two trade marks are not the same when you consider the trade marks as a whole. However, the respective trade marks 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. 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.

24.   In this case the two trade marks under consideration are ‘new’ compound words which share some striking similarities and are both in relation to social networking services in which the opponent has demonstrated a very significant reputation. Given the very distinctive nature of the word BOOK when used in relation to online social networking services, Mr Rebikoff also raised questions why and how the applicant chose to use such a term for its services. The applicant did not explain how it chose the FRIENDBOOK trade mark and nor was it necessary for the applicant to do so. However, given that the applicant is or intends to engage in online social networking and the opponent is the most well-known provider of its FACEBOOK social networking services in the world and has been in existence for a considerable amount of time, I would be very surprised if the applicant was unaware of the opponent’s FACEBOOK trade mark when it adopted its trade marks.

25.  Overall, I consider that, 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[7] 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. 

[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

26.  I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

Decision

27.  At the relevant time section 55 of the Act provides:

Decision

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

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

28.  I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly, I refuse to register trade mark application 1475392.

Costs

29.  It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
18 August 2014