Meta Platforms Inc v Romanoff Roman Borysovych

[2023] ATMO 83

TRADE MARKS ACT 1995

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

Re:Opposition by Meta Platforms, Inc. to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2017338 (International Registration number 1472929) (45) - KarmaBook - in the name of Romanoff Roman Borysovych

Delegate:

Louise Tuohy

Representation:

Opponent: Stephen Rebikoff of Counsel instructed by King & Wood Mallesons

Holder: Andrew Sykes of Counsel instructed by Stephens Lawyers & Consultants.

Decision:

2023 ATMO 83

Trade Marks Act 1995 (Cth) and Trade Marks Regulations1995 (Cth) – opposition to extension of protection under regulation 17A.33 – grounds of opposition pursued under sections 44, 60, 42(b) and 62A – s 60 established – protection of the IRDA not to be extended to Australia

Background

1. This decision is in respect of an opposition brought by Meta Platforms Inc (‘Opponent’) to the extension of protection in Australia of an International Registration Designating Australia (‘IRDA’) under the provisions of the Trade Marks Act 1995 (Cth) (‘Act’) and Trade Marks Regulations 1995 (Cth) (‘Regulations’) in the name of Romanoff Roman Borysovych (‘Holder’) of the following trade mark:

   Application Number:  2017338

   Trade Mark:   (‘Trade Mark’)

   Filing Date:   10 April 2019

   Priority Date:  4 March 2019 (Convention No. m 2019 04999 UKRAINE)  

   Specification:  Class 45: Online social networking services (‘Holder’s Services’)

2. The IRDA was examined as required by reg 17A.12 of the Regulations and advertised as accepted for possible protection on 14 October 2019.

3. On 16 December 2019 the Opponent filed a Notice of Intention to Oppose the IRDA, followed by its Statement of Grounds and Particulars (‘SGP’) on 16 January 2020. On 29 May 2020             the Holder filed a Notice of Intention to Defend.

4. In support of its opposition, the Opponent filed the following evidence:

• Declaration of Scott Minden, Associate General Counsel, Brand and Marketing Legal of the Opponent, made on 27 August 2020 with Annexures 1 to 21 (‘Minden’).

• Declaration of Roseanne Mannion, Registered Trade Marks Attorney and Principal of Spruson & Ferguson Pty Ltd, made on 31 August 2020 with Annexures RM-1 to RM-2 (‘Mannion’).

• Declaration of Catriona Elanor Nagy, Partner at King & Wood Mallesons, made on 14 June 2022 with Exhibit CEN-1.

1. The Holder’s evidence was delayed as a result of the Office granting it three extensions of time to file its Evidence in Answer, with two of the extensions being filed out of time. After the third extension was granted, the Holder filed the following evidence:

• Statutory Declaration of Roman Romanoff, the Holder, made on 6 August 2021 with Exhibits RR1 to RR26 (‘Romanoff’).

• Statutory Declaration of Kathryn Burridge, Professor of Linguistics, Monash University, made on 9 August 2021 with Exhibits KB1 to KB3 (‘Burridge’).

1. Once the time for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 4 May 2023 by way of video conference. Stephen Rebikoff of Counsel instructed by King & Wood Mallesons appeared for the Opponent. Andrew Sykes of Counsel instructed by Stephens Lawyers & Consultants appeared for the Holder. Oral submissions were supplemented by the parties’ written submissions filed prior to the hearing.  

Grounds of Opposition and Onus

1. In the SGP the Opponent nominated grounds of opposition under ss 44, 59, 60, 42(b) and 62A of the Act. In the Opponent’s written submissions, it only pressed the grounds under ss 44, 60, 42(b) and 62A. The Opponent did not pursue the ground of opposition under s 59 which I treat as abandoned and have not considered.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Section 60

1. Section 60 of the Act provides:

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

   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.

1. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   The Opponent is the owner and operator of the world-famous Facebook social networking service, mobile application, and website which was launched in February 2004. Facebook’s mission is to give people the power to build community and bring the world closer together. People use Facebook to stay connected with friends and family, to discover what’s going on in the world, and to share and express what matters to them. Facebook is available online and via mobile software applications (mobile apps). Users can follow friends, family, celebrities, political figures, and businesses to see their posts, share photos, videos, websites and other media, and communication in a multitude of ways across platforms.

   The Opponent owns exclusive rights to the Facebook trade mark, including rights secured through various common law uses and registrations in Australia and internationally. Facebook is one of the world’s most prominent brands. As at the end of 2018 and prior to the priority date of the Opposed Mark, Facebook had over 2.32 billion monthly active users and an average of 1.52 billion daily active users. Nearly 90% of active Facebook users are associated with people outside of the United States. As a result of Facebook’s immense popularity, Facebook and the FACEBOOK mark are frequently, if not daily, referenced in media and pop culture.

   The FACEBOOK trade mark has been continuously used and promoted by the Opponent in Australia since at least 2006.

   In particular, the Opponent’s FACEBOOK name and trade mark are used extensively in connection with its online social networking service, online platform, and in relation to numerous related goods and services, including but not limited to software including software for social networking, online applications, online photo and video sharing and editing services, telecommunication services, and the provision of advertising, marketing, and online networking services (collectively “the Goods and Services”) in Australia and throughout the world.

   As a result of the Opponent’s continuous, longstanding and extensive use, advertising and promotion of the FACEBOOK mark in Australia and internationally, the Opponent has acquired a reputation in the FACEBOOK mark. As a result of this reputation, the use or registration of the Opposed Mark by the Applicant for the services covered by the application to register the Opposed Mark (which are identical to those provided and registered by Facebook under the FACEBOOK mark), or for closely related goods and/or services, would be likely to deceive or cause confusion.

2. To satisfy s 60 of the Act the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[3] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[4]

   [3] [2000] FCA 1335, [81].

   [4] [1992] FCA 159, [118].

4. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[5]

   [5] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

5. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

   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.F12F[6]

   [6] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

6. Tuning to the Opponent’s evidence in this matter, Mr Minden declares that the Opponent is the owner of FACEBOOK an online social media and social networking service launched in 2004.

7. Mr Minden declares that the Opponent has offices in 70 cities worldwide including Sydney and Melbourne.

8. Minden contains tables outlining details of the Opponent’s global and Asia Pacific revenue for the years 2011 to 2019 and its global advertising expenditure for the years 2010 to 2019, both including figures for Australia.[7]

   [7] Minden [36]-[35], Annexure 8.

9. Annexure RM-1 to Mannion comprises extracts from the Dow Jones Factiva database for Australian publications which reference FACEBOOK dated between 2012 to 2019.

10. Annexure 10 in Minden comprises extracts from App Annie, a data and analytics platform, illustrating that at the priority date the FACEBOOK application was ranked number 3 in social networking applications for both iOS and Google Play and number 2 and 3, respectively, for social networking applications for iPad and iPhone in Australia.

11. Minden provides a table outlining the number of monthly active users of FACEBOOK services in Australia for the period 2016 to 2020.

12. Annexure 11 to Minden comprises extracts from Alexa, a web information company, illustrating that between the years 2011 and 2018 the FACEBOOK website was ranked as the second or third most visited site on the internet globally.   

13. Annexure 12 to Minden comprises extracts from App Annie illustrating that in May 2018 the FACEBOOK application was the most downloaded iOS mobile application of all time. Annexure 12 to Minden also comprises extracts from Interbrand illustrating that the FACEBOOK brand has been in its top 100 Best Global Brands since 2012.

14. In my assessment of the evidence, the Opponent had a significant reputation in its FACEBOOK trade mark in relation to online social media and social networking services (‘Opponent’s services’) at the priority date in Australia. The Opponent’s revenue and advertising expenditure figures, although not listing Australia separately are substantial and supported by the extraordinary number of Australian users accessing the Opponent’s services under the FACEBOOK trade mark. Consumer awareness of the FACEBOOK trade mark in Australia is also borne out in the number of published articles referencing FACEBOOK and the Opponent’s services.

15. It is not sufficient that the Opponent merely establishes that its FACEBOOK trade mark has a reputation, the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

16. The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, where Richardson J said:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and causing ‘confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the [Holder's] mark come from some other source and confused to being caused to wonder whether that might not be the case.[8]

    [8]  [1979] RPC 410, 423 (citation omitted).

17. In Australian Postal Foundation Corporation v Digital Post Australia Pty Ltd it was noted that ‘the threshold for confusion is not high’.[9] Importantly confusion can be established ‘even if [the] confusion is unlikely to persist up to the point of, and contribute to, inducing sale’.[10] Also, confusion need not be a case of mistaking one trade mark for another; it can be wondering whether the trade marks, which might be readily distinguished from each other, nonetheless come from the same source.[11]

    [9]  [2013] FCAFC 153 [70] (North, Middleton & Barker JJ).

    [10] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105] (Dodds-Streeton J).

    [11] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110, 113.

18. Section 60 of the Act does not require a specified standard of similarity between the Holder’s Services and the services for which the Opponent’s relied upon trade mark has a reputation, nor is there a requirement that the trade marks are substantially identical or deceptively similar. However:

    Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[12]

    [12]  Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5 [39].

1. In the present matter, it is necessary to look at the similarities between the trade marks. The evidence confirms that the Opponent’s FACEBOOK trade mark was used in relation to online social media and social networking services and that it has gained an immense reputation in relation to these services. I am satisfied that the Holder’s online social networking services are the same as the Opponent’s services.

2. The Trade Mark and Opponent’s FACEBOOK trade mark are new compound words which share the suffix BOOK. In Facebook Inc v Northsword Pty Ltd,[13] Delegate Irgang found that the element BOOK in the FACEBOOK trade mark did not appear to have any descriptive meaning when applied to the relevant social networking services and therefore concluded that it was a striking term that consumers are likely to recognise and remember. In the present matter the Holder argues that the word BOOK is too generalised to sustain an argument that it has no relevance to social networking services and as such does not indicate the services of any particular trader.[14] However, extracts in Annexure RM-2 to Mannion comprises a selection of brand studies and reports on social networks and none disclose that others are using the suffix BOOK in this field. As such the evidence before me is not sufficient to show that the Australian Public is habituated to regard the element BOOK as being generic and indicating online social networking services. In the circumstances I am satisfied that the suffix BOOK, in the context of online social networking services, is a striking term so immediately connected with the Opponent’s services and FACEBOOK trade mark as to be likely to suggest to consumers that a trade mark consisting of KARMABOOK is in someway connected with the owner of FACEBOOK.[15]

   [13] [2014] ATMO 74, [23].

   [14] Burridge, [Exhibit KB3].

   [15] This type of deception or confusion would be akin to that in Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110, 115-116, as being contextual confusion.

3. I note the Holder states that it coined the Trade Mark to refer to a specialised social networking service rather than to the FACEBOOK trade mark.[16] The problem for the Holder is that the FACEBOOK trade mark is presented as primary branding and the reputation in Australia is clearly immense. The stronger the reputation, the more likely consumers are to believe a connection. So, for example, in eBay Inc v Tradiebay Pty Limited[17] despite the differences between the words TRADIEBAY and EBAY, given the extensive reputation enjoyed by EBAY there was sufficient evidence such that Delegate McDonagh could infer a likelihood of deception and confusion.

   [16] Romanoff, [11].

   [17] [2013] ATMO 58.

4. Having regard to the substantial reputation in the Opponent’s FACEBOOK trade mark, and the marked similarities in the trade marks and services as at the priority date, I am satisfied there is a real and tangible danger that consumers would, at the very least, be caused to wonder on seeing the Trade Mark used in relation to the Holder’s Services, whether those services were connected in some way with the Opponent.

5. The s 60 ground of opposition has been established.

Decision

1. Regulation 17A.34N of the Regulationsprovides the following:

   17A.34N 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 the grounds on which the IRDA was opposed have been established.

    (2)  The Registrar must notify the International Bureau of the Registrar’s decision.

1. The Opponent has established a ground of opposition under s 60 of the Act. Accordingly, I refuse to extend protection of the IRDA. If the Registrar is served with a notice of appeal, I direct that the protection of the IRDA should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought an award of costs. 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 Holder under s 221 of the Act in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

27 June 2023