FACEBOOK, INC V FACEMBA, LDA [2014] ATMO 83

Australian designation of an International Registration for ‘facemba’ for social networking services was opposed by Facebook, Inc.

Facebook is the owner of ‘the social network’ Facebook and holds several Australian trade mark registrations covering FACE and FACEBOOK. It relied on its prior registrations as well as reputation under sections 44 and 60. However, only section 60 was considered by the Hearing Officer.

The Hearing Officer accepted that both trade marks were comprised of the common first English word ‘FACE’ and an ordinary English word as the second word (BOOK and MBA – a common acronym for Masters of Business Administration).

The opponent’s evidence left the Hearing Officer in no doubt about the reputation, at the filing date, of the FACEBOOK trade mark. Based on this reputation, the Hearing Officer found that there was a likelihood of deception or confusion arising.

The designation was refused protection in Australia.

To view the Office decision, click here.