FACEBOOK, INC. V NORTHSWORD PTY LTD. [2014] ATMO 74

Northsword applied to register its FRIENDBOOK trade mark in respect of ‘consultancy services relating to social planning’ on Class 45. Its application was opposed by Facebook, Inc., based on its reputation in FACEBOOK for its social application.

Facebook led significant evidence of its reputation in its FACEBOOK trade mark, including:

  • 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.

The Hearing Officer was left in no doubt that the opponent held a significant reputation in its FACEBOOK trade mark in Australia.

The question then was whether deception or confusion between FACEBOOK and FRIENDBOOK was likely to arise. On this, the Hearing Officer noted that ‘the applicant and the opponent are likely to offer the same social introduction services online’ and that there was likely to at least be confusion arising amongst Australian consumers if presented with the FRIENDBOOK trade mark in respect of the services covered under Northsword’s application.

The opposition was successful and the application denied registration.

To view the Office decision, click here.