Posted on 08 October 2014.
Planned trademarks of a dating website and a student networking group have been rejected in Australia because their names sound too much like ‘Facebook’.
Last month in Sydney, Australian Trade Marks Office hearing officer Jock McDonagh rejected a bid by international group FaceMBA LDA to register the ‘facemba’ trademark in Australia.
The facemba website says the group “connects MBA candidates, students, alumni and business schools, increasing the opportunities that the MBA community can offer in the business, academic and personal scopes”.
“Our mission is to provide a worldwide platform for online communication within the MBA community,” the website says.
The website also reveals that Facebook has opposed facemba’s existing trademark in Europe.
Back in Sydney, Mr McDonagh considered that deception or confusion with the Facebook mark was likely.
“Consumers confronted with a social networking platform with the prefix FACE- would be caused to wonder if it was associated with [Facebook],” he noted.
“This would be particularly so given that the [Facebook] services had their origins in the area of university students [in 2004].
“Consumers would naturally assume that [Facebook] might create a social network or offer other services directed to MBA students or graduates.”
Mr McDonagh refused the facemba application and awarded court costs to Facebook.
In a similar case decided in Melbourne in August, Facebook successfully opposed an application by Melbourne-based Northsword Pty Ltd to register the name ‘Friendbook’.
On behalf of Facebook, barrister Stephen Rebikoff successfully argued that due to similar services offered by both Facebook and Friendbook, the use of “book” preceded by a single syllable word beginning with the letter “F” would create an association in the mind of the public with the Facebook trade mark.
Counsel for Northsword argued, unsuccessfully, that Friendbook and Facebook were different trade marks as the intention of Friendbook was 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”.
The Northsword mouthpiece argued its was not open for Facebook to have a monopoly on any compound word containing the suffix “book”.
But hearing officer Bianca Irgang considered “a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between” the Facebook and Friendbook trade marks.
Friendbook was set to offer online dating and social introduction services, and social escort agency services, among other things.
Ms Irgang refused to register the Friendbook trade mark, and awarded costs against Northsword.
Photo: Giuseppe Milo, Wikimedia Commons