Facebook v Faceholiday: influence of social media
22 January 2018
This recent EUIPO decision considered the manner in which social media functions today to find FACEHOLIDAY objectionable, even for unrelated services.
This case involved an opposition action brought by Facebook, Inc. against Faceholiday s.r.o’s figurative EUTM application, as shown:
Faceholiday’s EUTM application covered a range of services in classes 35, 38, 39 and 42.
The opposition claimed a likelihood of confusion under Article 8(1)(b) and reputation under Article 8(5) and relied on Facebook’s earlier EUTM registrations for the well known figurative FACEBOOK logo as well as a number of FACEBOOK word marks.
The opposition was assessed under Article 8(5) only. Facebook submitted a wealth of evidence in support. Whilst it was found Facebook did not succeed in establishing a reputation for all goods and services relied on, the Opposition Division found Facebook enjoyed a high degree of recognition with communication related services in classes 38, 41 and 42 and social introduction and networking services under class 45. The Opposition Division set out that it recognised Facebook’s reputation had been confirmed by previous office decisions as well as other national authorities.
Of particular interest in this decision is the assessment of the unrelated services covered by Faceholiday’s EUTM application under classes 35, 38, 39 and 42.
The Opposition Division recognised there was a growing trend for advertising on social networks which included forms that divert from the traditional text based or banner adverts, eg, sharing articles, videos and applications.
On this basis, it found Faceholiday’s class 35 services, even those related to the promotion of travel agencies, were sufficiently close to the reputed social networking services such that consumers would make a connection with the earlier mark.
Whilst the Opposition Division recognised that a direct connection could not be readily established with travel and holidays related services in class 39, the high degree of Facebook’s reputation and similarity of the signs were found to be key factors to indicate a link would be possible. Further, as the word “holiday” in Faceholiday’s mark would strongly allude to the travel services, the remaining distinctive elements in the mark would leave consumers to think the services are offered through Facebook or an integrated platform. The Opposition Division compounded this finding by referring to third party applications being integrated into the Facebook platform which was contained in Facebook’s evidence.
With regard to the class 38 and 42 services, these were found to be identical, closely related or at least connected to some extent to the earlier reputed services. With particular reference to the class 42 services, the Opposition Division found as the Facebook platform makes various applications, software and creation tools available to users it would be difficult to deny there was a link between the respective services.
It was concluded that consumers would likely associate the contested mark with Facebook’s earlier marks and establish the required “link”. Further, it was found the risk of unfair advantage was highly probable.
Whilst it was acknowledged that it was necessary to compare the marks as filed and not as used, the Opposition Division believed evidence filed by Facebook served to confirm that, in the circumstances, the likelihood of harm to Facebook’s earlier marks was indeed high.
The opposition was therefore successful in its entirety and Faceholiday’s EUTM application was rejected for all the contested services.
It will be interesting to see off the back of this decision the extent to which Facebook is able to successfully oppose other “Face”-related marks, especially those which cover broader goods or services than covered by its existing registrations.
This decision highlights the extent to which a reputation claim alone can serve to successfully oppose a third party trade mark, even where unrelated goods or services are concerned.
Jurisdiction: European Union
Decision level: Opposition
Parties: Facebook Inc v Faceholiday s.r.o
Citation: B 2 400 136
Date: 27 October 2017
Full decision (EUIPO PDF): http://dycip.com/002400136