IP Cases & Articles

Facelook Takes a Snip at the Facebook Brand

Adopting satire or forms of parody for new trading names might be intended to be humorous, but this may be no laughing matter to brand owners of the original well known trade marks.

Over the years, there have been many examples of third parties (often in non-competing industries) ‘riding on the coat-tails’ of well known trade marks by adopting mock-up names for their trading activities. “Sherlock Combs” and “British Hairways” for hair salons are two such examples.

Facelook and Facebook

In the United Arab Emirates (UAE), Facebook, the well known social-networking phenomenon, has become the latest victim in the hair care world when a hairdresser named his hair salon in Dubai “Facelook”.

Although the goods/services offered under the “Facelook” sign are completely different to those offered under the well known trademark: FACEBOOK, adopting “Facelook” as a trading name and crucially, imitating the overall get-up of Facebook’s logo would seem a clear breach of Facebook’s intellectual property rights.

It is believed that Facebook has become aware of the UAE “Facelook” hair salon and is likely to contemplate legal action for trade mark and/or copyright infringement.

Next steps for Facebook

In a case like this, where use of the offending sign is not, in commercial terms, likely to create any confusion on the part of the general public, Facebook may have a fight on its hands. It can be difficult in the UAE to challenge the use of signs where the activities of trade do not compete with those of the well-known brand and are thus not considered misleading to the public. This case would then be a question of brand tarnishment.

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Facebook will have to consider whether use of the “Facelook” sign, as a shop name for a hair salon in a small locality within the UAE, is in reality likely to cause detriment, and to what extent, to the Facebook brand.

Facebook needs to weigh up the pros and cons of entering into a legal ‘David & Goliath’ battle with a sole trading hairdressing salon.

Of course, in cases such as these, owners of well known brands must also concern themselves with the commercial impact of the potentially negative media attention that an infringement case might attract.

This is a dilemma often faced by owners of well known trade marks facing challenges to their brand from local small to medium sized enterprises (SMEs). We at D Young & Co will be monitoring Facebook’s approach to this situation with interest.

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