Facebook fails to prevent registration of 'book' mark


The Board of Appeal has upheld a decision of the Patent Office that an application by Sögubókin ehf to register the word-and-design mark SAGABOOK for the class headings of Classes 41 and 42 does not infringe prior marks owned by Facebook Inc (Case 1/2012).

In March 2011 Facebook (United States) filed an opposition with the Icelandic Patent Office against the registration of the following mark:

The opposition was based on three registrations for the word mark FACEBOOK in various classes, including the class heading of Class 42. The opposition was also based on International Registration 1075094 designating Iceland. This registration was published in November 15 2011 in the Icelandic Trademark Gazette and enjoys priority from May 23 2010, which is prior to the application date of the opposed mark (October 4 2010).

In rejecting the opposition, the Patent Office confirmed that class headings “are broad and cover all that might be considered to fall into each class”. It stated that, “even if the applicant uses the mark for specific services, the fact that the mark is registered for the class headings cannot be ignored”. The Patent Office confirmed that the opponent's mark is well known, but the opposition was rejected on the basis of a “limited visual and aural similarity”. The decision was then appealed to the Board of Appeal.

The Board of Appeal confirmed the decision, albeit on a different basis. Among other things, it held as follows:

  • The trademark SAGABOOK refers to the Icelandic Sagas and the ancient literature that preserves the storytelling legacy of the Icelandic nation. The intention is to use the mark to make the Icelandic Sagas accessible to the public via the Internet. On the other hand, the trademark FACEBOOK is known for an online social network. The services that the parties provide were thus considered to be of a different nature.

  • There was no visual and aural similarity between the marks. Both marks include eight letters, and the last four letters are identical. A certain likeness was deemed to exist between the signs, and it was mentioned that both marks consist of three-syllable words that end in ‘book’, written in lower case. On the other hand, the mark FACEBOOK is written in white letters on a blue background, while the mark SAGABOOK consists of blue and white letters on a grey background and a white picture of a globe placed in front of the word element. Therefore, there was no visual similarity.

    Moreover, there was no aural similarity because, despite the common word ‘book’, the pronunciation of the words ‘face’ and ‘saga’ is different and the emphasis is placed on the beginning of words, rather than the end. In addition, the fact that all the words making up the marks are common was considered of relevance: ‘Saga' in Icelandic refers to the national heritage and culture of Iceland, and the word ‘saga’ in English usually refers to ancient narratives, especially Nordic and Germanic. The meaning of the combined words was thus considered to be very different. Finally, the board underlined that the owners of registered marks that include common words must accept that such words enjoy less protection.

  • It was undisputed that the trademark FACEBOOK is well known for a social network on the Internet, and the trademark SAGABOOK identifies services that are intended to make the Icelandic Sagas accessible to the public via the Internet. However, in order to benefit from the additional protection provided by Article 4, Paragraph 2 of the Trademarks Act, certain conditions (ie, use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark) must be fulfilled. Here, these conditions had not been fulfilled.

Arguably, the most critical part of the decision relates to the list of services in Class 42. The opposed mark covers the class heading of Class 42 and, consequently, the lists of services covered by both marks in Class 42 are identical. According to the Trademarks Act, decisions should be based on the list of services in the application, but the Board of Appeal ignored the actual list and unexpectedly referred to the intended use of the opposed mark.

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík

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