Facebook victorious on appeal: FACEBOOK and STRESSBOOK held to be similar

  • Court overturned decision finding no likelihood of confusion between FACEBOOK and STRESSBOOK
  • The term ‘book’ is not simply generic or descriptive
  • Taking one element of strong mark can lead to likelihood of confusion

The Swiss Federal Administrative Court has overturned a decision of the Federal Institute of Intellectual Property (IGE) finding that there was no likelihood of confusion between the marks FACEBOOK and STRESSBOOK. The court held that ‘book’ is not simply a generic or descriptive term, as the trademark FACEBOOK enjoys an increased level of awareness. The decision highlights that taking one element of a strong trademark can lead to a likelihood of confusion, even if it is combined with further elements (Case B-681/2016, January 23 2018).

Mr Lobsiger, an individual from Switzerland, filed the Swiss trademark STRESSBOOK (No 663952) in Classes 9, 35 and 42. On December 23 2015 Facebook Inc filed two oppositions against this mark based on the Swiss and international trademarks FACEBOOK. Mr Lobsiger challenged the use of the FACEBOOK marks in Switzerland and denied that there was a likelihood of confusion. In its decision of December 23 2015, the IGE refused both oppositions. It held that, although the use of FACEBOOK for some services in Classes 38 and 42 was “common knowledge” and did not need to be proved, use of the mark had not been proved by Facebook. Even though the FACEBOOK marks enjoyed a greater scope of protection due to their increased awareness level, the shared element 'book' was considered to be weak. As such, the difference between 'face' and 'stress' would be sufficient to distinguish the marks.

Facebook subsequently appealed this decision, requesting that the Swiss Federal Administrative Court uphold the oppositions in their entirety. Facebook mainly argued that it had a well-known trademark and that the element 'book' was not weak or descriptive, as it did not describe any purpose of the services in question. Consumers would think that another 'BOOK-' trademark belonged to Facebook.

The court first stated that the fact that FACEBOOK is well known did not mean that its use for any services did not need to be proved. As such, the court found that use had not been proved for many services such as business management, business administration and office functions. However, for the other services in Classes 35 (eg, advertisement), 38 (eg, telecommunication) and 42 (eg, social networks), the court held that these services were well known by the court and use did not need to be proved.

The court further held that, even if 'book' was considered to be weak or slightly descriptive, such weakness would be overcome by the well-known status of the FACEBOOK mark and its greater scope of protection. As such, the fact that both marks shared the element 'book' could lead to a likelihood of confusion.

Finally, in determining the similarity of the goods and services, the court held that all the services in Class 35 covered by STRESSBOOK (mainly personnel management services and the like) were dissimilar and only the following goods and services were similar:

  • Class 9: "software"; and
  • Class 42: “scientific and technological services and research and design relating thereto; design and development of computer hardware and software”.

Therefore, the appeal was affirmed for those goods and services, but dismissed for all other services as they were considered to be dissimilar.

It is important to bear in mind that, even in cases involving famous trademarks (which generally enjoy protection in all classes), only a broader scope of protection can be invoked in opposition proceedings. The status of a famous trademark can be invoked only in ordinary civil proceedings. On the other hand, even weak or slightly descriptive elements such as 'book' can be monopolised within a strong trademark (as long as the parties' marks are similar in their overall appearance).

Marco Bundi, Meisser & Partners AG, Landquart

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