Trade mark decision

BL Number

O/104/08

Decision date

10 April 2008

Hearing officer

Mr M Foley

Mark

FACE-PIC.COM Face.pic.com (Series of 2)

Classes

41, 45

Applicant

Face-Pic.Com

Opponent

Faceparty.com

Opposition

Sections 5(2)(b), 5(3) & 5(4)(a)

Result

Section 5(2)(b): Opposition failed Section 5(3): Opposition failed Section 5(4)(a): Opposition failed

Points Of Interest

• As described

Summary

The opponent owns a number of earlier registrations for the marks FACE and FACEPARTY and it stands accepted that both parties are in the same area of activity in that both provide internet chat-room services.

The opponent filed evidence of use from the year 2000 onwards and stated that by 2005 revenue had grown to over £3.5m per annum. Some £3,5M has been spent on promotion with almost £2m in 2005. It claims to be the largest online chat room provider in the UK and EU with over 6 million registered members. It claims a market share in the UK of 21%.

The applicant’s evidence indicates that it adopted its internet name FACE.PIC.COM in April 2000 which was prior to the opponent registering its internet name. Originally the web-site provided profile and chat room facilities but now offers both chat room and messaging services. The applicant claims to have 455,000 UK members and appears to be a smaller business as compared to the opponent but it is listed on the Yahoo search engine and is increasing in size daily. The applicant casts doubt on some of the claims made by the opponent and points to a number of websites which incorporate the element FACE such as facebook.com, facemeet.com, face2meet.com, facelink.com, facepal.com and facecraze.com. In the light of this usage the applicant claims that FACE is generic in this area of trade.

Under Section 5(2)(b) the Hearing Officer noted that identical or very similar services were at issue and went on to compare the respective marks FACE and FACEPARTY with FACE-PIC.COM. While there are similarities in the respective marks the Hearing Officer took account of the opponent’s reputation in its FACEPARTY mark; the fact that FACE appears to be a fairly common element in websites providing chat-room services and also that the two parties have traded in the same services for a number of years and there has been little confusion. The Hearing officer concluded that the public would not be confused as to origin nor was it likely that they would assume that owners of the respective marks were linked economically. Opposition failed on this ground.

Under Section 5(3) the Hearing Officer accepted that the opponent had a reputation in its mark but he noted that the element FACE did not appear to be unique in this area of trade. Additionally the respective marks had been found to be dissimilar under Section 5(2)(b) and that being the case the ground under Section 5(3) must fail. The Hearing Officer went on to consider the matter of detriment but did not consider it reasonable to infer that the applicant’s services would be of inferior quality such that if a link was to be made to the opponent’s mark, its mark or reputation would be adversely affected.

The opponent also failed in its ground under Section 5(4)(a) - passing off because as has been set out about the Hearing Officer considered that the respective marks were not similar.