Facebook vs. Parobook

OHIM’s Second Board of Appeal decided on 29 January 2014 that Parobook is to be registered because no liklihood of confusion to Facebook is given (Case R 254/2013-2). Introduction In order to assess whether marks are confusingly similar or not, various factors need to be taken into account. On the one hand side, the specific goods and services of the applied for mark and the earlier sign need to be evaluated. On the other hand, OHIM has to compare the script, sound and meaning of the two trademarks and also take the distinctiveness and reputation of the earlier sign into account. Background of the Case and Subject Matter In the present case, the well-known trademark “Facebook” filed an opposition against the Community Trademark Application “Parobook”. Both designations are aword/design creations. Facebook is of the opinion that “Parobook” is too similar to Facebook, especially because “Facebook” has gained a high reputation - even outside the field of social networking.

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Decision The Second Board of Appeal carefully compared the signs and took note of the fact that both designations both share the word “book”. “Book”, however, is a descriptive word, which is understandable by the general public. The significant differences are in the word beginnings, namely “paro” and “face”. They are are visually as well as aurally totally different. In addition, “Facebook” is white over blue and “Parobook” is white over red. As a result the signs differ significantly. When comparing the specific goods and services of both trademarks, the Second Board of Appeal found some concurrent services, especially in the field of social networking. But, there are differences in relation to the target group. “Parobook” wants to bring Spanish people without work together with the ambition and aim that they support each other and to make it easier to be informed about new job openings. Facebook instead gives people all over the world the chance to communicate via private chats to each other, share information, pictures, post various information to their friends. Contrary to the first instance decision, the Second Board of Appeal at OHIM decided, that  despite the reputation of Facebook, there is no likelihood of confusion between “Facebook” and “Parobook”. It is rather likely that this decision will be appealed by Facebook – and we will keep you posted.