Facebook (the company which owns internet platforms such as Instagram, WhatsApp and Facebook) recently rebranded to “Meta”. This is a very significant change for the company which accumulated revenue of almost USD $90 billion in 2020. The choice to rebrand was apparently the first step towards ensuring control of the ‘metaverse’, but news reports confirm the rebrand does not seem to have occurred smoothly. Within a week of the announcement trade mark disputes arose concerning the new name, and just this month shares in the parent company Meta fell by more than 25% in one day.
Background and Law
Briefly, business and company name registrations do not grant proprietary ownership rights, but merely act as tools to identify a business and fulfil a legal registration requirement. Registered trade marks, however, grant sole ownership of the mark in relation to the registered goods and services to the exclusion of other traders of similar goods and services. The owner of a registered trade mark can take legal action against infringing use of its trade mark. Refer to our earlier article Name registration does not protect your brand for further information.
While trade mark laws vary somewhat internationally, the principles are relatively the same. A trade mark is a sign used to distinguish one traders goods from those of another. Generally an unregistered mark that is similar to a registered trade mark cannot achieve registration for similar goods and services unless the owner has made some earlier or honest concurrent use of its mark, or the parties agree on some consent terms.
Has Facebook Failed in its Due Diligence?
You may have seen in the news a small Arizona tech company called ‘Meta PCs’ has disapproved of Facebook’s rebrand, with one of its founders claiming the company has earlier use of the word and prior trade mark filings. Meta PCs is reported to have said it will sell its brand to Facebook for USD $20 million – a relatively small cost when compared to Facebook’s annual revenue if any deal is to be struck.
Here in Australia, Meta only recently (as late as December 2021) filed trade mark applications for various ‘Meta’ marks under the company Meta Platforms, Inc – interesting considering Facebook filed, and has since secured rights to, the Meta pink and purple infinity logo image in April 2019. Considering the scope of Meta’s claims and the prevalence of prior registered trade marks containing the dominant and memorable feature ‘Meta’, it may be a rocky road to word mark registration for the social media giant down under.
No doubt Facebook would have explored whether a ‘Meta’ brand already existed, so the decision to rebrand and lodge trade mark applications despite several other prior similar registered trade marks is surprising – or perhaps Meta is simply not concerned by the potential disputes and is relying on its reputation and purse strings to negotiate a path to brand dominance.
A Warning to Protect Your Brand
Beyond merely speculating, it will be interesting to observe Meta’s trade mark registration journey, which serves as a reminder to all businesses to do their due diligence when attempting to rebrand or launch a new brand. Even the tech giants must follow the required paths to registration, and those with prior registration and usage rights are undoubtedly in a stronger position.
If you have not yet secured trade mark registration for your business brand and distinguishing logo marks, don’t delay! Contact our IP team today.
This article was written by Nicola Hayden, Trade Marks Attorney. For further information please contact Ben Gouldson, Director.
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