In mid-2019 Facebook, Inc. presented the logo of its own cryptocurrency – Libra, which was to be handled by a subsidiary company — Calibra. Shortly after presenting the trademark, it was found to be highly similar to the logo of a startup bank named Current. The owners of the bank filed a statement of claim against Facebook Inc., accusing it of trademark infringement.
Among the allegations raised in the statement of claim, it was argued that making the trademark CALIBRA so similar to the earlier mark was an intentional activity in order to build trust to a new company, by means of taking advantage of the earlier trademark which had already been known in financial branch.
How did it happen that such close similarity appeared?
Making the assumption that Facebook created its trademark on the basis of someone else’s logo would rather sound controversial. So how did it happen that the similarity between trademarks destined for the same kind of financial services is so high? It simply turns out that both Finco Services, Inc. (the startup bank owner) and the subsidiary company of Facebook Inc. commissioned the same branding and designing agency – Character – with creating their logos.
Therefore, one can expect that the designing agency is to be blamed for such close similarity between the trademarks, and the companies themselves making the commission were unaware of this fact. The statement of claim for trademark infringement and unfair competition was also filed against the designing agency Character.
Who was first?
In 2018 Facebook announced the start of its cryptocurrency – Calibra, and at the same time hired the agency Character to run a branding campaign. Character created the logo, and Facebook’s subsidiary Calibra started to use and promote it in June 2019.
The company Current became aware of the logo Calibra in June 2019 and subsequently filed an application for registration of its trademark on 26th June 2019 r., which was shortly after Calibra had started to sell its digital wallet. However, the very commission on creating Current’s logo by the agency Character was already made in 2016.
A mistake not to be avoided?
There remains a question to be answered: could such situation be avoided? As it can be seen from the example of the above dispute, the very commission of creating the logo by a professional designer, or even a designing agency, does not guarantee that a similar situation will not occur for any entrepreneur in the future.
Therefore, it is essential that entrepreneurs, who commission designers or agencies with creating their logos, should remember to verify them in detail after the commission has been completed. Even though the designing agency guarantees that the result of its work is not in conflict with third parties’ rights, it is recommendable to consult a professional – a patent attorney, who will conduct the appropriate search in order to check whether the created logo does not infringe any other earlier rights to the trademarks of third parties. It will help to avoid the conflicts like the one above, which may occur even to the biggest companies.
Joanna Rafalska is Trademark Attorney Trainee in the department of trademarks and industrial designs. She graduated from law at the Catholic University of Lublin, and completed post-graduate studies in intellectual property law at the Jagiellonian University. At Patpol, she supports the work related to obtaining and maintaining protection of trademarks and industrial designs of our clients. Contact with the author