eBay Inc v Dean William Hawkins - [2014] ATMO 54

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by eBay Inc. to registration of trade mark application 1490777(35) – IWANTBAY (Graphics) - filed in the name of Dean William Hawkins.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Cate Nagy, Senior Associate, King & Wood Mallesons

Applicant: Madhu Jogias, Patent & Trade Mark Attorney of Jogias Patent & Trade Mark Attorneys

Decision:

2014 ATMO 54

S52 opposition to registration; application to file further evidence – application refused; s60 – reputation of Opponent’s eBay trade mark; commonality of distinctive suffix ‘Bay’ likely to lead people to wonder as to connection in the course of trade; use of opposed trade mark likely to confuse or deceive.

Registration refused.

THE ORIGINAL OF THIS DECISION IS IN COLOUR.

Background

This matter is an opposition to the registration of a trade mark (‘the Trade Mark’) filed under the Trade Marks Act 1995 (‘the Act’) by Dean William Hawkins (‘the Applicant’). Relevant details of the application are:

Application No: 1490777

Priority Date: 15 May 2012

Services: Class 35: Retailing of goods (by any means)

Trade Mark:

(‘the Application’)

The individual letters of the Trade Mark are each in a different colour from the adjacent letter(s).
The Application was examined as mandated by section 31 of the Act and advertised in the Australian Journal of Trade Marks as accepted for possible registration on 16 August 2012.
On 7 February 2014 eBay Inc. (‘the Opponent’ or ‘eBay’)) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice canvasses the available grounds of opposition to the registration of a standard trade mark and thus includes the section 60 ground under which I will decide this matter.
The parties have served evidence in support and evidence in answer as further discussed below.
The matter was subject to a hearing in Canberra on 19 May 2014 before me as a delegate of the Registrar of Trade Marks. Ms Cate Nagy, Senior Associate of King & Wood Mallesons, represented the Opponent and Mr Madhu K Jogia, Principal of Jogias Patent and Trade Mark Attorneys represented the Applicant. The Applicant also attended the hearing.

Onus

The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16]…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2014] ATMO 54
Decision Date: 14 June 2014

CaseChat Overview and Summary

eBay Inc appealed to the Federal Court of Australia against a decision of the Registrar of Trade Marks concerning the registration of a trade mark. The dispute centred on whether the trade mark application, number 1490777, should be registered.

The primary legal issue before the Court was whether the Registrar had correctly applied subsection 55(1) of the relevant Act in refusing to register the trade mark. Specifically, the Court had to consider the grounds upon which the application was opposed and the extent to which those grounds had been established, as required by the subsection.

The Registrar's decision to refuse registration was based on the establishment of a ground under section 60 of the Act. Subsection 55(1) mandates that the Registrar must decide to refuse or register a trade mark having regard to the established grounds of opposition. In this instance, the Registrar found that the ground under section 60 had been established, leading to the refusal of the application. Consequently, the Opponent was awarded costs on the official scale against the Applicant.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

At the relevant date subsection 55(1) of the Act provided:55Decision(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:(a)to refuse to register the trade mark; or(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.Note:For limitations see section 6. As the ground under section 60 has been established, I refuse to register application 1490777. Having been successful the Opponent is entitled to its costs which I order at the official scale against the Applicant.

Ratio Decidendi

Legal Principle Established

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