eBay Inc v Mediabay Marketplace Pte Ltd

This matter concerned an opposition filed by eBay Inc. (the Opponent) against the extension of protection of a trade mark to Australia by Mediabay Marketplace Pte Ltd (the Holder). The Opponent, a well-known online marketplace operator, relied on evidence including a declaration from its Senior Director of Global Intellectual Property. The Holder failed to file evidence in answer by the due date, and an application for an extension of time was refused. Both parties elected to rely on written submissions. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established its grounds for opposing the extension of protection, specifically under section 60 of the *Trade Marks Act 1995* (Cth), which concerns the use of a trade mark likely to deceive or cause confusion due to its reputation. The delegate was required to determine if the Opponent's trade marks had acquired a significant reputation in Australia by the relevant date and, if so, whether the use of the Holder's trade mark would be likely to cause deception or confusion.

The delegate found that the Opponent had successfully established the ground of opposition under section 60. The delegate was satisfied that by the relevant date, the eBay trade marks had acquired a significant reputation in Australia. Consequently, the delegate concluded that the use of the Holder's trade mark would be likely to deceive or cause confusion, as consumers might infer a connection between the Holder's services and the Opponent's well-known eBay trade marks. Having established this ground, the delegate deemed it unnecessary to consider any other grounds of opposition.

Accordingly, the delegate refused to extend protection of the Holder's trade mark to Australia and ordered that the Holder pay the Opponent's costs. The International Bureau was to be notified of the Registrar's decision.