eBay Inc. v Tradiebay Pty. Limited
[2013] ATMO 58
•24 July 2013
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 No. 1360050 (Classes 16 and 35) - TRADIEBAY - filed in the name of Tradiebay Pty. Limited.
Delegate: John Spence Representation: Opponent:Ms. Melissa Marcus of Counsel instructed by Ms. Cate Nagy, Solicitor, of King & Wood Mallesons, Lawyers, assisted by Philippa Macaskill, Solicitor
Applicant:Mr. Daniel McIntosh, Patent Attorney, of McIntosh IP, Patent and Trade Mark Attorneys (no appearance at the hearing)Decision: 2013 ATMO 58
Section 52 opposition – grounds under Sections 44, 60 and 42(b) pursued. Because of the reputation acquired by the Opponent’s registrations before the priority date the use of the Applicant’s mark would be likely to deceive or cause confusion –Section 60 established – application not allowed to proceed – registration refused.Background
1. On 6 May 2010 the company Tradiebay Pty. Limited (“the Applicant”) of Eltham, Victoria filed an application for registration of a trade mark the short particulars of which are as follows:
Trade Mark No. : 1360050
Priority Date: 6 May 2010
Classes: 16, 35
Goods:Class 16:Paper, cardboard and goods made from these materials not included in other classes; printed matter; newspapers, periodicals, books, magazines, flyers, cards, pamphlets, advertisements; periodicals and magazines.
Class 35:Classified advertising, including online, but excluding auction services; providing a searchable online classified advertising service (but excluding auction services), featuring goods relating to building, construction, plumbing, electrical, automotive, gardening, cleaning, building tools, equipment and accessories; providing and rental of advertising space on the internet
Trade Mark: TRADIEBAY
(“the Trade Mark”).
2. Following examination the Trade Mark was accepted for possible registration on 13 May 2010 and it was advertised as such in the Official Journal of Trade Marks dated 9 September 2010.
3. Pursuant to the provisions of Section 52 of the Trade Marks Act 1995 (“the Act”), on 9 March 2011 the U.S. company eBay Inc. (“the Opponent”) filed a Notice of Opposition (“the Notice”) to the registration of the Trade Mark.
4. After the obtaining of several extensions of time within which to do so, the Opponent duly provided evidence in support of its Opposition. That evidence took the form of the Statutory Declaration of Jason E. Garcia made on 7 December 2011 together with the accompanying Annexures marked “A” to “F” inclusive (“the Garcia Declaration”). A copy of the evidence in support was filed on behalf of the Opponent and with a copy being served on the Applicant by covering letters dated 8 December 2011 with the original signed version of the Garcia Declaration (in colour) being provided subsequently on 13 December 2011.
5. In response, no evidence in answer has been provided by the Applicant. Rather, by e-mail dated 3 October 2012 from Mc Intosh IP (on behalf of the Applicant), a request was made seeking an amendment to the relevant goods and services (by excluding the item “auction services” and by deleting some of the online services which had previously been claimed). Those amendments were duly made. Further, by separate correspondence also dated 3 October 2012, the Applicant’s attorney requested that the matter be determined by way of a decision on the written record and on an expedited basis. As well, on the same date, the Applicant forwarded written submissions in support of its position.
6. Subsequently, by correspondence dated 18 October 2013 from King & Wood Mallesons, Lawyers (the attorneys representing the Opponent), the request was made for the matter to proceed by way of a formal hearing (rather than as a decision on the written record). In response, by letter dated 8 November 2013 McIntosh IP indicated that it would not be attending the hearing requested by eBay Inc.
7. This matter was duly allocated to me (as a delegate of the Registrar of Trade Marks) for determination and it was set down for hearing in Sydney on Monday 15 April 2013. Prior to the hearing, and in response to the directions which had earlier been given to the respective parties by the official letter dated 3 April 2013, the Opponent’s attorneys had filed and served the written submissions on which it sought to rely and by covering letter dated 8 April 2013. By way of response, and having already filed and served its written submissions, the Applicant forwarded to me by covering letter dated 11 April 2013 a copy of the document entitled “Further Written Submissions” and it confirmed that a copy of that document had been served on the Opponent.
8. At the hearing, the Opponent was represented by Ms. Melissa Marcus of Counsel who was instructed by Ms. Cate Nagy, a Solicitor and Senior Associate of King & Wood Mallesons, Lawyers, assisted by Ms. Philippa Macaskill, Solicitor. Each of those persons appeared in person before me. As had previously been indicated, the Opponent did not appear and it was not represented at the hearing, instead electing to rely on those written submissions which had earlier been provided by Mr. McIntosh on its behalf.
Grounds of Opposition
9. The Notice of Opposition dated 9 March 2011 is expressed in expansive terms in claiming twelve different grounds and in relying upon thirteen separate sections of the Act. However, both in the course of written submissions and orally at the hearing, the Opponent indicated that it would be relying only on three of the grounds as set out in the Notice of Opposition and relating to the provisions of Sections 44, 60 and 42(b) of the Act respectively. The remaining grounds as raised in the Notice of Opposition (that is, pertaining to Sections 39, 41, 42(a), 43, 58, 59, 61, 62(a), 62(b) and 62A) were not pressed or proceeded with and no submissions were put forward in respect of same. For the sake of completeness, I find that none of these grounds has been established and I now dismiss the Opposition so far as they are concerned. That being so, the only issues which remain for determination relate respectively to each of the three individual Sections of the Act (namely, Sections 44, 60 and 42(b) ) on which the Opponent continues to rely and which I propose to consider separately in due course.
10. The Opponent bears the onus of establishing that the Applicant should be refused registration and in order to do so it must satisfy at least one of the grounds of opposition (Sections 55 and 57 of the Act). Following the reasoning of Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599; (2007) AIPC 92-232[1], I take the view that in discharging that onus it is the ordinary or civil standard of the balance of probabilities which applies.
The Evidence
[1] See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12]; Fry Consulting Pty. Limited v. Sports Warehouse Inc. (2012) AIPC 92-436 per Justice Dodds-Streeton at [13]; Nexans S.A. v. Nex 1 Technologies Company Limited [2012] FCA 180 per Justice Murphy at [9]; and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per Justice McKerracher at [9] to [10].
Evidence in support
11. The evidence in support consists of the Garcia Declaration made on 7 December 2011 together with the Annexures “A” to “F” which accompany that document. Mr. Garcia describes himself as “contract Legal Counsel for Intellectual Property for eBay Inc.” and he has worked for the legal department at eBay since June 2011. In that capacity, he has been responsible for the oversight and management of the Opponent’s intellectual property matters including the eBay trade marks which are identified and described in the evidence. In this regard, he identifies fourteen existing trade mark registrations in Australia which are held in the name of the Opponent and which feature the expression EBAY rendered in a variety of forms and embodiments. Each of those existing registrations precedes the priority date of the Trade Mark (being 6 May 2010).
12. The short particulars of those trade marks on which the Opponent relies are set out in the Annexure “A” which is attached to this decision.
13. In his evidence, Mr. Garcia provides a brief history of the background of eBay Inc. The Opponent was established in September 1995 and it was incorporated in California in May 1996, being incorporated in Delaware in April 1998. The initial public offering of its stock was completed in September 1998. In Australia, the Opponent commenced business operations in October 1999 through the local company eBay Australia and New Zealand Pty. Limited, a wholly-owned subsidiary of the Opponent, and it has carried on business in this country continuously since that date.
14. The Opponent is the world’s leading on-line marketplace and it provides global trading platforms “where practically anyone can trade practically anything”. These trading platforms provide on-line market-places for the sale of goods and services, and they enable a global community of buyers and sellers to interact and trade with one another. There exist eBay trading platforms in thirty-eight countries including Australia. By means of the utilisation of its web-sites (located, for example, at and the Opponent allows for the sale of goods and services by a diverse community of individuals and businesses at a local, national and international level. The eBay trading platforms provide fully automated, topically arranged and easy-to-use online services that are available at any time. As such, the Opponent is a leading e-commerce destination for consumers who choose to shop on the Internet.
15. The performance figures pertaining to the business activities of the Opponent are indeed impressive. The eBay trading platforms have over 280 million registered users worldwide. As of the second quarter of 2011, the eBay trading platforms are stated to have had an estimated 97 million active users (being defined as users who have transacted business on an eBay website within the past twelve months). Net revenues run into many billions of dollars annually, and the Opponent employs over 17,000 staff worldwide. In Australia, where there are more than 1.3 million registered eBay users, during the five-year period from 2005 to 2009 the gross merchandise value on the eBay trading platforms exceeded $US7 billion. Each day approximately 7 million new listings are added to the eBay market-place throughout the world. It is said that there are over $US2,000.00 in transactions per second on eBay.
16. Mr. Garcia provides evidence (in his Annexure A) taken from the web-site of Alexa, an independent web information company. According to that source, the web-site ranks 21st in the order of most visited web sites in the world and it is the 8th most visited web-site in the USA. The Australia-specific web-site is the 373rd most visited web site in the world and the 6th most visited web site in Australia. The popularity of the eBay site in Australia is illustrated by its award as Best Online Retailer at the 2011 CHOICE awards, while the reputation of the Opponent’s services generally is reflected in eBay’s ranking as one of the Top 50 “Best Global Brands” by Interbrand and Business Week in 2011.
17. Since the launch of its on-line market-place in September 1995 the Opponent has used the “EBAY” trade mark continuously in trade and commerce and in connection with its goods and services. The expression “eBay” is used by the Opponent and its subsidiaries on all publications and web-sites and it is also adopted extensively on items such as stationery and merchandise as well as in advertisements. The Opponent’s trade marks “EBAY” and “eBay” have acquired a considerable reputation both in Australia and throughout the world. As a result, there is an “extremely high” level of recognition in respect of those marks among the general public.
18. For its part, the Applicant has elected not to file and serve any evidence in answer. In this instance there is no evidence in reply. Apart from the evidence in support (being the Garcia declaration), the only additional materials which are before me are the written submissions of the Applicant dated 3 October 2012, the Opponent’s written submissions dated 8 April 2013 and the Applicant’s further written submissions dated 11 April 2013. In the course of making this decision, I have given due regard to each of those documents.
Discussion and Reasons
Grounds
19. By virtue of Section 55 of the Act, I am required to decide whether to register the TRADIEBAY application No. 1360050 or whether to refuse to do so having regard to the extent to which any ground of opposition has been established. In so doing, I propose to consider separately each of the grounds of opposition which are maintained by the Opponent and addressed in the order of relative importance as considered by me.
Section 60
20. Section 60 of the Act is worded as follows:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
21. In order to establish the ground of opposition pursuant to Section 60, the Opponent must satisfy the following elements, namely:
- there must be another trade mark which was in existence prior to 6 May 2010 (being the priority date of the TRADIEBAY application);
- that other trade mark must have acquired a reputation in Australia before the priority date;
- the Opponent need not be the owner of the conflicting trade mark;
- the requisite reputation must be amongst a significant section of the public or a substantial number of persons; and
- that reputation must be such that use of the opposed trade marks would be likely to cause instances of deception or confusion to occur.
22. In relation to the present proceedings, the evidence shows clearly and beyond dispute that the Opponent has a substantial, established and indeed overwhelming reputation in Australia in respect of its EBAY trade marks and sufficient to satisfy this requirement of Section 60. I accept that the EBAY trade marks in their various forms are well-known among members of the Australian public and that the reputation which subsists in respect of those registrations has been in existence since well before the priority date of the TRADIEBAY application. That being so, for the purposes which are required pursuant to the provisions of Section 60, it is necessary to determine whether, because the Opponent has acquired a reputation, use of the Applicant’s trade mark would be likely to deceive or cause confusion. In this regard, the relevant reputation must have been established before 6 May 2010.
23. In relation to the application of Section 60, several important factors which are different to the requirements of the Section 44 ground come into play. In particular, there is a distinction to be drawn between Sections 44 and 60 and the operation and effect of same on the basis of reputation. In this regard, Section 44 looks to the inherent qualities of the trade mark in question having regard to the uses which may be expected to be made of it. The test for deceptive similarity pursuant to Section 44 “is not a test intended to be complicated by considerations of reputation in trade marks” (per Justice Branson in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 435 paragraph 82), and in applying that test consideration is not to be given to the actual use made by the owners of the conflicting trade marks which are raised against the Applicant. The determination which is to be made under Section 44 is between the marks as registered or applied for and assuming a notional use of both, that is, a normal and fair use with all the goods or services covered both by the existing registrations and by the application in question being considered. In relation to the present instance, Section 44 refers to deceptive similarity between the Applicant’s trade mark and those registrations held by the Opponent in respect of similar goods or services or related goods or related services. By contrast, under Section 60 the relevant determination relates to the trade mark as it is actually used, and the concept of notional use is not applicable. Section 60 requires consideration of the actual manner in which the earlier trade mark has been used, and it is concerned with whether the use of the trade mark in respect of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of the Opponent’s prior existing trade mark registrations. As observed by Justice Gyles in Pfizer Products Inc. v. Karam (2006) 70 IPR 599 at 607:
Section 60 depends upon the Opponent’s mark having acquired a reputation in Australia by virtue of which the use of the trade mark applied for would be likely to deceive or cause confusion because of the deceptive similarity between them.
It has been said that the comparison under Section 44 is between mark and mark, whereas the comparison under Section 60 is between mark and reputation.
24. There is another significant difference between Sections 44 and 60 in that Section 60 no longer requires that the respective marks must be substantially identical with or deceptively similar to each other. Until the wording of Section 60 was amended by virtue of the Trade Marks Amendment Act 2006 (which took effect as from 23 October 2006), it was necessary under this provision to establish that the earlier trade marks relied upon by the Opponent were substantially identical with or deceptively similar to the opposed mark (as in Section 44). By removing that requirement, the issue now is only whether because of the reputation enjoyed by the Opponent’s trade marks use of the Applicant’s mark would be likely to deceive or cause confusion. So, the wording of Section 60 in its present (and amended) form means that there is now scope for the present Opposition to succeed under Section 60, and based on the Opponent’s prior existing registrations, even though it fails under Section 44. Such an outcome would occur if the resemblance between the respective marks was not sufficiently close as to satisfy the Section 44 test of “deceptive similarity” but the reputation of the Opponent’s marks was nonetheless so great that it was found that instances of deception or confusion would be likely to occur.
25. The meaning and intention of the expression “reputation” as it is used in Section 60 was considered by Justice Lockhart in ConAgra Inc. v. McCain Foods (Australia) Pty. Limited (1992) 33 FCR 302 at 343; 106 ALR465 at 505; 23 IPR 193 at 234 where he stated:
(R)eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner.
The consideration of reputation was taken further by Hearing Officer Thompson in Hugo Boss v. Jackson International Trading Company Kurt D. Bruh / Gmbh & Co. KG (1999) 47 IPR 423 at 426 where he said:
. . . [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition component of the trade mark’s reputation. The credit, image and values projected by a trade mark attached to the ‘esteem’ component of the reputation as do the public events and other traders’ trade marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
Both those statements were quoted with approval by Justice Kenny in McCormick & Company Inc. v. McCormick (2000) 51 IPR 102. In that case, Her Honour (at 127) considered what might be intended by the word “reputation” and having consulted the Macquarie Dictionary she decided that in Section 60 reputation is “the recognition of the [trade mark] by the public generally”. Her Honour went on to observe:
In practice, it is commonplace to infer a reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product. … This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which the mark is associated, as evidenced by sales volume, amongst other things.
26. In relation to the present proceedings, the evidence establishes clearly and beyond dispute that as at the priority date the Opponent has acquired a substantial, established and indeed formidable reputation in Australia in respect of its EBAY trade marks and sufficient to satisfy the requirements of Section 60[2]. I accept that the EBAY trade marks are well-known among a significant section of the Australian public who associate those marks with the Opponent. The issue which then remains for determination is whether in this instance that reputation is sufficient as to result in the likelihood that instances of deception or confusion and in the relevant sense as set out in the established tests that have been laid down will be caused to occur. In this regard and by way of example, the relevant test has been dealt with in Registrar of Trade Marks v. Woolworths Limited (19990 45 IPR 411 where, in considering the phrase “likely to deceive or cause confusion”, Justice French stated (at 426):
The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring”: Southern Cross Refrigerating Company v. Toowoomba Foundry Pty. Limited (1954) 91 CLR 592 at 594-5 per Kitto J.
[2] Indeed that reputation and the extent of same has earlier been expressly recognised and acknowledged in the decision of Trade Mark Application No. 1183434 in the name of Amanda Benham and Opposition by eBay Incorporated (unreported) which issued on 7 January 2009 (in the course of which the Opponent’s reputation is described as “pervasive”) and in Ubay Pty. Limited v. Ebay Inc. (2010) 85 IPR 428 both of which are referred to in the written submissions of the Opponent.
27. Having regard to the wording “would be likely to deceive or cause confusion” which appears in Section 60, and assuming that the Applicant’s TRADIEBAY trade mark were found not to be deceptively or confusingly similar to the Opponent’s EBAY registration (see paragraph 57 below), any consideration of the extent of reputation existing in respect of those marks which might be contemplated as leading to a “real tangible danger” of deception or confusion occurring would need to be appropriately discounted. To that end, in the decision of Rogers Seller and Myhill Pty. Limited v. Reece Pty. Limited [2010] ATMO 5 Hearing Officer Lyons observed (at paragraph 39):
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
28. In the course of its submissions, the Opponent has drawn my attention to the decision of Hearing Officer Irgang in Trade Mark application No. 1183434 in the name of Amanda Benham and Opposition by eBay Incorporated (unreported) which issued on 7 January 2009. That decision, involving the trade mark application “earthbay” and the Opponent’s EBAY registrations, determined that the “earthbay” trade mark was neither substantially identical with nor deceptively similar to any of the Opponent’s EBAY registrations and that as a result the ground of opposition under Section 44 was not made out. In the course of her reasoning, and in addressing the applicability of the Section 60 ground, Hearing Officer Irgang observed:
However, it needs to be determined if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion. As discussed earlier, the applicant’s ‘earth-’ prefix is considerably removed from the opponent’s single letter ‘e’ prefix. These differences are significant, as I have already noted for the purposes of the s 44 discussion. The opponent would therefore need to demonstrate that, despite the differences which exist between the marks, use of the applicant’s “earthbay” mark would deceive or cause confusion due to the reputation of the opponent’s “ebay” marks. . . .
Overall, I think that, given the impressive reputation evidenced by the opponent in its ebay trade mark, a significant number of consumers would at the very least subscribe to a reasonable doubt as to some sort of connection between that well-known trade mark and the applicant’s trade mark. Both trade marks share a commonality of features that, if not unusual, are at least not mundane, which I have already addressed under the heading of contextual confusion. When to this are added the facts that the services in question share at least a vague nexus and the enormous size and character of the opponent’s reputation, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger s 60.
The ordinary consumer would, in my view, reasonably subscribe to the view that the structure of the applicant’s mark, combining e(arth) with the otherwise enigmatic element “bay” had been adopted for no reason other than to denote a connection with the commercial success of the opponent’s trade mark. Therefore, the opponent has established a ground of opposition under the provisions of section 60.
On that basis, the Opponent in that matter succeeded in establishing a ground of opposition pursuant to Section 60. In turn, in relation to the present matter, analogous reasoning would seem to be applicable. I consider that decision to be of direct application, bearing and assistance to the present matter and I see no reason which would justify me in departing from that finding or from applying the same reasoning in relation to the present matter. By way of further support for this approach, I refer to the decision of Google Inc. v. Rytsk (2008) 77 IPR 623 in which Hearing Officer Nancarrow found that an application for registration of the GOOGLEBAY trade mark “would be likely to cause deception or confusion of the general purchasing public in the face of the strong Australian reputation acquired by the opponent . . . in its GOOGLE trade mark” and that the Section 60 ground of opposition was established in that instance.
29. In Ubay Pty. Limited v. Ebay Incorporated (2010) 85 IPR 428, involving the trade mark “Ubay” and the EBAY registrations of the Opponent, Hearing Officer McDonagh found that while the word marks in that instance were very close and raised “the possibility of confusion”, the reputation of the Opponent is such that on the balance of probabilities the “brand recognition” of its various marks would mean that the use of the Applicant’s trade mark would not be likely to deceive or cause confusion. I would distinguish that approach, and in particular I note that in Smith, Hayden and Company’s Application (1946) 63 RPC 97 (the “Ovax” case) and in Ana Laboratories Application (1951) 69 RPC 146 (involving the trade marks “Vanildene” and “Vaseline”) a similar line of argument was rejected. At the same time, the finding in the Ubay decision as to the closeness of the respective marks and the likelihood of possible deception or confusion is consistent with the reasoning in the “earthbay” decision.
30. In the present matter, the elements of reputation and of similarity between the relevant goods and services are well made out. The level of resemblance between the respective marks is more in question, but nonetheless that element exists. Even allowing for the differences between the opposed trade mark application TRADIEBAY and the Opponent’s EBAY marks, and accepting the Opponent’s evidence as establishing reputation in the requisite sense, in my view there exists the prospect that, when considered on the balance of probabilities, instances of deception or confusion can be said to be likely to occur. Given the particular context of corresponding goods or services offered in an on-line environment, I consider that a significant number of members of the public would not fail to recognise a connection between the TRADIEBAY application and the prior existing EBAY registrations of the Opponent and that at least some part of that number will be likely to be deceived or confused in the requisite sense. When regard is given to the element of “reputation”, that factor is sufficient to overcome the obvious points of difference which exist between the respective TRADIEBAY and EBAY marks and to have the effect that it is likely that instances of deception or confusion would occur.
31. In relation to Section 60, having regard to the substantial and undisputed reputation of the Opponent in respect of the expression EBAY, the test of the likelihood of deception or confusion occurring is made out and satisfied in this instance. Weighing up and assessing those considerations which are raised above, I am satisfied that the necessary elements are met and I am led to the conclusion that because of the exceptional level of reputation acquired by the Opponent in respect of its EBAY trade mark and in relation to the provision of the buying and selling of goods and services in an on-line environment, the use of the Applicant’s trade mark TRADIEBAY would be likely to deceive or cause confusion. Accordingly, I find that the ground of opposition which is raised pursuant to Section 60 of the Act has been made out.
Section 44
32. This Section provides as follows:
TRADE MARKS ACT 1995 - SECT 44
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant's trade mark ) in respect of goods ( applicant's goods ) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark ) in respect of services ( applicant's services ) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
33. By way of clarification and understanding in relation to the application of Section 44, that Section requires cross-reference to be made to Sections 10 and 14 of the Act. The expression “deceptively similar” appearing in Section 44 is defined in Section 10 of the Act as follows:
10Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The expression “similar goods” appearing in Section 44 is defined in Section 14 of the Act as follows:
14Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
There is no definition in the Act of the expression “substantially identical”.
34. The separate elements of this Section, all of which must be satisfied and met by the Opponent if it is to succeed in establishing this ground of opposition, are as follows:
·there must be a trade mark which is substantially identical with or deceptively similar to the applicant’s trade mark;
·that trade mark must be a registration or an application for registration;
·that trade mark must be in the name of a person other than the Applicant;
·the relevant goods or services of the respective marks must be similar;
·the exceptions as provided by virtue of sub-sections (3) and (4) must not be applicable; and
·the relevant date at which these circumstances must be established is the priority date of the relevant application (that is, in this instance 6 May 2010).
35. In the Notice, the first ground is stated in terms which correspond to the wording of Section 44. Each of the fourteen trade mark registrations on which the Opponent relies (and as set out in the Notice, the Garcia Declaration at paragraph 4, and in the Annexure A which follows) has a priority date which precedes the filing date of the Trade Mark.
36. In terms of the similarity of the respective goods or services, both the Trade Mark and the Opponent’s registrations cover goods in Class 16 and services in Class 35. The Opponent’s registrations clearly relate to Class 35 services and specifically to “on-line advertising”. Even with the attempt by the Applicant to differentiate its Class 35 specification by excluding the item “auction services”, those activities falling within the scope of Class 35 which are claimed by each party are regarded by me as being either similar or closely related in the requisite sense. In relation to Class 16 goods, the situation is somewhat less clear. In particular, the majority of the Opponent’s registrations are limited in scope in the sense that they do not extend to include Class 16. However I note that each of Nos. 800093 and 800349 does make specific reference to Class 16 and I regard that reference and the items claimed therein as being sufficient in scope to satisfy this requirement. Further, in relation to those services which are located in Class 35, I accept the evidence and the submissions of the Opponent that both the Trade Mark of the Applicant and the registrations on which the Opponent relies can be depicted as being used to provide various on-line marketing services and to facilitate the on-line sale and trading of a wide range of tradesman (or “tradie”) related goods and services. In particular, the trade marks of both parties are adopted and used in relation to on-line services whereby goods relating to building, construction, plumbing, electrical, automotive, gardening, cleaning, building tools, equipment and accessories can be advertised and purchased (and as described in Annexures E and F of the Garcia Declaration).
37. In its written submissions (at paragraphs 5.6 and 5.7), the Opponent identifies those factors which are traditionally taken into account when assessing the similarity of goods or services and which are set out in Re Jellinek’s Application (1946) 63 RPC 59 and Beck, Koller and Company’s Application (1947) 64 RPC 76. Saliently, those matters which need to be taken into consideration include (without limitation) the nature of the goods or services, the respective uses of same, and the trade channels through which the goods or services are made available to the consumer. Further (at paragraphs 5.11 to 5.18), the Opponent places particular reliance on its registrations Nos. 781907 and 822958 and it contends that the Class 35 specifications which are stated in those marks “encompass all of the class 35 services for which the Applicant is seeking registration”. No submissions have been put forward on behalf of the Applicant to contradict or challenge this argument. Having regard to the wording of the Class 35 specification of services in the Trade Mark and those items in Class 35 which are claimed by the Opponent in the registrations on which it relies, I reach the conclusion that the goods and services of the respective parties are similar or closely related in the sense which is envisaged in Section 44. Accordingly, in this instance, this requirement is satisfied and met. That being so, the issue which remains for me to determine is whether the Trade Mark is substantially identical with or deceptively similar to the trade mark registrations on which the opponent relies.
“Substantially Identical”
38. Both in its written submissions and orally at the hearing, the Opponent has made it clear that it does not rely on the opposed mark being substantially identical with any of its prior existing entries. Rather, the Opponent is satisfied in asserting that the opposed trade mark is deceptively similar to those registrations. That being so, for present purposes I do not need to consider whether the issue of “substantially identical” is applicable.
“Deceptively Similar”
39. While the appropriate test which is to be applied in determining whether two or more marks are substantially identical (being that of the “side by side” comparison) is not applicable in the present instance (because it is not argued or relied upon by the Opponent), that test is not appropriate when considering deceptive similarity which, rather, places reliance on the “impression based on recollection” of the respective marks that is carried away by members of the public. Further, it is necessary to give regard to the definition of the expression “deceptively similar” which appears in Section 10 of the Act (and as referred to in paragraph 21 above) and which does not require that there be an intention to deceive or cause confusion. So, it is said that the distinction between “likely to deceive” and “likely to cause confusion” resides not in some element of culpability in the user to be inferred from the word “deceive”, but rather in the effect of the trade mark on potential purchasers. As Justice Richardson explained in the New Zealand case of Pioneer Hi-Bred Corn Company v. Hyline Chicks Pty. Limited [1979] RPC410 at 423:
“Deceived” implies the creation of an incorrect belief or mental impression and “causing confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods [or services] bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
40. The test of whether trade marks are “deceptively similar” within the meaning of Sections 10 and 44(l) of the Act concerns the inherent qualities of the marks seen in the light of the proper uses that may be made of them. It is well-established that in applying that test consideration is not to be given to the actual use which the parties may have made of their respective marks. In this regard, and as distinct from the Section 60 ground, the issue of the Opponent’s reputation does not arise. Rather, the test to be applied is that proposed by Justice Evershed in Re An Application by Smith Hayden and Company Limited (1946) 63 RPC 97 at 101. As Justice Branson put it (in her dissenting judgment) in Registrar of Trade Marks v. Woolworths Limited (1999) AIPC 91-499; (1999) 45 IPR 411 (“Woolworths”) at [88]:
Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of [goods and] services covered by the proposed registration.
41. A useful outline of the relevant general principles which are to be applied in assessing deceptive similarity and a restatement of the classical propositions is to be found in the decision of Justice French (also in Woolworths) at paragraph 50, namely:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
"...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
42. More recently, in Australian Postal Corporation v. Digital Post Australia Pty. Limited (No. 2) (2012) 96 IPR 532 at 538-540 (paragraphs 40-48) Justice Marshall accepted favourably the decision of Justice Dodds-Streeton in Tivo Inc. v. Vivo International Corporation Pty. Limited [2012] FCA 252 at paragraphs 94-109 inclusive (at first instance, but affirmed on appeal). In the course of that decision, and in addressing the relevant general principles which are to be applied when considering the issue of deceptive or confusing similarity, her Honour observed that it is necessary to compare the respective trade marks visually and aurally, that one should have regard to the relevance of the surrounding circumstances to the issue of deceptive similarity, and that the test is whether there is a real risk that the use of the impugned mark:
. . . will cause a significant number of ordinary persons to wonder or to entertain a reasonable doubt . . . as to whether the respondents’ products come from the same source as those of the applicants. It is sufficient to “cause confusion” if the minds of the purchasing public are merely “perplexed” or “mixed up” (at paragraph 102).
Additional assistance is afforded by the useful summary of the relevant principles and considerations which is provided by Justice Bennett in Torpedoes Sportswear Pty. Limited v. Thorpedo Enterprises Pty. Limited (2003) AIPC 91-919; (2003) 59 IPR 318.
43. There are other factors which are salient. In particular, due weight must be given to the operation of the so-called doctrine of imperfect recollection. In assessing the respective marks, I must allow for the ordinary possibilities of imperfect recollection of one trade mark when, hypothetically, it is encountered in the absence of the other mark. The relevant test which is to be applied is well-established and it has been usefully stated by Justice Sargant in the decision of In re Sandow Limited’s Application (1914) 31 RPC 205 as being:
The question is not whether if a person is looking at two Trade Marks side by side there would be a possibility of confusion; the question is whether the person who sees the proposed Trade Mark in the absence of the other Trade Mark, and in view only of his general recollection of what the nature of the other Trade Mark was, would be liable to be deceived and to think that the Trade Mark before him is the same as the other, of which he has a general recollection. . . . The true test is whether the totality of the proposed Trade Mark is such that it is likely to cause mistake or deception, or confusion, in the minds of persons accustomed to the existing Trade Mark.
44. In this regard, it is the impression which is likely to be carried away and retained in the mind of the ordinary consumer which is important. As stated by Lord Justice Luxmoore in Rysta Limited’s Application (1943) 60 RPC 87 at 108 (and later approved by the House of Lords in Aristoc Limited v. Rysta Limited (1945) 62 RPC 65):
The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.
The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants[3].
[3] To similar effect, in de Cordova v. Vick Chemical Company (1951) 68 RPC 103 at 106 Lord Radcliffe stated:
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods [or services] with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
45. As well, it is accepted that due regard must be given to the element of notional similarity as a relevant factor. In this regard, it is said that the presence of some common “idea” may tip the scales against registration because the “idea” is more likely to be recalled than the precise details of the mark (per Justice Gummow in Johnson & Johnson v. Kalnin (1993) 26 IPR 435).
46. In applying collectively each of these factors or criteria, it is necessary to consider “all the surrounding circumstances”. Reduced to simple terms, the two-fold test is whether the respective trade marks really look alike or sound alike and then, if so, whether the resemblance is likely to deceive or confuse (per Justice Branson in Woolworths, op. cit., at paragraph 84, and citing the decision of the High Court in Cooper Engineering Company Limited v. Sigmund Pumps Limited (1952) 86 CLR 536 at 539). As Senior Assistant Registrar Hanlon stated in Bodegas Rioja Santiago SA v. Barossa Co-Operative Winery Limited (1983) 5 IPR 1 at 7:
In considering the surrounding circumstances I think particular attention should be given to the impact, impression or idea of each of the respective marks and to the function and significance of their common features in a business context.
Comparison of the Marks
47. The decided cases consistently maintain that a trade mark is “the whole thing” and that it is the mark as an entirety to which consideration must be given. There may be differences in the parts of each mark, but it is important to consider the mode in which the parts are put together and to judge whether the dissimilarity of the part or parts is enough to make the whole dissimilar (Kerly’s Law of Trade Marks and Trade Names, 11th edition, 1983, paragraph 17-17 at page 415). In Clark v. Sharp (1898) 15 RPC 141 at 146 it was said:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[4]
In Broadhead’s Application (1950) 67 RPC 209 at 215 Master of the Rolls Evershed (following the observations of Lord Russell in Coca Cola Canada v. Pepsi Cola Canada (1942) 59 RPC 127) stated:
Where you get a common denominator, you must in looking at the competing formulae pay much more regard to the parts of the formulae which are not common – although it does not flow from that that you must treat the words as though the common part was not there at all.
[4] Along similar lines, in Bailey’s Application (1935) 52 RPC 136 (concerning the trade marks “Erectiko” and “Erector”) Justice Farwell stated:
I do not think it is right to take a part of the word and compare it with a part of the other word: one word must be considered as a whole and compared with the other word as a whole . . . I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.
Where common elements are included in the trade marks to be compared the proper course is to look at the marks as wholes, and not to disregard the parts which are common.
48. In Harrods’ Application (1935) 52 RPC 65 at 70, the Registrar stated:
It is a well-recognised principle that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the markets in which the marks under consideration are being or will be used.
In Accutron T.M. [1966] RPC 152 (concerning the trade marks ACCUTRON and ACCURIST), Lord Justice Harmon stated:
It is not right to pull the words to pieces, ACCU- for one part and –IST and -LARM for the other part, next to argue that ACCU reminds you of “accurate” no matter what the suffix, and to conclude that the upshot will be a monopoly in the natural word.
It is widely accepted that the first syllable of a word mark is generally the most important. Further, it has been observed that there is a “tendency of persons using the English language to slur the termination of words” (London Lubricants (1920) Limited’s Application (1925) 42 RPC 264)[5].
[5] See also Enoch’s Application (1947) 64 RPC 119 (VIVICILLIN and CYLLIN); Bayer (1947) 64 RPC 125, 128 (DIASIL and ALASIL); Demuth’s Application (1948) 65 RPC 342 at 346 (SEDA SELTZER and ALKA SELTZER); and “CAL-U-TEST” T.M. [1967] FSR 39 (“Cal-U-Test” allowed notwithstanding twelve other “Test” marks with different prefixes).
49. Having regard to the present matter, I adopt the approach that the mere possession of the commonly-shared element “BAY” (or “EBAY”) both in the Trade Mark and in the registrations of the Opponent is not in itself enough to establish deceptive similarity and that there must be made out something more before the Section 44 ground is established. In particular, I take the view that the mere appearance of a shared or common element (in this instance, the expressions “BAY” or “EBAY”) located within the respective trade marks is not sufficient to render those marks deceptively similar to each other. In this regard, in the decision of Capitol Clothing Pty. Limited v. Hush Fashions Pty. Limited [2006] ATMO 79 at paragraphs 29-30 Hearing Officer Windsor observed:
For a trade mark to “so nearly resemble that other trade mark that it is likely to deceive or cause confusion” there would need to be some perceived connection between the two trade marks in the mind of the purchaser. The mere presence in two trade marks of the same word is not sufficient for this to happen. The perception of a connection is more likely to occur when the target word is accompanied by words or images that allude to the trade marks being a family of trade marks owned by the same organization. A simplistic example here would be “ENVY Women” and “ENVY Men”, both in use on a range of clothing.
However, where the additional words are not relevant to the trade, or where well known phrases are used, this perception is less likely to be the case. I consider this is the situation here.
In that instance, the finding was that the resemblance between the respective trade marks “GREEN WITH ENVY” and “ENVY AVENUE” of the Applicant and the Opponent’s “ENVY” registration was not such that there would be a real tangible danger of deception or confusion occurring in the minds of the buying public.[6]
[6] Other statements to like effect are to be found in Gardenia Overseas Pte. Limited v. The Garden Company Limited (1994) AIPC 91-096; (1994) 29 IPR 485 at paragraphs 79 and 80 (“gardenia” and “garden”); Rivers (Australia) Pty. Limited v. Ezibuy Limited (2000) 49 IPR 186 (“Rivers” and “Stoneriver”); Prefel SA v. Merchant Corporation Pty. Limited (2001) 52 IPR 227 (STRADA and PRADA); Southcorp Wines Pty. Limited v. Kemeny’s Food and Liquor Pty. Limited (2001) 52 IPR 619; (2001) AIPC 91-743 at 39,889 (DEVIL’S RIDGE and DEVIL’S LAIR); Bose Corporation v. QSC Audio Products Inc. [2002] ATMO 118 (WAVE and ACOUSTIC WAVE); and Chris Kingsley v. David Scott [2011] ATMO 20 at paragraphs 11 to 13 (REBELLION and SOUL REBELLION).
50. By way of illustration, other examples abound. In this regard, without in any sense seeking to be exhaustive, I refer to Darwin Limited’s Application (1946) 63 RPC 1 (REX and MOREX not likely to deceive or cause confusion), “Frigiking” Trade Mark [1973] RPC 739 (“Frigiking” and “Thermo-king” not deceptively similar), The Timberland Company v. Woolworths Limited [2005] ATMO 12 (TIMBERLAND and TIMBERLINE not deceptively or confusingly similar), Health World Limited v. Shin-Sun Australia Pty. Limited (2008) 75 IPR 478 per Justice Jacobson at first instance (HEALTHPLUS and INNER HEALTH PLUS not deceptively similar, and Australian Postal Corporation v. Digital Post Australia Pty. Limited (2012) 96 IPR 532 (AUSTRALIA POST and DIGITAL POST AUSTRALIA not deceptively similar).
51. In relation to the issue of deceptive similarity, the Opponent has made inter alia the following submissions:
·The decision-maker must determine the effect or impression that the earlier mark will produce in the minds of potential customers.
·The relevant context in this instance is that of an on-line marketplace and a global computer network. In that context, the inclusion of the EBAY component in the Applicant’s mark will provide the purchasing public with a link to the coined meaning of EBAY and will lead to the expectation that the Applicant’s services form part of the Opponent’s business. In this regard, consumers are well-aware that the Internet is continuing to expand rapidly. It is well-known, for example, that Google is expanding into other areas of business. Moreover consumers are conscious of the practice of brand extension. On that basis, there is a real risk that persons will see the TRADIEBAY trade mark of the Applicant as indicating a new form of business of the Opponent.
·The Opponent has three distinct types of EBAY mark, namely:
oEBAY (or ebay or eBay) on its own;
EBAY coupled with other words (such as YOU CAN GET IT ON EBAY, EBAY ADCONTEXT, EBAY EXPRESS, SOURCING MARKETPLACE FOR EBAY, and ebay CLASSIFIEDS GROUP); and
othe word “ebay” rendered in stylised form.
·The Opponent’s mark is wholly contained within the Applicant’s mark. The Applicant has not just incorporated a memorable feature of the Opponent’s mark but rather it has incorporated the entirety of that mark and combined it with an element that is both a colloquial term and a generic word.
·The “-ebay” part of the Applicant’s mark is well-known and it has acquired a significant reputation in favour of the Opponent. It is that part of the mark which refers members of the public to the Opponent.
·Upon a visual inspection of the Applicant’s mark, attention is drawn to the “ebay” component of that mark (which is more famous and distinctive) rather than the preceding word TRADIE which is a colloquial term having nothing special or distinctive about it.
·EBAY is a coined term created by the Opponent and it is original to the Opponent and highly distinctive of it. By contrast, the word TRADIE is a well-known, colloquial and generic term for a tradesperson and as such there is nothing distinctive about it. It is not operating as indicating a trade source.
·In relation to the issue of aural similarity, the Opponent holds that the Trade Mark would be pronounced TRADE-EBAY with the emphasis falling on the second part of the mark while the Applicant puts a different pronunciation on it (as in TRADIE-BAY).
·The Opponent contends that the Applicant’s mark should be pronounced with the emphasis on the elongated vowel “e” formed by the letters “ie”, so that the Applicant’s mark would be pronounced as TRADE-EBAY with the emphasis falling on the second and third syllables. The EBAY mark is so well-known that there is a real tangible risk that some people will pronounce the TRADIEBAY mark as TRADE-EBAY and will be caused to wonder whether the respective goods or services come from the same source.
·The component TRADIE- operates to qualify the second part of the Trade Mark (“-EBAY”) so that when considered overall the mark will be seen as indicating “EBAY for TRADIES”, and the pronunciation and emphasis will be on the latter part of the mark. The word “TRADIE” appearing within the mark is a descriptor of what “EBAY’ is doing, so that it naturally has a role in the expression TRADIEBAY in describing “EBAY for TRADIES’.
·The term “EBAY” has no meaning or connotation other than that associated with the Opponent. It is a coined word which is highly distinctive. Accordingly, the addition of the word “TRADIE”as a prefix would be likely to be seen by members of the public as indicating that the relevant goods or services which are made available by the Applicant are a sub-set of those goods or services which are provided by the Opponent under its EBAY trade mark but intended specifically for “tradies” (that is, tradespersons).
·There is a risk that persons on seeing the TRADIEBAY trade mark of the Applicant might think that mark to be part of the same family as the Opponent’s “EBAY” trade marks and might be led erroneously to believe that the goods or services of the Applicant emanate from the same trade source or origin as goods or services bearing the “EBAY” mark.
·It is clear that the Applicant’s mark is to be used in an on-line environment and in a manner which is similar to the Opponent’s “EBAY” marks. In the context of the relevant market, which is the on-line trading market for goods and services, the “-EBAY” component plays a significant role of and in itself.
·In the final analysis, each mark must be considered having regard to its own particular factual circumstances. In the present instance, the appearance of the commonly-shared word EBAY and the effect of same is not diminished by the addition of the separate word TRADIE. The TRADIE component is descriptive of what one can expect to obtain on that EBAY site. The essential meaning behind the EBAY mark (being the idea of an electronic e-commerce “bay” where one can buy and sell things) is not altered by the addition of the word “TRADIE” as it appears in the Applicant’s TRADIEBAY trade mark.
52. For its part, the Applicant has submitted as follows:
· This application has earlier been examined and accepted without issue.
· The Applicant’s mark consists of one word only, being the plain word TRADIEBAY.
· The dominant feature of the Opponent’s “EBAY” marks is the first vowel “e” which, when used as a prefix, conveys the impression of a connection with something electronic or on-line.
· The “e” component appears as the first element of the “EBAY” marks which is generally presumed to be the part that consumers tend to remember.
· No such impression is communicated by the Applicant’s mark the first component of which is the word “TRADIE” and not the prefix “e”. Rather, the impression which is conveyed when the words “TRADIE” and “BAY” are coupled together (as “TRADIEBAY”) is of a bay area that is used by tradespersons.
· The only similarity between the respective marks is the “-BAY” suffix, and the Opponent has no proprietary right whatsoever in respect of the use of that suffix.
· The Applicant’s TRADIEBAY trade mark is distinct from the Opponent’s EBAY marks. The expression “EBAY” comprises only four letters and it begins with the vowel “e”. The Applicant’s trade mark, containing nine letters, is twice as long and it begins with the consonant “T” and the word “TRADIE”. Visually and aurally the respective trade marks are quite different and it is unlikely that consumers would mistake the two marks.
· There exist a number of trade mark registrations which feature the suffix “-bay” and in the names of parties other than the Opponent, so that the Opponent cannot be said to have a monopoly in respect of that suffix.
· There is nothing in the Applicant’s TRADIEBAY trade mark that serves to emphasise the ending or suffix of that word. The Opponent’s submission that the eye of the beholder is drawn to the famous and more visually distinctive “EBAY” component rather than the generic term “TRADIE” which precedes it is unfounded and goes against the general principle that it is the first part of the mark that is the most significant.
· The recollection of the Applicant’s mark that is most likely to be carried away by the general public is the leading “TRADIE” component of that mark. So, the most memorable part of the Applicant’s mark is not the shared component “-EBAY”.
· The element “EBAY” which is shared in common does not retain a separate identity in the Applicant’s mark. That shared element appears as a suffix or ending in the Applicant’s mark and not as a prefix or separate word, and no particular emphasis is placed on that element as it appears in the Applicant’s mark.
Turning my attention to the trade marks themselves, and in comparing the respective marks, it is apparent that there exist notable differences and points of distinction between them. Indeed, the only element of commonality which can be said to exist arises from the inclusion of the suffix “-BAY” (or “-EBAY”) as the ending or final lettering of the Applicant’s TRADIEBAY trade mark. In this regard, it should be noted that in this instance the Applicant’s trade mark appears in combination form and it comprises the individual words TRADIE and BAY which are conjoined or telescoped to form the composite expression TRADIEBAY, being an invented word which has no established meaning or ordinary significance. As such, the expression TRADIEBAY presents as having a particular appearance or manner of representation which is arguably distinctive of the Applicant when considered in its overall effect.
54. A comparison of the respective marks leads me to make the following observations, namely;
·The overall appearance and effect of the TRADIEBAY application and the impression which is conveyed by it are markedly different from the appearance and impression which are conveyed by each of the prior existing registrations on which the Opponent relies.
·The essential element in the Applicant’s trade mark is not the individual word “EBAY” (as it is in the Opponent’s registrations) but rather the composite expression “TRADIEBAY”.
·The “EBAY” trade marks of the Opponent have no equivalent to the “TRADIE” component which appears in the Applicant’s mark.
·In terms of pronunciation, it seems to me to be more likely than not that the Applicant’s mark would be seen as TRADIE-BAY and not TRADE-EBAY (as the Opponent maintains).
·In this instance, within the Applicant’s mark the weight and the significance falls on the initial word or prefix TRADIE (which I regard as being the dominant part of the mark) rather than on the “-BAY” suffix.
·The Applicant’s mark is seen as two distinct words (TRADIE and BAY) whereas the expression EBAY as it appears in the opponent’s marks is essentially one word. Within the Applicant’s mark, the TRADIE element functions as an independent word.
·Both the expressions TRADIE and EBAY are self-contained words which are different in size, spelling, pronunciation and meaning.
·The word TRADIEBAY has nine letters comprising three syllables whereas the word EBAY has four letters and two syllables. In this regard, it should be noted that a difference in the number of syllables has been regarded as significant (see Re LANCER Trade Mark [1987] RPC 303 at 324 per Justice Fox, and cited by Justice Lindgren in Gardenia Overseas Pte. Limited v. The Garden Company Limited (1994) 29 IPR 485 at 492). That a difference in the number of syllables has some significance was not, and could not be, contested by the Opponent.
·The respective expressions TRADIEBAY and EBAY have completely different meanings, they give rise to a different impact and impression, and they appeal to the eye and the ear of the beholder in entirely different ways. Ultimately, the only element of similarity which can be said to arise between them is to be found in the sharing of the unemphasised final syllable “-BAY” appearing in the Applicant’s mark.
·The overall effect of the respective marks is to give rise to differences in the “syllabic structure and pronunciative emphases of the respective words” (per Justice Lindgren in Gardenia Overseas Pte. Limited v. The Garden Company Limited (1994) 29 IPR 485 at 491 line 45).
55. By way of a summing-up in relation to this issue, I can do no better than refer to the words of Justice Neville in Application by Thomas A. Smith to Register a Trade Mark (1913) 30 RPC 363 at 366 (a case which concerned the respective trade marks SUMMIT and LIMIT):
I do not think that so far as the meaning of the words is concerned, a reference to the one would in the least leave such an impression in the mind of the reader as to make him mistake the other for it. Looking at the marks I do not think that there is any possibility of anybody being deceived. That nobody will ever make a mistake is more than I am prepared to say, but, if there is a mistake, I think it will be made by some person so foolish, or so unobservant, as in that respect to be without the pale of the protection of the law.
56. In short, after comparing the respective trade marks and disregarding the element of reputation (as earlier explained in paragraph 23 above), I reach the conclusion that the Applicant’s TRADIEBAY trade mark in normal use would be unlikely to be mistaken for the expression EBAY as adopted by the Opponent (and vice versa). In my view, the TRADIEBAY trade mark gives rise to an entirely different construction, interpretation and significance than the word EBAY: see the decision of Conde Nast Publications Pty. Limited v. Taylor (1998) 41 IPR 505. I do not consider that any reasonable person on seeing the respective trade marks TRADIEBAY and EBAY even in relation to identical or corresponding goods or services would assume those marks to identify the same proprietor or a common trade source or origin. Having regard to its particular and composite form, the Applicant’s mark demonstrates significant points of differentiation and is sufficiently dissimilar in appearance and impression from the EBAY registrations on which the Opponent relies as to avoid potential conflict, at least on the basis of the relevant tests under Section 44. As in the Conde Nast decision which is referred to above, I arrive at the conclusion that there is no “real tangible danger” of deception or confusion occurring, taking account of all the surrounding circumstances including the nature and context of the relevant trade.
57. In the end result, and after considering those factors and circumstances which are indicated above, I find that the Applicant’s TRADIEBAY application No. 1360050 is not deceptively similar to the EBAY trade mark registrations of the Opponent for the purposes of Section 44 (and as distinct from being likely to deceive or cause confusion as provided in relation to the Section 60 ground). On that basis, the requirements which need to be met pursuant to Section 44 of the Act have not been satisfied and the ground of opposition pursuant to that Section is not made out. That being so, I am not called upon to consider the effect of sub-sections (3) and (4) or the possible exercise of the Registrar’s discretion because of “other circumstances”.
Section 42(b)
58. This Section of the Act provides that an application for registration must be rejected if its use would be contrary to law. Since the decision of Justice Madgwick in Advantage Rent-a-Car Inc. v. Advantage Car Rental Pty. Limited (2001) 52 IPR 24 (at paragraphs 26-28) it has been considered that the Registrar is obliged, when assessing whether use would be contrary to law pursuant to Section 42(b), to take into account the operation of laws and legislation other than the Trade Marks Act 1995. In relation to the present matter, Counsel for the Opponent submitted that use of the Applicant’s trade mark for the relevant goods or services would breach Sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations. At the hearing, I pointed out to Ms. Marcus that the Australian Consumer Law took effect as from 1 January 2011 and as such that it had no application as at the priority date of 6 May 2010. I indicated that I would consider this ground on the basis of Sections 52 and 53 of its predecessor legislation, the Trade Practices Act 1974. In any event, I note that in practice there is little substantive difference since the wording and effect of the corresponding provisions are essentially similar.
59. In the Advantage Rent-a-Car case which is referred to above, Justice Madgwick made it clear that the test which needs to be satisfied under Section 42(b) is that use would, rather than could, be contrary to law. In relation to the matter which is presently before me, I am required to determine on the balance of probabilities (and taking into account all of the relevant circumstances which are before me) whether use of the TRADIEBAY application in respect of the relevant goods or services in relation to which registration is sought would cause, or be likely to cause, consumers to be misled or deceived. In this regard, the relevant standard to be applied is that there must be “a real or not remote chance or possibility” of a reasonably significant number of people being misled or deceived: see, for example, Equity Access Pty. Limited v. Westpac Banking Corporation (1989) 16 IPR 431.
60. I have earlier found that the Applicant’s TRADIEBAY application is not deceptively similar to the EBAY registrations of the Opponent in terms of Section 44 of the Act. Further, there are several decided cases confirming that more is required in order to establish a likelihood of misleading or deceptive conduct (or, by extension, conduct amounting to the making of false or misleading representations ) than is the position with trade marks which are likely to deceive or cause confusion under Section 60. In Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited (1982) 149 CLR 191; 1A IPR 684, by way of example, Chief Justice Gibbs observed in relation to Section 52 of the Trade Practices Act (at 688):
In McWilliams Wines Pty. Limited v. McDonald’s System of Australia Pty. Ltd. (1980) 33 ALR 394 it was rightly held by Smithers J and by Fisher J that to prove a breach of s 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592; 1A IPR 465, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable.
61. It is clear that in establishing a likelihood of misleading or deceptive conduct something more is required than the possibility that instances of deception or confusion might be said to occur. It is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products or services may have come from the same source (see Justices Smithers and Fisher in McWilliams Wines Pty. Limited v. McDonald’s System of Australia Pty. Limited (1980) 33 ALR 394 and referred to with approval by Chief Justice Gibbs in Parkdale Custom Built Furniture Pty. Limited v. Puxu Pty. Limited (1982) 149 CLR 191). Similar reasoning has been expressed by Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) 45 IPR 411 at 427 (paragraph 47) where he stated:
The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes.
62. The focus of Sections 52 and 53 is on the misleading of others, rather than upon an injury to a competitor. In Hansen Beverage Company v. Bickfords (Australia) Pty. Limited (2008) 79 IPR 174 Justice Tamberlin observed (at paragraph 46):
There is no foundation in the language of s 52 of the TPA to require that a reputation exist among any particular class or group of persons (particularly as defined by advertising objectives) before a breach of that provision can be made out. The provision is designed to regulate conduct which can be characterised as misleading and to protect consumers. . . . The question which must be answered can properly be framed as being whether a not insignificant number of persons in the Australian community, in fact or by inference, have been misled or are likely to be misled.
In the present instance, given the differences between the respective marks when each mark is compared as a whole and in the absence of any evidence before me of actual deception, I am not satisfied that the reputation of the Opponent’s relevant trade marks (whether considered individually or in terms of their collective reputation) is such that use of the Applicant’s trade mark for the goods or services in question would be likely to mislead or deceive or would amount to the misrepresentations as alleged and in breach of Sections 52 or 53 of the Trade Practices Act . Thus, I find that the Opponent has not established the ground of opposition pursuant to Section 42(b) of the Act.
Decision
64. In deciding this matter, I am required to determine whether or not to allow the Applicant’s TRADIEBAY application No. 1360050 to proceed to registration pursuant to the provisions of Section 55 of the Act which relevantly provides:
(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.
I find that the Opponent has established the ground of opposition pursuant to Section 60 of the Act. Accordingly the opposition succeeds and, unless the Registrar is served with a notice of appeal, I refuse registration of the Trade Mark.
Costs
65. Each of the parties has sought an award of costs in its favour. However, the Opponent having been successful in relation to one of the grounds on which it relied, I consider that the general rule should apply and that costs should follow the cause. Accordingly, I award costs against the Applicant and in favour of the Opponent with such costs to be assessed and determined in accordance with the provisions of Schedule 8 of the Trade Mark Regulations 1995.
John Spence
Hearing Officer
Trade Marks Hearings
24 July 2013ANNEXURE “A”
Opponent’s Prior Registrations
No. Mark Registered From Goods and Services 781906 23-DEC-1998 Class 35: On-line trading services being the facilitation of the exchange of consumer goods from person to person
781907 EBAY 23-DEC-1998 Class 35: On-line trading services being the facilitation of the exchange of consumer goods from person to person
800093 EBAY 13-JUL-1999 Class 9: Pre-recorded audio tapes, CD ROM, discs and video tapes featuring information in the fields of hobbies, collecting and auctions; computer software for use in the search and retrieval of computerized information on hobbies, collectibles, auctions and a wide variety of products accessed from global information networks and other network systems
Class 14: Clocks, watches and jewellery
Class 16: Publications, namely, books and magazines concerning hobbies, collectibles, auctions, and a wide variety of products; paper and stationery items, namely wrapping paper, greeting cards, write on/write off memo boards, paper tablecloths, paper napkins, paper placemats, paper party decorations, paper postcards, stationery, playing cards, address books, personal diaries, pens, pencils, erasers, desk top organizers, desk pads, desk stands, and holder for pens, desk baskets for desk accessories, desk file trays, desk top stationery cabinets, desk sets, posters, bumper stickers, calendars, and decorative stickers and decalcomanias
Class 25: Clothing, namely, T-shirts, sweatshirts, jackets, caps and visors
Class 28: Ornaments for Christmas trees; soft sculpture toys
Class 41: Entertainment services, namely a television program featuring information in the fields of hobbies, collectibles, trading and auctions
800349 14-JUL-1999 Class 9: Pre-recorded audio tapes, CD ROM, discs and video tapes featuring information in the fields of hobbies, collecting and auctions; computer software for use in the search and retrieval of computerized information on hobbies, collectibles, auctions and a wide variety of products accessed from global information networks and other network systems
Class 14: Clocks, watches and jewellery
Class 16: Publications, namely, books and magazines concerning hobbies, collectibles, auctions, and a wide variety of products; paper and stationery items, namely wrapping paper, greeting cards, write on/write off memo boards, paper tablecloths, paper napkins, paper placemats, paper party decorations, paper postcards, stationery, playing cards, address books, personal diaries, pens, pencils, erasers, desk top organizers, desk pads, desk stands, and holder for pens, desk baskets for desk accessories, desk file trays, desk top stationery cabinets, desk sets, posters, bumper stickers, calendars, and decorative stickers and decalcomanias
Class 25: Clothing, namely, T-shirts, sweatshirts, jackets, caps and visors
Class 28: Ornaments for Christmas trees; soft sculpture toys
Class 41: Entertainment services, namely a television program featuring information in the fields of hobbies, collectibles, trading and auctions
822958 EBAY 9-FEB-2000 Class 35: Providing an online, interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; and for the collection and dissemination of statistical, quantitative and qualitative information regarding the sale and resale of items via a global computer network; providing analyses and online distribution of statistical, quantitative and qualitative information regarding the sale and resale of items via a global computer network
Class 42: Computer programming; maintenance services for computer software; provision of access to computer databases; provision of access to global information networks and other network systems
822959 9-FEB-2000 Class 35: Providing an online, interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; and for the collection and dissemination of statistical, quantitative and qualitative information regarding the sale and resale of items via a global computer network; providing analyses and online distribution of statistical, quantitative and qualitative information regarding the sale and resale of items via a global computer network
Class 42: Computer programming; maintenance services for computer software; provision of access to computer databases; provision of access to global information networks and other network systems
844247 27- JUL-2000 Class 38: Telecommunication services, namely the electronic transmission of data and information
1108982 YOU CAN GET IT ON EBAY 18-APR-2006 Class 35: On-line trading services to facilitate the sale of goods and services via a computer network and providing evaluative feedback and ratings of sellers’ goods and services, buyers’ and sellers’ performance, delivery, and overall trading experience in connection therewith; advertising and advertisement services
1110127 EBAY ADCONTEXT 26-APR-2006 Class 35: Advertising and promotion services and related consulting; preparation of custom or non-custom advertising for businesses for dissemination via the web; dissemination for others via a global communications network; online advertising services for others, namely, providing advertising space on Internet web sites; online trading services to facilitate the sale of goods and provision of services by others via a global communications network and providing evaluative feedback and ratings of sellers’ goods and services, the value and prices of sellers’ goods and services, buyers’ and sellers’ performance, delivery, and overall trading experience in connection therewith
Class 38: Telecommunications services, namely, the electronic transmission of data and information; providing online communications links which transfer web site users to other local and global web pages
Class 42: Providing customized online web pages featuring user-defined information, which includes search engines and online web links to other web sites; designing online web pages for advertising purposes
1113327 EBAY EXPRESS 12- MAY-2006 Class 35: Operating online marketplaces for sellers of goods and/or services; providing evaluative feedback and ratings of sellers’ goods and services, the value and prices of sellers goods, buyers’ and sellers’ performance, delivery, and overall experience in connection therewith; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers; advertising and advertisement services; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers; advertising and advertisement services; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others
Class 38: Telecommunication services, namely the electronic transmission of data and information; paging services; providing an online, interactive bulletin board for the transmission of messages among computer users concerning hobbies, collectibles, trading, and the sale of goods and services via a global communications network
Class 41: Arranging and conducting educational seminars in the field of online commerce
1113344 12-MAY-2006 Class 35: Operating online marketplaces for sellers of goods and/or services; providing evaluative feedback and ratings of sellers’ goods and services, the value and prices of sellers goods, buyers’ and sellers’ performance, delivery, and overall experience in connection therewith; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers; advertising and advertisement services; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers; advertising and advertisement services; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others
Class 38: Telecommunication services, namely the electronic transmission of data and information; paging services; providing an online, interactive bulletin board for the transmission of messages among computer users concerning hobbies, collectibles, trading, and the sale of goods and services via a global communications network
Class 41: Arranging and conducting educational seminars in the field of online commerce
1216004 18-DEC-2007 Class 35: Operating online marketplaces for sellers of goods and/or services; providing evaluative feedback and ratings of sellers’ goods and services, the value and prices of sellers goods, buyers’ and sellers’ performance, delivery, and overall experience in connection therewith; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers; advertising and advertisement services; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers; advertising and advertisement services; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others
1249297 SOURCING MARKETPLACE FOR EBAY 2-JUL-2008 Class 35: Providing a web site whereby buyers of goods and services locate and receive quotations from multiple competitive sources and sellers of goods or services identify and bid on multiple new sales opportunities; on-line trading services to facilitate the sale of goods and services by others via a computer network; providing commercial information and on-line directory information services for sellers, producers and organizations; providing a searchable online database of products and services, producers and sellers; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; providing information about the goods and services of others via the global computer network; advertising and advertisement services
1301713 29-MAY-2009 Class 35: On-line advertising on computer communication networks; conducting shareholder and investor relations; business management and consultation; information services relating to business matters providing an on-line searchable database featuring information related to shareholder and investor relations, and information related to employment hiring, recruiting, placement, staffing and career networking services; employment services, namely, employment hiring, recruiting, placement, staffing and career networking services
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
Legal Concepts
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Injunction
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Remedies
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Costs
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