Ebay Incorporated v Ubay Pty Ltd
[2009] ATMO 105
•21 December 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by eBay Incorporated to registration of trade mark applications 1182354, 1184940, 1216097(20, 24, 35, 36, 37, 39 & 42) - UBAY - filed in the name of UBAY Pty Ltd.
Delegate: | Jock McDonagh |
Representation: | Opponent: Stephen Klotz of Deacons Patent & Trade Mark Attorneys Applicant: Christian Dimitriadis and Peter Maddigan instructed by Hodgkinson McInnis Patents |
Decision: | 2009 ATMO 105 Section 52 opposition: ss 44 and 60 grounds not established Costs awarded against the opponent |
Background
UBAY Pty Ltd (‘the applicant’) is the applicant for registration of three trade marks, current details of which are:
Application Nos: | 1182354 1216097 |
Priority Dates: | 3 July 2007 19 December 2007 |
Services: | Class: 35 Business administration; business management; office functions; retailing and wholesaling of furniture and accessories and other articles of household ornament including tables, lounges, chairs, seating, office furniture, outdoor furniture, occasional furniture, sofas, sofa-beds, modular furniture, ergonomic furniture, recliners, arm chairs and couches; operating online marketplaces in respect of goods and services; advertising and advertisement services, including providing a searchable online advertising guide; customer loyalty services and customer club services for commercial, promotional and advertising purposes; promoting the goods and services of others; retail services including retailing of food, drinks, items and accessories used in the preparation, serving and storage of food and drinks, bags, clothing, linen, napkins, tea towels, place mats, coasters, crockery and glassware; all of the above services including such services provided electronically, by means of computers, computer networks and the Internet; electronic retailing and online shopping services; employment and recruitment services Class: 36 Charitable fundraising; providing grants to charitable organisations; financial services; financial transaction processing services; payment and billing services; insurance services including insurance brokerage, insurance consultancy and insurance information; hire-purchase financing; credit services; real estate affairs; financial and monetary affairs; providing information, including online, about insurance, financial and monetary affairs and real estate affairs 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 ; computer services, namely, providing software interfaces available over a network in order to create personalized on-line information services; extraction and retrieval of information and data mining by means of global computer networks; creating indexes of information, indexes of web sites and indexes of other information sources in connection with global computer network; providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphic and audio visual information, by means of global computer information networks ; Design services, including design of furniture, furnishings, upholstery, carpet, windows, doors, blinds, shutters and other window dressings including curtains; providing hotel information and reservation services via a global computer network; computer chat room services, namely, providing online facilities for real time interaction with other computer users concerning a variety of topics; design and development of computer software for others; providing information, including online, about scientific and technological services and research and design relating thereto; research services |
Trade Mark: | UBAY (1182354) (1216097) |
| Application No: | 1184940 |
| Priority Date: | 6 July 2007 |
Goods & Services: | Class: 20 Furniture; bathroom mirrors; cupboards fitted with mirrors; frames for mirrors; hand held mirrors (looking glasses); hand-held mirrors (toilet mirrors); make-up mirrors for purses; make-up mirrors for the home; make-up mirrors for travel use; mirrors (looking glasses); mirrors being items of furniture; mirrors for use in powder compacts; mirrors for use in the application of lipstick; mirrors for use when travelling; mouldings for mirrors; pocket mirrors; printed mirrors; silvered glass (mirrors); wall mirrors; picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics |
| Trade Mark: |
Following examination, the applications were accepted for possible registration and advertised as such in the Official Journal of Trade Marks. 1182354 was advertised on 1 November 2007, 1184940 was advertised on 8 November 2007 and 1216097 was advertised on 24 April 2008.
On 1 February 2008, eBay Incorporated (‘the opponent’) filed Notices of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade marks 1182354 and 1184940. On 4 Jul7 2008, the opponent filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of trade mark 1216097.
The parties served and filed evidence in support and evidence in answer to the opposition as set out below:
| Declarant | Status | Date, Known as | Exhibits |
| Evidence in Support | |||
| Mike Yaghmai | IP Counsel eBay Inc | 28 April 2008, Yaghmai 1 | A to N |
| Mike Yaghmai | IP Counsel eBay Inc | 1 October 2008, Yaghmai 2 | Annexures K and L |
| Evidence in Answer | |||
| Helen Peachey | Attorney for Applicant | 1 August 2008 | HP1 to HP2 |
| William Michael Edward O’Connor | Director of Applicant | 30 October 2008 O’Connor 1 | WO’C1 to WO’C3 |
| William Michael Edward O’Connor | Director of Applicant | 15 December 2008, O’Connor 2 | WO’C1 |
The opponent asked to be heard and the matter came before me as a delegate of the Registrar of Trade Marks, in Sydney, on 7 September 2009. The opponent was represented at the hearing by Stephen Klotz of Deacons patent & trade mark attorneys. The applicant was represented by Christian Dimitriadis and Peter Maddigan instructed by Hodgkinson McInnis patent & trade mark attorneys.
The Notice of Opposition cited grounds of opposition under sections 44 and 60.
The registrations relied upon by the opponent in support of its opposition are as follows:
| Registration number | Trade Mark | Goods | Priority Date |
| 781906 | Class: 35 On-line trading services being the facilitation of the exchange of consumer goods from person to person | 23.12.98 | |
| 781907 | eBay | Class: 35 On-line trading services being the facilitation of the exchange of consumer goods from person to person | 23.12.98 |
| 800093 | eBay | 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/wipe off memo boards, memo pads, paper tablecloths, paper napkins, paper placements, 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 | 13.07.99 |
| 800349 | 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/wipe off memo boards, memo pads, paper tablecloths, paper napkins, paper placements, 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 and soft sculpture toys Class: 41 Entertainment services, namely, a television program featuring information in the fields of hobbies, collectibles, trading and auctions | 14.07.99 | |
| 816893 | Class: 38 Telecommunications services, namely the electronic transmission of data and information; paging services | 10.12.99 | |
| 822958 | eBay | 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 | 9.02.00 |
| 822959 | 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 | 9.02.00 | |
| 844247 | Class: 38 Telecommunications services, namely the electronic transmission of data and information | 27.07.00 | |
| 1108982 | YOU CAN GET IT ON EBAY | Class: 35 On-line trading services to facilitate the sale of goods and provision of services by others via a computer 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; advertising and advertisement services | 18.04.06 |
| 1110127 | EBAY ADCONTEXT | Class: 35 Advertising and promotion services and related consulting; preparation of custom or non-custom advertising for businesses for dissemination via the web; dissemination of advertising 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 | 26.04.06 |
| 1113327 | 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 Telecommunications 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 | 12.05.06 | |
| 1113344 | Class: 35 Operating online marketplaces for sellers and buyers of goods and 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 Class: 38 Telecommunications 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 | 12.05.06 |
Discussion
Section 44
Section 44 states:
Identical etc. trade marks
44.(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.
Deceptive similarity is defined in section 10 of the Act as follows:
Definition of deceptively similar
10. 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.
To establish the section 44 ground, the opponent must establish all of the following:
at the priority date
there was a substantially identical or deceptively similar trade mark application or registration
in respect of similar goods, similar services and/or closely related services
in the name of a person other than the applicant.
The opponent nominated each of its registrations listed above in support of this ground.
Both parties cited the well accepted tests for determining substantial identity as discussed in Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 at 414, being the “side by side comparison” test.
Applying this test, it is obvious that neither of the applicant’s device mark nor its UBAY word mark is substantially identical to any of the opponent’s nominated trade marks. Indeed, in applying the test to the word marks UBAY and EBAY alone, even absent any get up, I am satisfied that the aural and visual differences are sufficient to preclude any finding of substantial identity.
There was no significant difference between the parties as to the tests for deceptive similarity. In particular the opponent cited Windeyer J’s comparison in Shell Co of Australia Limited v Esso Standard Oil (Australia) Limited, supra, at 415 between impressions based on recollection of the plaintiff’s mark by an ordinary person and the impressions such persons would get from the defendant’s goods.
The opponent also cited the well known tests propounded in Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, including whether there is a real risk that, because of the use of the opposed mark a significant number of people will be caused to wonder whether the goods/services come from the same trade source.
The opponent submitted that the aural and visual similarity of the competing trade marks, particularly in the context of online marketplaces and a global computer network, would induce the ordinary person to believe that goods and services offered under the applicant’s marks would be those of the opponent.
On the other hand, the applicant contended that there was no real tangible danger or likelihood of confusion amongst a substantial number of consumers. In particular, the impression conveyed by the applicant’s marks is so different that no reasonable consumer would be likely to be deceived or confused.
Counsel for the applicant pointed to the dominant role of the first vowel in the respective trade marks. The opponent’s “e” is apt to convey an online context (as in “email”, “ecommerce”, “ebooks” and so on), particularly having regard to the nature of many of the goods and services covered by the registrations. There is no such impression, it was suggested, conveyed by the applicant’s marks. Rather, the “U” is likely to signify “you”, as in “you the customer”.
Further, submitted counsel for the applicant, the quite distinctive stylizations of the parties’ respective device or fancy word marks would militate against any likelihood of confusion.
Having regard to the appropriate tests and to submissions by the parties, I am not satisfied that the device mark subject to applications 118940 and 1216097 is deceptively similar to any of the opponent’s cited trade marks. While the similarities between the competing word marks were greater, on balance I could not be satisfied that there would be a real tangible danger or likelihood of confusion amongst a substantial number of consumers.
I am not satisfied that the opponent has established this ground of opposition.
Section 60
Section 60 of the Act provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. 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.
To satisfy section 60 the opponent must establish:
priority
reputation acquired in Australia
because of that reputation the use of the applicant’s trade mark would be likely to deceive or cause confusion.
There is no longer a need to establish substantial identity or deceptive similarity to rely upon this ground of opposition, although such findings could be relevant to determining the issue.
The relevant priority dates are 3 July 2007, 6 July 2007 and 19 December 2007. The opponent again relied upon its registered trade marks cited earlier and used in Australia and throughout the world for some time.
There was no dispute that the relevant test for reputation is that propounded in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193 at 234:
But reputation 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 …
In practice, it is commonplace to infer 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.
The opponent submitted that because of the reputation of the opponent’s (registered) trade marks and the aural and visual similarities between them and the opposed marks, deception or confusion would result. The opponent also relied upon a 2004 survey (see Yaghmai 1, Exhibit J) that found 58% of respondents indicated that the would associate a website using the word “bay” as part of its name or website with the opponent.
While counsel for the applicant readily accepted the reputation of the opponent, he submitted that the strength of the opponent’s reputation assisted the applicant rather than the opponent in this case.
The applicant cited the decision of Deputy Registrar Hardie in McDonald’s Corporation v Bowditch (1999) 48 IPR 433, in which the Deputy Registrar found that the reputation of the opponent McDonalds resulted in a high level of recognition of its mark and use, such that consumers would be unlikely to think that the opponent would use a modified or varied version of its mark.
Counsel for the applicant submitted that the survey evidence was irrelevant, because it was conducted in the US rather than Australia. Further, surveys such as this were notoriously unreliable in the absence of detailed explanation of methodology used and underlying supporting material.
I am satisfied that the opponent has established a reputation in its cited marks prior to the relevant priority dates. This reputation would extend to the word mark EBAY as well as the stylized fancy word marks the opponent relies upon. This reputation is particularly in the area of online marketing services; however, it would be true to say the reputation of the opponent extends beyond the boundaries of its core business.
In my opinion, the reputation of the opponent is such that the “brand recognition” of its various marks would make it unlikely that the applicant’s device trade marks would be confused for the opponent’s word or fancy word marks. Although the word marks are very close, and raise a possibility of confusion, on the balance of probabilities I am not satisfied that the use of the applicant’s trade mark would be likely to deceive or cause confusion. In particular, I do think that the brand recognition of “eBay” reduces the likelihood of confusion.
I am not satisfied that this ground of opposition has been established.
Decision
Section 55 of the Act provides:
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.
I find that neither of the grounds of opposition on which the opponent relied has been established.
The trade mark applications may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the applications be subject to that decision.
Costs
The opponent sought its costs. However, since costs usually follow the event, I award costs against the opponent pursuant to the official scale. with costs for the second and third of the three oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591
Jock McDonagh
Hearing Officer
Trade Marks Hearings
21 December 2009
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
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Civil Procedure
Legal Concepts
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Injunction
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Jurisdiction
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Remedies
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Breach
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Damages
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