National Australia Bank Limited v New U Life Corporation - [2024] ATMO 210

TRADE MARKS ACT 1995

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

Re:Opposition by National Australia Bank Limited to registration of trade mark application number 2199764 (class 36) - UWALLET - in the name of New U Life Corporation

Delegate:

Tracey Berger

Representation:

Opponent: David Larish of Counsel, instructed by King & Wood Mallesons

Applicant: Houlihan Intellectual Property Pty Ltd

Decision:

2024 ATMO 210

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pursued under ss 44, 59 and 60 – s 60 established – trade mark refused registration

Background

This decision concerns an opposition by National Australia Bank Limited (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below, filed in the name of New U Life Corporation (‘Applicant’):

Number: 2199764 (‘Application’)

Trade Mark: UWALLET (‘Trade Mark’)

Filing Date: 4 August 2021

Priority Date: 19 July 2021

Specification: Class 36: Processing of electronic payments (‘Applicant’s Services’)

[1] Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Following examination of the Application as required by s 31 and the subsequent publication of acceptance, the Opponent filed a Notice of Intention to Oppose on 21 February 2022 and a Statement of Grounds and Particulars (‘SGP’) on 21 March 2022. The Applicant filed a Notice of Intention to Defend on 18 May 2022.
The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support of the opposition was filed on 22 August 2022 and the Applicant’s evidence in answer was filed on 16 November 2022. No evidence in reply was filed. The parties then entered into a cooling off period.
Following the discontinuance of the cooling off period, the parties were given the opportunity to request a hearing. Both parties elected to be heard via videoconference. Prior to the hearing, the parties filed a written summary of their submissions in accordance with the set timetable. The Opponent’s written submissions were prepared by David Larish and Anya Pouchanski of Counsel, instructed by Bill Ladas and Sarah Goodard of King & Wood Mallesons and the Applicant’s written submissions were prepared by Michael Houlihan. This matter was heard on 29 August 2024 by another delegate of the Registrar of Trade Marks (‘Registrar’). At the hearing David Larish of counsel made submissions on behalf of the Opponent, instructed by Bill Ladas of King & Wood Mallesons, observed by Anya Poukchanski of Counsel and James Robb, Emma Drinkwater and Ashley Medica of King & Wood Mallesons. Michael Houlihan, observed by Dr Victoria Longworth, both of Houlihan Intellectual Property Pty Ltd, made oral submissions at the hearing on the Applicant’s behalf. This matter has subsequently been allocated to me to determine as a delegate of the Registrar. I have decided this matter based upon the video recording of the hearing, the SGP, evidence filed, and the submissions of the parties.

Grounds of opposition, onus and relevant date

In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 58A, 59 and 60. For the purposes of the hearing, the Opponent pressed only the grounds of opposition under ss 44, 59 and 60.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The dates at which the rights of the parties are to be determined is 19 July 2021 being the priority date for the purposes of ss 44 and 60 and filing date of 4 August 2021 for s 59. Nothing turns on the difference between the priority date and filing date. Any reference to the ‘Relevant Date’ is a reference to the date applicable to the ground under discussion.

Evidence

The following evidence was filed in these proceedings:

9. Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Suzana Ristevski, Chief Marketing Officer, Executive Group Marketing, of the Opponent (‘Ristevski’)	22 August 2022	SR-1 to SR-17
Evidence in answer
Vanessa B Pierce, Vice President of Legal and General Counsel of the Applicant (‘Pierce’)	9 November 2022	N/A
Michael James Houlihan, Registered Trade Mark Attorney of Houlihan Intellectual Property Pty Ltd (‘Houlihan’)	16 November 2022	MJH-01 to MJH-02

Opponent’s evidence

Ristevski declares that the Opponent is a top 20 bank globally and one of Australia’s ‘big four’ banks. In 2008, the Opponent established UBank as its direct banking division. The Opponent’s UBank is a digital bank which operates online with no physical bank branches.
The Opponent claims it has used and registered a number of U- formative marks including UBANK, USPEND, USAVER, UHOMELOAN and various composite marks such as and (collectively ‘Opponent’s Marks’). Details of the Opponent’s Australian registrations for the Opponent’s Marks listed in Ristevski and the SGP are set out in Schedule A.[4] The Opponent has also emphasised the element U other than as a prefix in its advertising and other marks such as PeopleLikeU, a spending comparison tool, and in hashtags like #TeamU on social media.
[4] Details of registrations that are no longer on the Register are not included in Schedule A.
Ristevski attests that the Opponent’s Marks are used and promoted in relation to a broad range of goods services including those set out below, a number of which Ristevski claims are highly similar to the Applicant’s Services:
(a) Various technology and digital related goods in class 9, such as: computer programs and equipment used in the provision of banking, financial, insurance, business advisory and/or business consultancy services; encoded and magnetic cards including debit and credit cards; application software and downloadable electronic publications; downloadable software applications (apps); computer software for processing electronic payments including via a mobile computer, mobile phone, smart phone or tablet;
(b) Advertising, marketing and promotional services and business management services in class 35, such as business advisory, consultancy and information services; business surveys, appraisals, inquiries and research; collection, preparation, compilation, storage, processing, retrieval and provision of business information data, statistics and indices; conduct of business studies and preparation of business reports; economic forecasting and analysis for business and/or financial purposes; market analysis, research and monitoring services for business and/or financial purposes; on-line advertising information of banking and financial services; advertising survey services, including telephonic and electronic surveys, many of which are targeted at the financial services market or related markets (as are the Applicant’s Services);
(c) Various banking and financial services in class 36 (including the provision of these services online), namely: insurance services; financial planning, analysis, management and organisation assistance, advice and consultancy; online banking, financial services; banking, financial and insurance services for the wholesale and retail sectors; corporate financial services, institutional financial services; corporate, institutional, wholesale and retail lending and deposit services; electronic funds transfer services; accepting and authorising financial transactions; loan services; credit and debit card services and issuance; financial affairs and monetary affairs; brokerage services; financial analysis; portfolio administration; share trading; share brokerage; managed funds; marginal lending; superannuation; financial information and investment information; advisory services relating to real estate ownership, real estate valuations and real estate investment; provision of digital wallet products and services, which are identical or otherwise highly similar to the Applicant’s Services;
(d) Telecommunications services in class 38, including communication services relating to banking, financial and insurance affairs, providing user access to a global computer network for managed funds, superannuation, share trading, margin lending, portfolio administration, financial information and investment information, mail services, telephone communication services, satellite communication services, data transmission services, remote-controlled screen communication services, computer communication services, computer-aided transmission of message and images, electronic mail and video conference services; and
(e) Various services related to computer software in class 42, such as: providing temporary use of on-line non-downloadable software, including for banking and processing electronic payments which, again, are highly similar to the Applicant’s Services.
(together, the ‘Opponent’s Goods and Services’)
Screenshots of the Opponent’s website at (‘Opponent’s Website’) obtained using the Wayback Machine illustrating the manner of use of the Opponent’s Marks are provided. The Opponent’s Marks are also used in relation to its goods and services on its UBank mobile application (‘app’) and UrHomeProperty property finder and mortgage calculation app. Details of the number of installations of these apps between 1 November 2019 and 31 January 2022 are set out in Ristevski.
The Opponent has partnered with a number of technology companies ‘to optimise’ its offering of the Opponent’s Goods and Services including:
(a) Apple Inc., a multinational technology company with a broad influence in the financial services industry, in around May 2019 in order to facilitate electronic payments using the Opponent’s UBank VISA Debit card with Apple Pay;
(b) MSA National, a mortgage document and settlements services provider with a digital focus, in around 2018 in order to provide a DigiDocs service allowing customers to review and sign mortgage loan documents online;
(c) IBM, an American multinational technology company, in order to provide various IBM Watson powered offerings such as RoboChat in 2017, Australia’s first chatbot to help customers with their home loan applications, and Mia in February 2019 an AI home loan application assistant.
According to Ristevski, the Opponent has ‘been a pioneer’ in digital banking, launching a number of innovative products. In addition to RoboChat and Mia referred to in the preceding paragraph, the Opponent also offers under the Opponent’s Marks:

its UrHome property finder and mortgage calculator platform which ‘adds a financial services flavour to the property search tools offered by market leaders REA Group and Domain’; and
Free2Spend in-app tool which gives customers their daily expenditure in real time, based on their savings goals and spending habits.

The Opponent’s Goods and Services have received various accolades and extracts from articles referring to the Opponent’s digital platforms and products are provided.
Ristevski attests that the Opponent has experienced significant growth in relation to the Opponent’s Goods and Services offered under the Opponent’s Marks. Exhibited to Ristevski are the Opponent’s Annual Review 2019 and its Annual Financial Report 2019 which refers to customers of the Opponent’s UBank increasing 40% over the two years to September 2019 and growth in its home lending at 7 times the system rate over the September 2019 financial year (‘FY’).
Ristevski declares that the Opponent had acquired a substantial reputation in the Opponent’s Marks by the Relevant Date as a result of their use, marketing and promotion including on the Opponent’s Website, social media accounts, industry-specific price comparison websites, events and unsolicited press coverage. Ristevski specifies the Opponent’s advertising expenditure and revenue for the Opponent’s Goods and Services from FY19 to FY21 and provides the number of visits, unique visitors and page views of the Opponent’s Website from 1 April 2018 to 15 January 2020 which are very substantial. Details of followers of the Opponent’s Twitter/X, Facebook, YouTube, LinkedIn and Instagram are included with historical extracts of these social media accounts. Extracts of price comparison sites showing use of the Opponent’s Marks as well as examples of press coverage about UBank are exhibited. In addition, Ristevski includes details and images of IBM’s 2019 Think Summit, attended by 1500 of IBM’s clients and 500 of its business partners, which featured UBank executives as speakers.
The remainder of Ristevski outlines the results of searches into the Applicant and its activities which suggest that the Applicant is focused on dietary supplements and associated multi-level marketing services. Ristevski also comments on the similarity of the Trade Mark and Applicant’s Services to those of the Opponent.

Applicant’s evidence

Pierce declares that the Applicant is a United States Corporation which adopted the Trade Mark after its marketing and sales team conducted a brainstorming session on about 29 March 2021. The Trade Mark was chosen as ‘U’ is the principal component of a number of the Applicant’s other trade marks. The remainder of Pierce is submissions rather than evidence.
Houlihan consists of evidence of the Opponent’s activities well after the Relevant Dates and submissions.

Discussion

Section 60

Section 60 provides:

60 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.

To succeed on this ground, the Opponent must establish a reputation in a trade mark(s) existing in Australia at the Relevant Date. If reputation is established, the Opponent must then show that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.
Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[5] Reputation cannot be assumed and must be established by the Opponent as a matter of fact[6] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers.[7]
[5] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[6] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).
[7] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark, or providing evidence of high volume of sales,[8] advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[9]
[8] Conagra (n 6), [118].
[9] McCormick (n 5), [86].
In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[10]
[10] [2019] FCA 923, [83] (O’Bryan J).
The Opponent claims in its SGP and oral submissions that the Opponent had established a reputation at the Relevant Date in the mark UBank and each of the U- formative marks (particularly USaver and UHomeLoan) in the digital financial field. The Opponent further contends that consumers understand that the Opponent often constructs trade marks consisting of the prefix U in combination with a descriptive term relating to finance/money. Hence given its reputation and because the Trade Mark follows the same conceptual structure as the Opponent’s ‘family’ of U- formative marks, the Opponent submits that consumers will be caused to wonder whether the Trade Mark is related to the Opponent.
The Applicant submits that the Opponent is seeking to claim a de facto monopoly in marks containing the letter U ‘in any form, position, or combination’ for class 36 Services and disputes that the Opponent has an exclusive reputation in U- formative marks as other traders have registered and use such marks in a similar field. In general, the state of the Register is not evidence that a term is common to the trade nor does it provide insight about what is happening in the marketplace.[11] In relation to the registered marks relied on by the Applicant, I note that a number of these trade marks have been removed from the Register, or do not cover financial services or do not have the same construction as the Opponent’s family of marks such as UBS, UGL, UPSTYLE and UNLOCKED. Of the relevant registered marks such as uCash (stylised), uCapital, uLend and ucredit (stylised), there is no evidence that any of these marks are in use. The marks which the evidence shows are in use are UPBANK and UniBank[12] which do not adopt a similar format to the Opponent’s Marks. The fact that the Opponent does not take issue with these marks contradicts the Applicant’s claim that the Opponent is seeking a monopoly in all U- prefix marks and supports the Opponent’s contention that it is only concerned with potential confusion arising from marks that consist of the prefix U in combination with a descriptive term relating to finance or money.
[11] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177, [35] (Wilcox J); British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281, 302 .
[12] Ristevski, Exhibit SR-14 ‘The Best Bank Accounts after the RBA’s Rate Cut’, p 126.
The Applicant also challenges the Opponent’s claim to have a reputation in the Opponent’s Marks on the basis that any such reputation cannot be attributed to the Opponent. In support of this argument, the Applicant points to the fact that UBank operates in competition with and is ‘backed by’ NAB. In my opinion, it is common for businesses to offer competing products or operate competing businesses to capture different segments of a market. Also, it is normal for a business to have different departments or divisions that operate under the control of and report to the business executives. The fact that the Opponent operates UBank as a division rather than a separate legal entity is irrelevant. The Applicant also point to references in some of the press articles exhibited in Ristevski which refer to UBank as a ‘spin-off’[13] or ‘offshoot’[14] of the Opponent or refer to the Opponent as a licensee of UBank.[15] I agree with the Opponent that often journalists imprecisely describe corporate relationships and the Opponent always makes the relationship clear. Moreover, the relevant question for the purposes of s 60 is whether there was a reputation in the Opponent’s Marks at the Relevant Date and not whether that reputation resides with the Opponent or another entity.
[13] Ristevski, Exhibit SR-03, ‘NAB’s UBank targets property buyers with new real estate app’, p 36.
[14] Ristevski, Exhibit SR-02 ‘Two Thirds of NAB Customers Now Digital Only’, p33.
[15] Ristevski, Exhibit SR-14, ‘UBank launches sustainable investments to capture Millenials’, p127.

In addition, the Applicant is critical of the Opponent’s evidence and its claims to a reputation in the Opponent’s Marks for various reasons including that the traffic data to the Opponent’s Website ‘may be caused by overseas visitors and non-human bots’, the 9 million recipients of the Opponent’s Annual Reports may not have actually read the information contained about UBank and that some of the data provided such as the app downloads covers a period to January 2022 after the Relevant Date. I do not find any of these arguments persuasive. Even if only a proportion of the 7 million unique visitors to the Applicant’s website are Australian consumers and a fraction of recipients of the Annual Reports read the document, this is still considerable and most of the period for the app downloads falls before the Relevant Date. Further, evidence after the priority date ‘may cast light upon the true position at an earlier date’.[16]
[16] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864; 41 IPR 505, 509 [Burchett J).
On my assessment of the Opponent’s evidence, the mark UBank had been used and promoted in relation to a broad range of financial and banking service and associated technology products such as application software for over 15 years before the Relevant Date. The annual revenue and advertising expenditure is very substantial. The Applicant was critical of these figures on the basis that they are not separated into the revenue/expenditure attributable to each of the marks. However, the evidence shows that the U- formative marks are often used together with UBank[17] and I accept that it is impractical to separate the figures. It is apparent from the size of the figures that the Opponent’s UBank business has been widely promoted and generated very significant revenue by reference to the Opponent’s UBank mark. Also as a ‘leading digital bank’[18] which is different from traditional banking institutions, the Opponent has received considerable publicity and many Australians have visited the Opponent’s Website.
[17] Ristevski, Exhibit SR-08, p 67.
[18] Ristevski, Exhibit SR-09, 2018 Annual Review, p19.
The Opponent argues that Debonair Trading Internacional Lda v Loreal SA[19] provides instructive reasoning for the present case. In that case, the Opponent relied on its mark SO…? and a family of marks with the format SO…? followed by another word, although each mark relied on is a separate mark for the purposes of s 60.[20] Despite the fact the evidence showed use of only some of the SO..? marks in relation to a limited range of goods, and the sales and advertising figures were not broken down into the individual mark, the Delegate found that a reputation existed in the various SO…? Marks. Moreover, as a result of that reputation, use of the applicant’s mark SO COUTURE for similar goods (not overlapping with those in which the opponent had a reputation) would be likely to deceive or cause confusion because of the ‘the Opponent’s propensity for using many variations on the word ‘SO...?’ followed by an adjective in relation to perfume’ and similar construction of the opposed mark which would cause consumers to perceive the opposed mark as a further addition to the Opponent’s family of So…? marks. I concur with the Opponent that the present situation has similarities.
[19] [2017] ATMO 134 (Hearing Officer H. Wilson).
[20] Qantas Airways Limited v Edwards [2016] FCA 729, [160] (Yates J).
The Applicant contends that the present case mimics the circumstances in Capricorn Society Limited v Richa Koshal (‘’Capricorn’).[21] I believe that decision is distinguishable from the current case. In Capricorn, the Delegate was contemplating whether the Opponent had a family of marks in the context of s 44 (not s 60) and found that of the 34 marks relied on by the Opponent, only 5 marks comprised the prefix CAP- conjoined with another word/s (without containing CAPRICORN) and 2 of those marks had a later priority date. Further, the prefix CAP- was considered to have descriptive relevance in relation to the services in question.
[21] [2020] ATMO 96 (Hearing Officer K. Brown).
I am satisfied on my assessment of the Opponent’s evidence that at the Relevant Date, the mark UBank had acquired a reputation in Australia for digital banking goods and services. Whilst some of the U-formative marks have also been used and promoted to the extent that there is likely to be a degree of recognition by the public that the Opponent often adopts marks comprising the prefix U- in combination with a non-distinctive term relating to money, I am not satisfied that the level of recognition of those individual marks has reached the level of reputation required for s 60.
The existence of reputation does not necessarily mean that confusion resulting from use of the Trade Mark is likely to occur. There must be a nexus between the reputation in the Opponent’s Mark and the likelihood of confusion caused by use of the Trade Mark. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd, Hearing Officer Lyons said:
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.[22]
[22] [2010] ATMO 5, [39].
The Applicant contends that the Trade Mark is not similar to any of the Opponent’s Marks as WALLET is not a financial term and hence the Trade Mark does not adopt the structure of the Opponent’s Marks. I disagree. One of the main purposes of a wallet is to hold money and hence I consider that the Trade Mark adopts a similar structure to the Opponent’s Marks.
I further note that the Applicant’s Services are, in my view, similar or closely related to the Opponent’s Goods and Services. The Opponent’s evidence includes examples of use of UBank and other of the Opponent’s Marks in relation to mobile payments[23] and digital wallets.[24] The Applicant contends that the examples provided by the Opponent relate to the ‘processing of bank payments’ which are different to the ‘processing of electronic wallet payments’. Many of the Applicant’s submissions on ‘processing of electronic wallet payments’ are based on the actual intended use or current mode of operation of the Applicant but the consideration of the likelihood of confusion is concerned with the notional use of the Trade Mark.[25] I am not persuaded that there is any significant difference between the ‘processing of bank payments’ and the ‘processing of electronic wallet payments’, particularly from a consumer perspective. In my opinion, the ability for consumers to make electronic payments using the UBank app and/or a UBank credit card through Apple Pay (or similar) associates the Opponent’s Marks with electronic payments in the mind of consumers.
[23] Ristevski, Exhibit SR-01, pp 21-22, 28.
[24] Ibid, p 24-25.
[25] Registrar of Trade Marks v Woolworths 1999 FCA 1020, [50] (French J).
Despite the Applicant’s contentions, there is no evidence of other traders using U- formative marks in relation to the sorts of goods and services offered by the Opponent or the Applicant’s Services.
The Applicant also argues that there is no evidence of confusion between the Trade Mark and the Opponent’s Marks but there is no evidence that the Applicant has used the Trade Mark. Besides, the absence of evidence of actual confusion does not preclude a finding of likely confusion under s 60.[26]
[26] Mid Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 (Burchett, Sackville and Lehane JJ)
In my opinion, Ristevski shows that the Opponent has a propensity to adopt marks consisting of the prefix U in combination with another word relating to money and banking. Ristevski shows that the UBank mark is often used in a manner that emphasises the letter U such as and . In addition to UBank, the Opponent’s evidence demonstrates use of a number of other U- formative marks such as USAVER, UHomeLoan, USaver Ultra, UBank SMSF and UrHome as well as composite marks. The Opponent’s evidence does not demonstrate use of all of its registered U- formative marks, but I am satisfied that there is sufficient use of a number of the U- formative marks by the Opponent to conclude that consumers seeing the Trade Mark would call to mind the Opponent’s UBank mark and its use of U-formative marks of a similar structure. Through the use and promotion of various U-formative marks by the Opponent and the press, I believe that the Opponent has built a recognition in the minds of consumers between itself and trade marks with the prefix U followed by a term relating to banking or money.
In all the circumstances and given the Opponent’s reputation in UBank, I believe that consumers would be caused to wonder whether the Applicant’s Services offered under the Trade Mark are connected to the Opponent. I am satisfied that there is a real, tangible likelihood of deception or confusion occurring from use of the Trade Mark in relation to the services claimed. I find that the ground of opposition under s 60 has been established by the Opponent on the balance of probabilities.

Decision

Section 55 provides:

55 Decision
(1) Unless subsection (3) applies to the proceedings, 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 Goods 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.

The Opponent has established a ground of opposition under s 60 and as a consequence, I refuse to register the Trade Mark under application number 2199764. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the court’s order or direction.
Both parties requested an award of costs. As costs generally follow the event, I award costs against the Applicant under s 221 in accordance with the applicable amounts in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

29 October 2024

SCHEDULE A – Opponent’s Marks

Number	Trade Mark	Filing Date	Specification
1212792	UBANK	4/12/2007	Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; computer programs used in the provision of banking, financial, insurance, business advisory and/or business consultancy services; computer equipment used in the provision of banking, financial, insurance, business advisory and/or business consultancy services; pre-recorded computer software containing information relating to business advisory, business consultancy, banking, financial and/or insurance services; debit and credit cards, encoded and magnetic cards and parts for encoded and magnetic cards; smart cards; integrated circuit cards; magnetic strips and memory chips; card readers; electronic funds and point of sale terminals; apparatus and systems including computer software, computer hardware, modems and disks Class 16: Paper, cardboard and goods made from these materials, not included in other classes; instructional and teaching material(except apparatus); printed matter including printed publications, books, booklets, magazines, brochures, leaflets, pamphlets, newsletters, periodicals, prospectuses, statements of accounts; stationery products including envelopes, folders, pads, paperweights, pencils, pens, rubber erasers, rulers, writing paper, bags; engraving blocks and printing blocks; letterhead, business cards, cheques, drafts, forms, invoices; promotional materials Class 35: Business advisory, consultancy and information services; business planning, analysis, management and organisation assistance, advice and consultancy; business surveys, appraisals, inquiries and research; collection, preparation, compilation, storage, processing, retrieval and provision of business information data, statistics and indices; conduct of business studies and preparation of business reports; economic forecasting and analysis for business and/or financial purposes; market analysis, research and monitoring services for business and/or financial purposes; advertising, marketing and promotional services; advertising services associated with the provision of corporate, institutional, wholesale and retail services; business information services; radio, television and on-line advertising information of banking and financial services; marketing, merchandising and distribution services (excluding transport); promotion of goods and services; business management and business administration services including, business management and business administration services for the provision, use and promotion of banking and financial services of all kinds; advertising survey services, including telephonic and electronic surveys; electronic commerce services Class 36: Insurance, banking and financial services; financial planning, analysis, management and organisation assistance, advice and consultancy; online banking, financial and insurance services; banking services and financial services provided via a global computer network; banking, financial and insurance services for the wholesale and retail sectors; corporate financial services, institutional financial services; corporate, institutional, wholesale and retail lending and deposit services; electronic funds transfer services; accepting and authorising financial transactions; loan services; credit and debit card services and issuance; financial affairs and monetary affairs; brokerage services; financial analysis; portfolio administration; share trading; share brokerage; managed funds; marginal lending; superannuation; financial information and investment information; online financial affairs; online monetary affairs; online insurance services; online brokerage; online financial analysis; online portfolio administration; online share trading; online share brokerage; online managed funds; online marginal lending; online superannuation; online financial information and online investment information Class 38: Telecommunication services; communication services relating to banking, financial and insurance affairs, providing user access to a global computer network for managed funds, superannuation, share trading, margin lending, portfolio administration, financial information and investment information, mail services, telegram communication services, telephone communication services, telex communication services, facsimile transmission services, satellite communication services, data transmission services, radio communication services, remote-controlled screen communication services, computer communication services, computer-aided transmission of message and images, electronic mail and video conference services Class 41: Entertainment; sporting and cultural activities; providing of training; education; education symposiums, seminars and provision of training and/or information for business planning, analysis, management and/or administration; education, symposiums, seminars and provision of training and/or information for financial planning, analysis, management and/or administration; education symposiums, seminars and provision of training and/or information for retailing services; education, symposiums, seminars and provision of training and/or information for advertising and promotion services; publication of educational, informational and/or training materials (‘Registered class 9, 16, 35, 38 and 41 Services’) Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; advisory services to business relating to the use of computer hardware and software; consultancy services relating to the use of computer hardware and software
1295291	USaver	28/4/2009	Class 36: Banking and financial services, including high interest savings accounts services
1303935	UTRADE	23/6/2009	Class 36: Banking services; financial and insurance services; online brokerage; online financial analysis; online portfolio administration; online share trading; online share brokerage; online managed funds; online marginal lending
1370453	USaver SMSF	6/7/2010	Class 36: Banking and financial services, including high interest saving account services; superannuation, including self managed super funds; online superannuation
1394296	UBANK ANYWHERE	24/11/2010	Class 9: Registered class 9 Goods Class 16: Registered Class 16 Goods Class 35: Registered 35 Services Class 38: Registered 38 Services Class 41: Registered Class 41 Services
1447402	UTouch	8/9/2011	Class 36: Registered class 36 services
1478098	UHomeLoan	23/8/2010	Class 36: Mortgage loan services
1678761	(series)	4/3/2015	Class 9: Computer hardware; computer software; computer applications; application software; magnetically encoded cards including credit cards and debit cards; chip cards and smart cards; electronic funds transfer machines; point of sale terminals; mobile point of sale terminals; electronic card readers for chip cards, smart cards and magnetically encoded cards including credit cards and debit cards; computer software including downloadable computer programs and recorded computer software; computer programs used in the provision of banking, financial, business advisory and/or business consultancy services; computer equipment used in the provision of banking, financial, business advisory and/or business consultancy services; computer software for processing electronic payments including via a mobile computer, mobile phone, smart phone or tablet; authentication software for controlling access to and communications with computers and computer networks; portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks and electronic and mechanical parts and fittings therefore; parts and accessories for the aforementioned goods (‘761 class 9 goods’) Class 35: Business information; business management and administration services; business information services; business, retail and wholesale advisory services; advertising, marketing and promotional services; electronic marketing, advertising and promotional services including via the Internet, video broadcasts, social media and other experimental media; public relations; radio and television advertising; promotion of goods and services; organising of business competitions; collection of business and commercial information; economic forecasting and analysis for business purposes; market research and market surveys on finance related matters; organisation and management of customer loyalty schemes (‘761 class 35 Services’) Class 36: Monetary and financial affairs; banking, finance and insurance services; banking, finance and insurance services via electronic means; electronic money transfer services; provision of finance and loans; share trading; share brokerage; stock brokerage services; services offered by automated bank machines; deposit services; bank, investment and savings account services; bank card services (including credit, debit and travel cards); brokerage including securities, stock and bond brokerage; trading of shares; administration of shares; brokerage of shares; commodity trading; options trading; pension, retirement and superannuation services; international banking services; currency exchange services; safe deposit services; mortgage and superannuation trusteeship; financial sponsorship; information, consultancy, advisory and management services relating to banking, finance, investments, money, superannuation and insurance; bank account information services; financial evaluation services; provision of online financial calculators and tools; provision of financial information via online calculators (‘761 Class 36 Services’)
1742840	UBANK JUST THE BANK YOU NEED	21/12/2015	Class 36: 761 class 36 Services
1752785	16/2/2016	Class 9: 761 class 9 Goods Class 35: 761 class 35 Services Class 36: 761 Class 36 Services
2070915	USAVE	21/2/2020	Class 36: Financial affairs; insurance; real estate affairs; monetary affairs; financial services; brokerage; investment services; banking services; finance and mortgage brokering; mortgage management; providing consumer finance products; advisory services relating to financing and home loans; financial services provided via a global computer network; finance and mortgage broking services provided via a global computer network; online financial information and online investment information; wholesale financial services; corporate financial services, institutional financial services; corporate, institutional, wholesale and retail lending services; loan services; financial analysis; portfolio administration; financial information and investment information; share brokerage; stock brokerage services; brokerage including securities, stock and bond brokerage; trading of shares; administration of shares being financial management; services offered by automated bank machines; bank, investment and savings account services; online financial affairs; online monetary affairs; online financial analysis; online portfolio administration; pension, retirement and superannuation services; financial planning; deposit services; provision of online financial calculators; electronic commerce payment services; mortgage and superannuation trusteeship; currency exchange services; wealth management and protection services; share trading; options trading; commodity trading; international banking services; bank account information services; financial evaluation services; research services relating to banking, finance, investment, management funds and real estate; electronic money transfer services; bank card services; financial and investment analysis and consulting services; information, consultancy and advice in relation to the foregoing (‘915 Services’)
2070916	USPEND	21/2/20	Class 36: 915 Services
2078217	26/3/2020	Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; monetary and financial affairs; banking services; finance services; banking, finance and insurance services via electronic means; electronic money transfer services; provision of finance and loans; share trading; share brokerage; stock brokerage services; services offered by automated bank machines; deposit services; bank, investment and savings account services; bank card services (including credit, debit and travel cards); brokerage including securities, stock and bond brokerage; trading of shares; administration of shares, being financial management; brokerage of shares; commodity trading; options trading; pension, retirement and superannuation services; international banking services; currency exchange services; safe deposit services; mortgage and superannuation trusteeship; financial sponsorship; information, consultancy, advisory and management services relating to banking, finance, investments, money, superannuation and insurance; bank account information services; financial evaluation services; provision of online financial calculators and tools; provision of financial information via online calculators (‘217 class 36 Services’ Class 41: Registered class 41 Services Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software; advisory services to business relating to the use of computer hardware and software; consultancy services relating to the use of computer hardware and software; providing temporary use of on-line non-downloadable software, including for banking and processing electronic payments; providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks; application service provider services; software as a service; database as a service (‘217 Class 42 Services’) Class 45: Security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; security services including security checking and screening services; conducting identity checks on individuals and businesses; identity theft and fraud prevention services; verification of identity; online social networking services; social networking services; providing information, including online, about personal and social services meeting the needs of individuals; providing user authentication services and authentication of personal identification information; information, consultancy and advisory services relating to all the aforesaid services (‘217 Class 45 Services’)
2078218	UBANK	26/3/2020	Class 36: 217 class 36 Services Class 42: 217 Class 42 Services Class 45: 217 Class 45 Services
2078219	26/3/2020	Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; calculators; calculating machines, data processing equipment and computers; portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks and electronic and mechanical parts and fittings therefor; computers, audio and video players, electronic personal organizers, personal digital assistants, computer peripheral devices; USB hardware; computer and memory storage devices, namely, blank flash drives, USB drives, digital USB storage cards and card readers; downloadable electronic publications; downloadable audio, video and audiovisual content provided via computer and communications networks; computer hardware; computer software; computer applications; application software; magnetically encoded cards including credit cards and debit cards; chip cards and smart cards; electronic funds transfer machines; electronic financial transaction apparatus; point of sale terminals; mobile point of sale terminals; automated teller machines (ATMs); electronic card readers for chip cards, smart cards and magnetically encoded cards including credit cards and debit cards; computer software including downloadable computer programs and recorded computer software; computer programs used in the provision of banking, financial, business advisory and/or business consultancy services; computer equipment used in the provision of banking, financial, business advisory and/or business consultancy services; computer software for processing electronic payments including via a mobile computer, mobile phone, smart phone or tablet; authentication software for controlling access to and communications with computers and computer networks; parts and accessories for the aforementioned goods (‘219 class 9 Goods’) Class 35: Advertising, marketing and promotional services; business management; business administration; business information; office functions; retail services; business retail and wholesale marketing advisory services relating to financial products; Internet marketing services including online advertising and directory services; public relations; business development services; business planning, analysis and organisation assistance, advice and consultancy; accountancy; tax preparation; arranging business introductions; business referrals services; business networking services; career counselling (employment advice and information); business surveys, appraisals, inquiries and research; collection, preparation, compilation, processing, retrieval and provision of business information, data, statistics and indices; online advertising; promotional advertising services; radio advertising; television advertising; advertising and promotion services provided via video broadcasts and other experiential media; promotion of goods and services; research of business information; conduct of business studies and preparation of business reports; negotiation and conclusion of commercial transactions for third parties; personnel management; economic forecasting and analysis for business and/or financial purposes; market analysis, research and monitoring services for business and/or financial purposes; promoting the goods and services of others over a global computer network; marketing, merchandising and distribution services (excluding transport); provision of assistance in the operation of franchises; computer assisted business information; business strategy services; electronic commerce services (‘219 class 35 Services’) Class 36: 217 class 36 Services Class 41: Registered class 41 Services Class 42: 217 class 42 Services
2078220	26/3/2020	Class 9: 219 class 9 Goods Class 35: 219 Class 35 Services Class 36: 217 class 36 Services Class 41: Registered class 41 Services Class 42: 217 class 42 Services Class 45: 217 class 45 Services