Opposition by eBay Inc to extension of protection under regulation 17a.33 of the Trade Marks Regulations 1995 of trade mark number 1876271 (International Registration number 1366518) (classes 38 and 41) - Studybay-...

[2019] ATMO 158

TRADE MARKS ACT 1995

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

Re:Opposition by eBay Inc to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 1876271 (International Registration number 1366518) (classes 38 and 41) - Studybay- (stylised font) in the name of Edutec Limited

DELEGATE:

Kate Doherty

REPRESENTATION:

Opponent: eBay Inc

Holder: Edutec Limited

DECISION:

2019 ATMO 158

Trade Marks Act 1995 (Cth) – opposition to extension of protection under

regulation 17A.29 – grounds of opposition under ss 44, 59 and 60 – s 60 established – trade mark protection will not be extended.

Background

1. This opposition is a proceeding on the written record in relation to the following trade mark under the Trade Marks Act 1995 (‘the Act’):

Trade Mark No:	1818373
EUIPO No: Trade Mark:	016814196	(‘Trade Mark’)

Endorsements: Colour claimed: White, blue and light blue

Filing date:                12 October 2017

Holder:  Edutec Limited

Specification of Services: (at time of filing):

Class 35: Academic job placement services.

Class 38: Providing Internet chatrooms and Internet forums; transmission of digital files; sending and receiving of electronic messages; electronic transmission of data and documents via computer terminals and electronic devices.

Class 41: Production of course material; provision of custom writing services; education information; educational services; tutoring; writing of texts.

1. A Notice of Intention to Oppose was filed on 23 January 2018. A Notice of Opposition was filed on 15 March 2018 by eBay Inc (‘The Opponent’). The Statement of Grounds and Particulars (‘SGP’) nominates grounds of opposition under ss 44, 59 and 60.

1. A clear report was issued by the examiner on 14 November 2017. However, a notification from WIPO was received on 6 September 2019 which withdrew Class 35.

Evidence

1. The evidence received from the parties consists of four (4) x declarations:

Item	Party	Evidence Stage	Date	Reference
Declaration of A Leavitt	Opponent	Evidence in Support	11 July 2018	Leavitt One
Declaration of S Carr	Opponent	Evidence in Support	12 July 2018	Carr One
Declaration of A Kuzmina	Holder	Evidence in Answer	19 October 2018	Kuzmina One
Declaration of A Leavitt	Opponent	Evidence in Reply	18 December 2018	Leavitt Two

1. The evidence provided contains various annexures including images, letters, photographs of advertising and merchandising collateral, commercial brand tables, media articles, as well as screenshots of websites, social media accounts and associated analytical engagement dashboards.

1. The Opponent referred to it’s marks registered in Australia, summarised below, and noted that eBay® has some additional 529 trade marks in over 100 jurisdictions around the world. 1

1. The Opponent’s evidence consists of the following marks (‘eBay Marks’):

No. Priority Date Mark Class Reference

1 Leavitt One [16].

781906	12 November 1998	35	eBay 1
781907	12 November 1998	EBAY	35	eBay 2
800093	13 January 1999	EBAY	9, 14, 16, 25, 28, 41	eBay 3
800349	20 January 1999	9, 14, 16, 25, 28, 41	eBay 4
822958	9 February 2000	EBAY	35, 42	eBay 5
822959	9 February 2000	35, 42	eBay 6
844247	27 July 2000	38	eBay 7
1216004	18 December 2007	35	eBay 8
1526475	12 September 2012	9, 14, 16, 25, 28, 35, 36, 38, 41, 42, 45	eBay 9
1592970	22 May 2013	EBAY CONNECTED COMMERCE	9, 35, 36, 42, 45	eBay 10
1301713	29 May 2009	35	eBay 11
1541791	20 February 2013	35	eBay 12

1. Written submissions were received from the Opponent. The Holder did not file written submissions.

Onus and Standard of Proof

1. The relevant standard of proof is the civil standard, or “on the balance of probabilities”.2

1. The Opponent bears the onus of proof in an Opposition Hearing. 3 The opposition will succeed if one or more of the nominated grounds are established.  The relevant date is the international application filing date of 8 June 2017. 4

Grounds of Opposition

Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia

1. By Regulation 17A.34(3), Section 60 of the Act is applicable and 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.

1. Section 60 is discussed in McCormick & Company Inc v McCormick (‘McCormick’) per Kenny J:5

Reputation is “the recognition of the [trade] marks by the public generally”.

2 Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26].

3 Food Channel Network Pty Ltd v Television Food Network GP (2010) FCAFC 58 [32].

4 For s 60, the priority date is the same here as the international filing date.

5 (2000) 51 IPR 102 [81].

Reputation is often proven by a high volume of sales, as well as substantial advertising and promotional expenditures. Direct evidence for consumer appreciation of a mark is often not required.6

1. For this ground to succeed the Opponent must show the eBay Marks were well recognised by the Australian public generally before 12 October 2017, and that the Trade Mark would be likely to cause public confusion with those marks. In ConAgra it was stated that reputation cannot be assumed it must be established as a question of fact: 7

   It is one thing to sell goods, it is quite another to show that they have amassed a reputation which is sufficient to lead consumers into deception or confusion and to satisfy the requirements of s 60. 8

1. Survey data was provided by the Opponent but presents a number of challenges.9 The data collection period extends for just a few days in July 2012. This short time, well before the Trade Mark priority date, may render the results void or sensitive to news articles or saturation advertising. The sample is small (N = 991) for a stated total country population of 66,913 million. The large number of interviewers (n = 242) poses challenges for internal consistency. The additional 2017 Survey provided, has a similar design, number of participants (N = 1040), and number of interviewers (n = 244). 10 Response rates are not reported. Similar results for both surveys would not alleviate deficiencies for any systematic errors in the survey methodologies.

1. All survey data is from a non-English speaking country, namely Germany, differences are not identified for the way the internet is available or accessed, as well as advertising practices or standards. This results in the findings having limited transferability for Australia.

1. I am not persuaded by the Holder’s submission that the survey was designed with leading questions and is therefore not objective due to s 37 of the Evidence Act 1995 (Cth). 11 This decision is not

6 Ibid. [86].

7 ConAgra Inc v McCain Food (Aust) Pty Ltd (1992) 33 FCR 302.

8 Sara Lee Corp v Bali Blue Pty Ltd (2003) 59 IPR 619.

9 Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, [90].

10 Leavitt One, Survey Question Five.

11 Kuzmina One [37].

bound by the rules of evidence, particularly in relation to admissibility, though the principles inform the weight to be attributed to evidence. 12 The initial survey questions were of an open design, the leading questions followed the open questions, and this is a robust methodology for triangulating qualitative survey research data. 13 Furthermore, s 37 (1)(e) allows for a witness to be asked their opinion of hypothetical facts. 14

1. The Holder has done little to controvert the survey evidence. The limitations of the survey data can therefore be minimised prima facie. Though materiality will remain an issue where consumer appreciation is not paramount, or even required due, to the considerations in McCormick. 15

1. I accept the Opponent’s submissions that globally eBay® has 1 billion live listings, over 390 million app downloads, 170 million active buyers in 190 markets and is ranked in the top 10 of global retail brands. 16 I accept that the use of eBay’s marks in connection with online trading services, marketplaces, bulletin boards, and advertising since at least 1999 led to a significant reputation for online auctions and marketplace trading in Australia at the time the Trade Mark was filed.17

1. The Register confirms the Australian trade marks nominated by the Opponent were filed at intervals between three and 15 years prior to the filing date for the Trade Mark. 18 Whether the use of the Trade Mark if protection is extended would be likely to deceive or cause confusion is a more difficult question. A comparison between the Trade Mark and the reputation of the marks owned by the Opponent is required. 19

12 Evidence Act 1995 (Commonwealth), s 4; Commonwealth of Australia Constitution Act, s 71.

13 Kuzmina One [75].

14 Evidence Act 1995 (Commonwealth), s 37(1)(e).

15 McCormick & Company Inc v McCormick (2000) 51 IPR 102 [86].

16 Leavitt One, Interbrand Tables.

17 eBay Inc v Dean William Hawkins [2014] ATMO 54, [23]; eBay Inc v Tradiebay Pty Ltd [2013] ATMO 58, [22]; eBay Inc v Mediabay Marketplace Pte Ltd [2019] ATMO 50 [23]; eBay Inc v Dean William Hawkins [2014] ATMO 54 [22].

18 See table above at [3].

19 Pfizer Products Inc. v. Karam (2006) 70 IPR 599 [607].

1. For s 60 some similarity between the trade marks in question must exist, a mark cannot rely solely on reputation. 20 The marks in this application share the suffix ‘bay’, the overall appearance, and sound are mildly similar though there are a different number of syllables. 21 Although ‘Studybay’ does not contain the letter ‘e’, the pronunciation is ‘stud-e-Bay’. I find that the connotation and commercial impression are moderately similar and compounded where both parties operate marketplace type businesses via direct online channels with domain names incorporating only those trade marks. 22

1. The Holder correctly identifies that many of the marks with ‘Bay’ suffixes which have been disputed by the Opponent in the past were not defended at all.23  The Opponent responds to this by raising an ‘enforcement strategy’ and outlines a process whereby marks containing geographical references are not opposed, or marks relating to goods outside their own core services or goods. 24 The core services of eBay being the operation, support and control of the online marketplace rather than profit from the sales of individual products which are listed on the site by contracts with traders.

1. Though many retailers have online stores, businesses who operate marketplaces carry little or no physical stock and act as a conduit for other traders to make sales. An online auction or marketplace business would ordinarily be monetised by listing fees, processing charges or commissions on sales, whereas an online store generates revenue by direct sales or subscription models. I find that the similarities between the types of businesses and method they are accessed by consumers leads to a low threshold of tolerance for similarity between the marks. eBay is a platform which facilitates ecommerce for a large number and variety of traders.  The level of sophistication of traders using the platform is wide and includes private individuals with single listings, other listings are for established brick and mortar multi-nationals with partnerships for deliveries. 25 I note that both websites utilise the same external online payment provider, namely ‘Paypal’.26

20 Rogers Seller and Myhill Pty. Limited v. Reece Pty. Limited [2010] ATMO 5 [39].

21 Kuzmina One - Fross Zelnick Lehrman & Zissu P.C, p.p. 11.

22 re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

23 Kuzmina One.

24 Leavitt Two [10] to [14].

25 See Leavitt One and Two.

26 Kuzmina One, Studybay User Agreement, cl. 3.2; Leavitt One, Exhibit AL-17; Carr One, Exhibit SLC-3.

1. Often a trader on the eBay platform will have listings on webpages, linked to sub-stores on webpages within the main platform or search results. Further links to external sites can be contained in site banners on all pages. The branding of both parties on their webpages can be seen in the evidence provided and is not prominent. 27 I find on the evidence before me that the aural similarity and identical suffix are enough that when viewed on a computer screen, or print out, a person may be confused that they are in a sub-store of the other store or that the trade marks may be related in some way.28 It is noted that eBay has minimal products or services which use the trademarks outside the online store, and the Holder has presented no evidence at all of any use of the Trade Mark outside an online marketplace. Previous hearing office decisions relating to online marketplaces with the suffix ‘bay’ where eBay has been a party have made similar determinations, including but not limited to: eBay Inc v Tradiebay,29 eBay Inc v Mediabay Marketplace,30 eBay Inc v Dean William Hawkins.31

1. The Macquarie Dictionary definition states:

bay[2] noun

1. b. a recessed space projecting outwards from the line of a wall, as to contain a window.

2. b. the aisle between parallel shelvings as in a library.

I accept the statement by the Holder at Kuzmin One [32] that American universities including Harvard and Cornell use the word ‘studybay’ to describe areas in their libraries that are used for studying.32 I reject the submission that the existence of ‘studybay’ as a distinct foreign word in the USA would overcome the reputation ground for a mark used in a similar channel to a Registered mark within Australia. 33 Even allowing for the specialised market of the Applicant’s services I do not

27 Kuzmina One, Leavitt One.

28 Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd [1979] RPC 410, 423.

29 eBay Inc v Tradiebay Pty Limited [2013] ATMO 58.

30 eBay Inc v Mediabay Marketplace Pte Ltd [2019] ATMO 50.

31 eBay Inc v Dean William Hawkins [2014] ATMO 54.

32 Trade Marks Act 1995 (Cth) s 41.

33 Cantarella Bros v Modena Trading [2014] HCA 48.

accept that the portmanteau has an inherent meaning for either the Australian population or the target audience.

1. The word ‘studybay’ is not listed in the Australian Macquarie Dictionary, even as a colloquialism. I am of the belief that it would be an error for me to be forced into conjecture in relation to whether the word is known or understood by the relevant Australian population. There is no evidence before me to support the assumption that the term is recognised or understood.

1. Kuzmina One states that there is a co-existence during the relevant period of 2017. Evidence asserts that up to 5% of the Holder’s customers were from Australia.34 With 3473 individual Australian IP Addresses.35 It is not clear whether these numbers represent site visitors, or customers but concurrent-use for these limited numbers is not persuasive. There is also no evidence of actual confusion.

1. While eBay are not found to enjoy a monopoly for words ending in the suffix ‘bay’, even for marketplace type online businesses, the mildly similar terms for highly similar businesses lead me to believe there is a reasonable possibility of confusion on these facts.

1. I find the ground of opposition under s 60 is established.

Decision

1. The Opponent has established a ground of opposition. The extension of protection for Trade Mark number 1876271 will not proceed.

1. The International Bureau of the Registrar will be notified of this decision.

1. The parties may appeal this decision to the Federal Court in accordance with s 56 of the Act. If the Registrar has been served with notice of appeal, I direct that the refusal to extend the protection of the Trade Mark will be stayed until the appeal has been decided or discontinued.

34 Kuzmina One [10].

35 Kuzmina One [11].

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Holder under s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Kate Doherty Hearing Officer

Oppositions and Hearings Trade Marks and Designs 7 November 2019