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-...

This matter concerned an opposition by eBay Inc to an application for an extension of protection for trade mark number 1876271 (International Registration number 1366518), registered in classes 38 and 41, under regulation 17A.33 of the *Trade Marks Regulations 1995* (Cth). The application for extension of protection was made by Studybay. The decision was made by Doherty J in the Federal Court of Australia.

The primary legal issue before the Court was whether the applicant, Studybay, had established that it had a legitimate interest in the trade mark for the purposes of regulation 17A.33(2)(b)(ii) of the *Trade Marks Regulations 1995*. This regulation requires that an applicant for an extension of protection demonstrate a legitimate interest in the trade mark, which Studybay sought to do by relying on its use of the trade mark in relation to its services.

Doherty J reasoned that the evidence filed by Studybay did not establish a legitimate interest in the trade mark. Her Honour found that the evidence did not demonstrate that Studybay was using the trade mark in a way that indicated it had a proprietary right or a genuine intention to use the mark in relation to the services for which protection was sought. The Court applied the principles established in cases concerning the requirement for a legitimate interest in trade mark applications, emphasising the need for evidence demonstrating actual use or a genuine intention to use the mark in a manner that would confer proprietary rights.

The Court ordered that the application for extension of protection be refused.