Opposition by National Australia Bank Limited to registration of trade mark application number 2364062 (classes 35 & 42) – youpay (fig) - in the name of YouPay Pty Ltd

[2025] ATMO 192

2364062

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 2364062 (classes 35 & 42) – youpay (fig) - in the name of YouPay Pty Ltd

Delegate:

Tracey Berger

Representation:

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

Applicant: Michael Fredericks of McInnes Wilson Lawyers

Decision:

2025 ATMO 192

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44/reg 4.15A, 59 and 60 considered – s 59 established for some services – no other grounds established – opportunity to amend – application amended - trade mark to proceed to registration for amended services

Background

1. 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 the subject of the application filed in the name of YouPay Pty Ltd (‘Applicant’) for the goods and services shown:

[1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Number:

2364062 (‘Application’)

Trade Mark:

(‘Trade Mark’)

Filing Date:

14 June 2023 (‘Relevant Date’)

Services:

Class 9: Cards bearing magnetic or encoded data for input; Cards carrying magnetically, optically or electronically recorded or encoded information; Cards for use as charge cards (encoded or magnetic); Encoded cards for use in point of sale transactions; Encoded gift cards; Encoded gift vouchers; Magnetic payment cards; Magnetically encoded gift cards; Tags carrying magnetically, optically, or electronically recorded or encoded information; Value cards (magnetic)

Class 35: Administrative processing of purchase orders; Business data analysis services; Business intermediary services relating to the commercialising of goods; Commercial intermediation services; Computerised compilation of customer indexes; Computerised compilation of order lists; Computerised data verification; Consumer market information services; Consumer profiling for commercial or marketing purposes; Data collection (for others); Data management; Data processing for businesses; Data processing verification; Dissemination of commercial information; Electronic data processing; Invoicing; Market research data collection services; Online data processing services; Online retail services; Preparation of invoices; Providing commercial and business contact information; Provision of an online marketplace for buyers and sellers of goods and services; Purchase order services for others; Registry services (administration services being recording and maintaining lists and information for others); Retail services featuring telecommunications services of others; The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods

Class 42: Computerised user authentication services in e-commerce transactions; Software as a service (SaaS); Temporary use of online non-downloadable software; User authentication services using technology for e-commerce transactions

2.    The Application was examined as required under s 33 and was advertised as accepted for possible registration on 15 November 2023.  On 15 January 2024, the Opponent filed a Notice of Intention to Oppose followed on 14 February 2024 by a Statement of Grounds and Particulars (‘SGP’).  The Applicant filed a Notice of Intention to Defend the opposition on 19 March 2024.

3. The parties then had the opportunity to file evidence in accordance with the Regulations. The following evidence was filed:

4.     Declarant and Position	Date	Exhibits/Annexures
Evidence in Support
Andrew Morrison, Chief Product and Growth Officer at the Opponent (‘Morrison’)	25 June 2024	AM-1 to AM-15
Evidence in Answer
Matthew Holme, Chief Executive Officer and founder of the Applicant (‘Holme’)	17 November 2023	MH-01 to MH-05
Evidence in Reply
None

5.     Once the time for filing evidence had ended, both parties requested an oral hearing.  Prior to the hearing, each party filed a written summary of its submissions.  The matter was scheduled for hearing on 23 June 2024 before me as a delegate of the Registrar of Trade Marks.  Shortly before the hearing, the Applicant requested substantial amendments to the specification of the Application (‘Amendment’).  The Amendment has been made and the Application now covers:

Class 35: Business intermediary services relating to the commercialising of goods; Commercial intermediation services; Online retail services; Provision of an online marketplace for buyers and sellers of goods and services; The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods

Class 42: Computerised user authentication services in e-commerce transactions; User authentication services using technology for e-commerce transactions

(‘Applicant’s Services’)

6.     At the hearing on 23 June 2024, David Larish of Counsel, instructed by Bill Ladas, James Robb, and Ashley Medica of King & Wood Mallesons, represented the Opponent. Michael Fredericks of McInnes Wilson Lawyers represented the Applicant. The Opponent requested the hearing be rescheduled to allow time to focus its submissions on the Applicant’s Services and sought permission to file further evidence arguing that the Opponent’s evidence would have been different if the Amendment had been made earlier. The Opponent also requested costs for the opposition to date due to the late Amendment. The Applicant did not object to the deferral but argued that costs should be based on the outcome of the substantive matter. I agreed to reschedule the hearing and reserved my decision on the Opponent’s request to file further evidence and on the issue of costs. I later informed the parties that no further evidence would be permitted but allowed supplementary submissions focused on the amended Application. I reserved my decision on costs until the substantive matter was determined. A new hearing was scheduled for 11 August 2025, and both parties filed supplementary written submissions before the hearing.

7. I heard this matter on 11 August 2025 with the parties represented as outlined in [6]. Any reference to the hearing in this matter is a reference to the hearing on 11 August 2025 unless otherwise indicated. I make my decision based on the aforementioned materials and submissions of the parties.

Grounds, onus and Relevant Date

1. The Opponent’s SGP nominates grounds of opposition under ss 42(b), 44, 58A, 59, 60 and 62A.  At the hearing, the Opponent only pressed the grounds of opposition under ss 44, 59 and 60.    

2. 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 on the balance of probabilities.[3]  The rights of the parties are to be determined at the Relevant Date being both the filing date and priority date of the application. 

   Summary of the evidence

   Opponent’s evidence

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   and Edelman JJ).

   10.     Morrison 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 business.  The Opponent’s UBank is a digital bank with no physical bank branches.

   11.     In addition to UBank, the Opponent is the owner of a number of trade marks with the prefix U which are the subject of the registrations detailed in Annexure A of this decision (‘Opponent’s Marks’). 

   12.     Morrison declares that the Opponent has used the Opponent’s Marks in relation to a wide range of goods and services including those set out below, many of which the Opponent claims are the same or similar to the Applicant’s Services:

   a)   Various technology and digital related goods in class 9, such as 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;

   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 2 survey services, including telephonic and electronic surveys; and

   c)   Various computer software services in class 42, such as 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 (SaaS); database as a service.

   (‘Opponent’s Goods and Services’)

   13.     Morrison details the Opponent’s use and promotion of the Opponent’s Marks and in particular, notes the significant growth experienced.  In the two years to September 2019, the Opponent’s customer base increased 40% and grew home lending 7 times system rate over the September 2019 financial year.  Between 1 November 2019 and 31 December 2022, there were over 1 million downloads of the Opponent’s UBank mobile banking application.  Morrison confidentially provides the Opponent’s revenue generated from the Opponent’s Marks and advertising expenditure for financial years 2019 to 2023 (inclusive) which is very substantial. 

   14.     The Opponent has partnered with well-known companies such as IBM, Google and Amazon to develop new technologies for its banking services.  Morrison also details the awards it has received, visits to its website, third party media articles about UBank, its social media and provides examples of the Opponent’s Marks in use.  This evidence will be discussed further when relevant to the claimed grounds of opposition.

   Applicant’s evidence

   15.     Holme describes the Applicant as a ‘scale-up digital gifting platform and digital marketplace business’ established in 2021.  Holme declares that the primary purpose of the Applicant’s business operated under the Trade Mark is to enable people to gift goods and services to friends, family, celebrities and content creators by sharing their shopping carts with others who pay for the goods/services in the cart (‘YouPay Platform’).  Holme attests that the Trade Mark was chosen because the term ‘YouPay’ is descriptive of the nature of the business.  The Applicant has partnered with various ecommerce businesses ‘on the YouPay marketplace’ to provide its services including Culture Kings, City Beach, Woolworths, Kmart, UberEats and BigW.    

   16.     The YouPay Platform was launched in December 2021 with pre- and post-launch public relations campaigns.  The YouPay Platform is also promoted by the Applicant’s strategic partners supported by ‘modest’ advertising expenditure by the Applicant.  Holme provides the approximate advertising and marketing expenditure for financial years 2021 to 2024 (inclusive) and exhibits articles about the YouPay Platform and examples of advertisements.

   17.     Holme declares that since December 2021, the Applicant has operated a website at (‘Applicant’s Website’) which promotes and explains the YouPay Platform, and its retail partnerships.  Extracts from the Applicant’s Website from 2021, 2022 and 2024 are provided illustrating use of the Trade Mark. 

   18.     The remainder of Holme constitutes submissions which will be addressed as necessary later in this decision.  Also, I note that the Applicant’s submissions (written and oral) refer to various matters not in evidence and I have not had regard to those matters.

   Discussion

   Section 59

   19.     Section 59 provides:

   Section 59 - Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a) to use, or authorise the use of, the trade mark in Australia, or

   (b) to assign the trade mark to a body corporate for use by the body Corporate in Australia;

   in relation to the goods and/or services specified in the application.

   20.     Justice Jacobsen considered the nature of the intention required by s 59 in Health World Ltd v Shin Sun Australia Pty Ltd stating:

   In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[4]

   [4] [2008] FCA 100; [2008] 75 IPR 478, [160].

   21.     The relevant date for assessing an applicant’s intention is the filing date of the application however, an applicant’s actions after the filing date may be relevant in drawing an adverse inference about the intention to use at the filing date.[5]

   [5] Food Channel (n2) [74].

   22.     It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[6]  The presumption arising from filing may be challenged by ‘slight evidence’ from the opponent that establishes the contrary[7], thereby shifting the onus from the opponent onto the applicant and requiring evidence from the applicant which demonstrates the intention to use the trade mark.  Where an applicant for registration has been put on notice that its intention to use the mark is in issue, and it has not responded to the opponent’s evidence, a finding of lack of intention may be made.[8]

   [6] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391, 401 (Fullager J).

   [7] CFX Funds Management Pty Ltd v McMahon (2016) 121 IPR 509, [24] (Delegate M. Kirov).

   [8] Health World Ltd [v Shin-Sun Australia Pty Ltd] [2008] FCA 100, [162] (Jacobson J).

   23.     In its SGP, the Opponent particularised this ground as follows:

   Registration should be refused under section 59 of the Act.

   The issue of intended use under section 59 is to be determined on a global basis, based on the evidence as a whole (Dodds-Streeton J in Suyen Corporation v Americana International Limited (2010) 187 FCR 169). The relevant intention under section 59 must exist at the filing date of the Application (Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74].)

   When the opponent makes out a prima facie case of lack of intention to use the mark, the evidentiary onus shifts to the applicant (Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [162]-[164]). A prima facie case can be made out based on ‘slight evidence’ (CFX Funds Management Pty Ltd v McMahon [2016] ATMO 52, [24] – [27], and authorities cited therein). Indeed, for the purposes of a SGP, the particularisation of this ground must necessarily be based on inferences and presumption.

   Under section 59, it is the applicant who is best placed to know its own business and show evidence of intent when it is properly challenged (Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18).

   Where the applicant has been put on notice that a lack of intention to use is an issue in the proceeding and chooses not to file evidence, it is open to draw an inference against the applicant as to a lack of intention to use (Health World at [162]; CFX at [24]; Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 at [118]; Southcorp Brands Pty Ltd v CAN Industries Pty Ltd [2014] ATMO 27 at [17] – [18]).

   As at the Priority Date, based on desk research, the Applicant was not using the applied-for mark in respect of some or all of the Opposed Goods and Services in Australia and there are no obvious signs that it holds any sufficiently definite intention to do so.

   The circumstances are such as to shift the onus to the Applicant to demonstrate that it holds, and held at the Priority Date, a sufficiently definite intention to use the applied-for mark in relation to the Opposed Goods and Services in Australia.

   24.     In Morrison, the Opponent states that he conducted research into the Applicant which revealed the Applicant appears to offer a platform which allows users to share online shopping carts for gifting purposes via the Applicant’s Website.  Morrison declares that based on this research, there is no evidence that the Applicant was using or intended to use the Trade Mark in respect of all of the Applicant’s goods and services at the Relevant Date.

   25.      In its supplementary submissions, the Opponent notes that:

   Where the specification of goods and services in an application extends well beyond the goods or services in respect of which the applicant has previously used the mark, and the applicant has come nowhere near to launching the mark in relation to such goods or services, that is indicative of an approach to registration that is not aligned with genuine intention, but rather to a desire to cover a field beyond the range of expected or intended use. Such an approach diminishes the benefit of any imputation arising from the fact of registration itself in the sense contemplated in Aston.[9]

   [9] Dickey’s Barbecue Pit Inc V Lion Global Pty Ltd [2024] ATMO 68, [25] (Delegate R. Wilson)

   26.     The Opponent contends that the Applicant’s only interest in using the Trade Mark is for a gifting platform and that throughout its evidence, the Applicant’s offering is described as a gifting platform that enables others to pay for a person’s online purchases.  The Opponent says that none of the items in the Applicant’s Services cover the YouPay Platform and the Applicant has not provided any evidence of use of the Trade Mark for the Applicant’s Services.

   27.     At the hearing, the Opponent also submitted that whilst the Applicant may have had an intention to use the Trade Mark at the Relevant Date for some goods and services, that intention did not extend to the Applicant’s Services including because the Applicant’s business does not involve the provision of any of the Applicant’s Services.  Moreover, the Opponent argues, the Applicant acknowledged it lacked the requisite intention to use the Trade Mark when making the Amendment.  The Opponent submits that when making the Amendment request, the Applicant’s attorney made the following ‘statement of intent’[10] (‘Amendment Statement’) which calls into question the Applicant’s intention to use the Trade Mark with respect to the Applicant’s Services:

   The reason for the requested amendment to the Applied for Mark application as it does not provide, and does not intend to provide, the goods and services that it has requested be removed, noting, such amendment would not have the effect of extending the Applicant’s rights (as the only amendments requested are deletions of classes of goods/services and descriptors from the original application).

   [10] Bauer Consumer Media Ltd v Evergreen Television Pty Ltd (2019) 367 ALR 393, [247] (Greenwood, Rangiah and Burley JJ).

   28.     The Applicant argues that it made a commercial decision not to pursue the Application for the goods and services it did not currently provide and ‘would abandon its intention to provide’ those goods and services which were deleted from the Application.  It is the Applicant’s contention that the Applicant’s Services are consistent with the services provided by the Applicant including the YouPay Platform. 

   29.     The Applicant has clearly been put on notice that a lack of intention to use was an issue in these proceedings as the Opponent has asserted this point both in the SGP and in Morrison.  I consider that the Opponent has cast sufficient doubt on the Applicant’s intention that the Applicant should answer the allegation of lack of intent.  Nevertheless, Holme does not assert that the Applicant had the requisite intention but instead relies on its use of the Trade Mark.  Whilst the Amendment Statement is open to interpretation, I consider that on balance, it is not an admission that the Applicant lacked the necessary intention to use the Trade Mark at the Relevant Date for all of the claimed goods and services but rather was a statement of the Applicant’s intentions at the time of the Amendment.

   30.     The Applicant’s reliance on its use of the Trade Mark is problematic due to the lack of clarity in its evidence regarding the nature of its business. While Holme frequently describes its services as a ‘gifting platform’ or a ‘gifting digital marketplace’ where others can pay for a consumer’s goods and services, it does not explain the process.  Exhibit MH-05 consists of various media articles, most of which refer to the Applicant’s business as a payment sharing technology.  These articles generally indicate that the YouPay Platform is integrated into the merchant’s site so customers shop as usual on a retailer’s site, select YouPay as the payment option and create a shareable link to send to others who pay for the items.  However, a later article after the Relevant Date,[11] mentions YouPay allowing consumers to create a wishlist which ‘is the new shopping cart where that (sic) keep all the things they want to buy from the various brands they love’ and then share that wishlist with others to pay for the items. Exhibit MH-04[12], also after the Relevant Date, indicates that consumers can create a wishlist on the YouPay Website.[13]  Whilst the Applicant claims in its submissions that the YouPay Website ‘displays the brands of merchant companies and provides and connects customers with these retail merchant companies’, this is not readily apparent from Holme.  The YouPay Website features some of the retailers with whom the Applicant has a relationship[14] but the evidence does not illustrate whether this is simply promotion of its partners or if it is possible to ‘connect’ to those retailers’ sites either by clicking on the featured retailer or through the YouPay Platform by some other means.  On balance, on my assessment of the totality of the Applicant’s evidence, I am satisfied that the Applicant has consolidated a number of retailers on its YouPay Platform whereby users can access the online retail sites of third parties to create a wishlist for other persons can pay for the selected items. 

   [11] Q&A with YouPay Found and CEO Matt Holme, Power Retail, 11 October 2023.

   [12] Holme has used the exhibit cover sheets from Morrison and hence the cover sheet for this exhibit erroneously refers to this exhibit as AM-04 but it is referred to in the body of Holme as Exhibit MH-04. When referring to an exhibit to Holme in this decision, I have used the reference in the body of the declaration and not the exhibit cover sheet.

   [13] Holme, p19.

   [14] Holme, Exhibit MH-02 and MH-03.

   31.     Having deciphered the services that the Applicant actually provides, I must now determine whether based on the actual use of the Trade Mark for the YouPay Platform, on the balance of probabilities, the Applicant had an intention to use the Trade Mark for the Applicant’s Services.  This is a different question to whether the Applicant has actually used the Trade Mark for all of the Applicant’s Services.  Further, as Burley J explained in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd,[15] fine distinctions should not be drawn between actual use or an intention to use and ‘some latitude is to be permitted.’

   [15] [2020] FCA 1808, [146].

   32.     In my view, the YouPay Platform is a specific type of online marketplace but the services provided by way of the YouPay Platform could conceivably be described as services falling within the broad descriptions of the claimed Class 35 services or involve the provision of services which are closely related.  Further, the provision of specific services falling within the broader terms of the Applicant’s Services could indicate an intention to use the YouPay Platform involving the bringing together of various retailers which can be accessed from a single location, namely the YouPay Website, and from this online marketplace consumers can conveniently purchase goods and services.  Whether this is because the goods and services are offered on the YouPay Website itself (in a manner similar to eBay) or by clicking through to the retailers’ sites, is not material.  I am satisfied that based on this use, the Applicant had an intention to use the Trade Mark for ‘Online retail services; Provision of an online marketplace for buyers and sellers of goods and services; The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods’.

   33.     In relation to the item ‘business intermediary services relating to the commercialising of goods’, the parties discussed whether commercialising goods involves only introducing new products to the market.  In my opinion, commercialising goods is not limited to new products but includes various activities such as marketing, sales, and distribution of goods to generate profit.  In providing an online platform for consumers to access third-party retail sites and create a wishlist, the Applicant can be considered to be acting as a business intermediary, facilitating the commercialisation of goods by connecting consumers with retailers and enabling them to curate and manage their desired products.  Similar reasoning applies to the broad term ‘commercial intermediation services’. 

   34.     Hence, on the balance of probabilities, I am satisfied that the use of the Trade Mark established by the Applicant permits the inference that the Applicant had the requisite intention to use the Trade Mark for all of the Class 35 services of the amended Application.

   35.     In relation to the class 42 services, the Applicant has not asserted an intention to use the Trade Mark for those Services.  Furthermore, the Applicant’s evidence does not demonstrate that the Applicant offers such services.     Whilst some authentication of a shopper or payer may occur on the YouPay Platform this may be ancillary to the services of the platform itself.  In the absence of evidence about the Applicant’s intentions to use the Trade Mark for the class 42 services, I am not satisfied that the Applicant’s evidence demonstrates any use or intention to use the Trade Mark for:

   Class 42: Computerised user authentication services in e-commerce transactions; User authentication services using technology for e-commerce transactions

   (‘Unused Services’)

   36. Therefore, the s 59 ground of opposition is established for the Unused Services. Accordingly, I move on to consider whether the other grounds of opposition are established with respect to the Used Services.

   Section 60

1. The provisions of s 60 are reproduced below:

   Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:          For priority date see section 12.

2. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

   Reputation

   39.     Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[16]   It is the reputation in the mark(s) relied upon by the Opponent that must  give rise to a likelihood of deception of confusion.[17]  

   [16] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [17] Ibid [81]-[82].

   40.     Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[18]   Furthermore, it is necessary to establish a reputation in each of the marks on which the Opponent relies.[19]  

   [18] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] 33 FCR 302, [1992] FCA 159, [77] (Lockhart J).

   [19] Qantas Airways Ltd v Edwards [2016] FCA 729; (2016) 338 ALR 134, [160] (Yates J).

   41.     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,[20]  or providing evidence of high volume of sales, advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[21]  

   [20] Ibid [118].

   [21] McCormick (n 16) [86].

   42.     The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.   What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.   

3. Both parties noted my finding in National Australia Bank Limited v New U  Life Corporation (‘New U Life’),[22] an opposition by the Opponent to registration of UWallet, that the Opponent’s mark UBank had acquired a reputation in Australia for digital banking goods and services.  Morrison contains substantially the same evidence as that filed by the Opponent in New U Life and hence, the Opponent argues that I should make a similar finding in this proceeding.  The Applicant concedes that there was a reputation in the Opponent’s Marks being marks with the prefix ‘U-‘ followed by a term relating to banking and banking/money products but argues that this reputation does not extend beyond banking and banking derivative products nor to marks having the phonetically equivalent prefix ‘YOU-‘. 

   [22] [2024] ATMO 210 (Delegate T. Berger).

4. I am satisfied that the mark UBank had acquired a reputation for banking products and services (‘UBank Goods and Services’).  Without more detail about the nature and extent of use of the Opponent’s other individual ‘U-‘ prefix marks, I am not satisfied that these other marks had acquired a reputation in Australia at the Relevant Date. 

   Likelihood of deception or confusion

   45.     I must now determine whether as a result of the reputation in UBank, use of the Trade Mark is likely to deceive or cause confusion under s 60(b).

   46.     The threshold for confusion is not high, although a mere possibility of confusion is not enough.[23] There must be a real and tangible danger of confusion or deception. It is enough if the ordinary person entertains a reasonable doubt.[24]  Consumers need not think that the respective marks are the same and any confusion does not necessarily need to persist to the point of purchase.  It is sufficient if consumers would have cause to wonder if the goods provided under the Trade Mark are being provided by the same person as the owner of the mark in which the reputation has been established.[25]

   [23] Australian Postal Corporationv Digital Post Australia [2013] FCAFC 153 [70] (North, Middleton and Barker JJ).

   [24] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 594, 595 (Dixon CJ, McTiernan J, Webb J, Fullagar J, Taylor J); Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [76] (Moore, Sackville and Emmett JJ) (‘Crazy Ron’s’).

   [25] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (‘Woolworths’); Southern Cross (n 23), 594.

   47.     In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi, the Registrar’s delegate observed:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[26]

   [26] [2012] ATMO 124, [40] (Hearing Officer I. Thompson).

5. The Opponent argues that the Trade Mark is confusingly similar to its UBank mark due to their similar structure and components.  Both marks consist of two parts: ‘U/YOU’ which sound identical, followed by a descriptive term relating to finance or money.  The Opponent contends that the different spelling of the prefixes does not dispel the aural and conceptual similarities of the marks and notes a number of decisions in support of this contention.[27]  Further, given the reputation in UBank and aural similarities, consumers are likely to wonder if the Trade Mark it is a brand variation of UBank.  The Opponent says this is particularly so given that the Opponent has a propensity to use U- formative marks and the essential element YOUPAY in the Trade Mark follows the same aural and conceptual structure as the Opponent’s family of marks.

   [27] See e.g., Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 281 ALR 544 (SOLAHART and SOLARHUT), [40] (‘Perram J); Vivo International Corporation v Tivo (2012) 99 IPR 1 at [96], [97], [159] (TIVO and VIVO), upheld on appeal; Crazy Ron’s (n 24) (CRAZY RON’S and CRAZY JOHN’S); Berlei Hestia Industries v Bali Co (1973) 129 CLR 353 (BERLEI and BALI BRA); Pfizer at [42] (VIAGRA and HERBAGRA); Hills Industries v Bitek (2011) 90 IPR 337 (DIGITEK and DGTEC); Wingate Marketing v Levi Strauss & Co (1994) 49 FCR 89 (‘LEVI’S’ and ‘REVISE’); IN-N-OUT Burgers v Hashtag Burgers (2020) 150 IPR 73 (‘DOWN-N-OUT’ and ‘IN-N-OUT’), especially at [153]-[160], upheld on appeal: (2020) 385 ALR 514).

6. In relation to the similarity of the banking products and services in which the UBank reputation resides and the Used Services, the Opponent contends that there is a nexus in that the provision of online retail and marketplace services are ‘based on a payments infrastructure provided and facilitated by banks including the Opponent, by way both of the payment for goods through a card, credit or electronic transfer provided by the Opponent and of the acceptance of payment for goods through merchant channels, also provided by the Opponent’.  Further, the Opponent says that the provision of an online marketplace and bringing together of goods and services is what happens when consumers go to spend award points on a bank’s website and further, the provision of an online marketplace is not limited to physical goods as many digital banks provide access to third party services such as insurance and investment products.

7. Although the Applicant acknowledges the existence of a reputation in the Opponent’s Marks being marks with the prefix ‘U-‘ followed by a term relating to banking and/or money, the Applicant argues that this reputation does not extend beyond banking and banking derivative products nor to marks having the phonetically equivalent prefix ‘YOU-‘.  Furthermore, the Applicant argues that there is no nexus between the Applicant’s Services and the UBank Goods and Services.   In the Applicant’s submission, the Applicant does not provide any payment processing products or services but rather like other e-commerce retail marketplaces it incorporates third party payment processing services.  In the Applicant’s submission this differentiates the Used Services from the UBank Goods and Services.  Also, the Applicant says, the respective goods/services are offered through different trade channels.

8. Although I have not found that the Opponent’s Marks (other than UBank) have the requisite reputation,  I acknowledge that the Opponent’s use of ‘U-‘ prefix marks combined with a descriptive term relating to banking or money could increase the likelihood of confusion if another trader was to adopt a similar mark with the same format (ie. U- prefix + descriptive term) for similar goods or services.  I agree that the respective prefixes of the Trade Mark and UBank are aurally identical and that the Trade Mark consists of the word YOU in combination with ‘PAY’, which is the sort of term that the Opponent could be expected to adopt in its business.  However, the mark in question here is not UPAY but rather youpay & device.  Visually, the Trade Mark is quite different from UBank and the Opponent’s other marks.  In the context of the Used Services, the visual appearance of the respective marks is more important than the aural pronunciation, as consumers are more likely to view the Trade Mark, for example, when visiting an online marketplace.  Although some aural uses of the Trade Mark may occur, this is likely to be in the context of the Used Services and in my opinion, consumers are unlikely to assume that those services will be offered by a financial institution such as the Opponent.  While the Used Services necessarily involve consumers making payment for the goods and services purchased, this is true of all goods and services offered for sale and does not create a sufficient nexus.  I consider that even if consumers were on a YouPay online marketplace and when checking out their goods/services, were offered the opportunity to pay with a UBank credit card or other digital payment method, given the overall differences in the marks, I do not consider that consumers would consider there to be any connection between the provider of the marketplace and the payment transaction provider.  Nor do I think it is probable that consumers would visit the Applicant’s Website when seeking to spend reward points earned with the Opponent.

9. For the above reasons, I am not satisfied that use of the Trade Mark for the Used Services is likely to deceive or cause confusion and the s 60 ground is unsuccessful.   

   Section 44

   53.     Section 44 provides:

   44  Identical etc. trade marks

   …

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   54.     This ground of opposition will be established if a trade mark(s) relied on by the Opponent meets the following requirements:

   ·is in the name of a person other than the Applicant (‘first requirement’);

   ·has a priority date which is earlier than the Relevant Date (‘second requirement’);

   ·covers goods and/or services which are either similar and/or closely related to the Applicant’s Services (‘third requirement’); and

   ·is substantially identical with, or deceptively similar to, the Trade Mark (‘fourth requirement’).

   55.     In its SGP, the Opponent nominates the Opponent’s Marks, which satisfy the first and second requirements in that these marks are in the name of a person other than the Applicant and each has an earlier priority date than the Relevant Date.

   56.     It is convenient to consider next the fourth requirement namely whether the Trade Mark is substantially identical or deceptively similar to any of the Opponent’s Marks. The Opponent does not claim that any of their marks are substantially identical to the Trade Mark, and it is clear from a side-by-side comparison that there are significant differences. Therefore, I must determine if the Trade Mark is deceptively similar to any of the Opponent’s Marks. I will start by comparing the Trade Mark with the mark UBank. Given that each of the Opponent’s Marks has a similar structure (with some incorporating a device element), if the Trade Mark is not deceptively similar to UBank, it follows that it will not be deceptively similar to any of the Opponent’s other marks.   

   57.     Section 10 provides that ‘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’.

   58.     In Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J made the following comments with respect to deceptive similarity:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[28]

   [28] [1963] HCA 66, [13].

   59.     The respective trade marks must be compared as wholes,[29]having regard to essential or distinguishing features,[30] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[31]What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and each of the Opponent’s Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[32]

   [29] Woolworths(n 25), [50]. See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

   [30] Crazy Ron’s (n 24) [77]-[88].

   [31] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).

   [32] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Delegate J. Spence).

   60.     The Opponent argues that the distinctive element and essential feature of each of the Opponent’s Marks is the prefix ‘U-‘ as each of the other terms in the marks is a ‘bland descriptive term’.[33]  This construction is similar in the Trade Mark whereby the prefix ‘YOU-‘, which is phonetically equivalent to that of the Opponent’s Marks, is followed by the ‘bland descriptive term’ PAY’.

   [33] Edwards v Liquid Engineering 2003 Pty Ltd (2008) 77 IPR 115, [23] (Gordon J).

   61.     The Applicant submits that the Trade Mark is not deceptively similar to any of the Opponent’s Marks and refers in support of this position to Gain Capital UK Limited v Citigroup Inc (No 4).[34]  In this case, the mark CITYINDEX (fig) was found not to be deceptively similar to Citigroup’s ‘CITI-’ prefix marks.  The Opponent argues this decision is not relevant as it did not concern a ‘family’ of marks and each case turns on its facts.  The Applicant also argues that the different spelling of the prefix in the Trade Mark is significant and the aural similarity is not determinative.

   [34] [2017] FCA 519 (Markovic J).

   62.     In my opinion, the Trade Mark is not deceptively similar to any of the Opponent’s individual marks.  Each of the Opponent’s Marks is visually, phonetically and connotatively different.  However, the Opponent owns a ‘family’ of marks structured around the prefix ‘U-‘ combined with a descriptive word relating to banking or money such as UBank, USaver, UTrade.,UHomeLoan USave and USpend.  The Applicant has not used the defining element of the Opponent’s series or family namely the prefix ‘U-‘.  In my view, despite the aural similarity, the visual and conceptual differences between the prefixes ‘U-‘ and ‘YOU-‘ outweigh the phonetic similarity. Further, as I have noted above, I consider that the Trade Mark is most likely to be seen rather than heard in the context of the Used Services.  I am not satisfied that consumers will assume any connection between the Used Services offered under the Trade Mark and the Opponent or the family of Opponent’s Marks.    

   63.     The s 44 ground of opposition is unsuccessful.

   Decision

   64. The Opponent has established a ground of opposition under s 59 with respect to the following services:

   Class 42: Computerised user authentication services in e-commerce transactions; User authentication services using technology for e-commerce transactions

   (‘Unused Services’)

   65.     In Apple Inc v Registrar of Trade Marks, Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[35]

   [35] [2014] FCA 1034, [232].

   66.     Under the principles outlined above, the Registrar may proceed to reject an application in its entirety where an opposition has been established for some but not all of an applicant’s goods or services, but also has a discretion to offer an amendment to an applicant, allowing it to remove the goods and services for which a ground of opposition has been established.  

   67.     The Opponent argues that the Applicant should not have another opportunity to amend  the application but rather that I should reject the Application in its entirety.  In my opinion, refusing the application in its entirety is not a good use of resources for this office or the parties and serves no useful purpose given that the Applicant has used the Trade Mark for the Used Services and could simply refile for those services.  Accordingly, I believe it is appropriate to allow the Applicant an opportunity to amend the application to cover only the Used Services and hence I wrote to the Applicant in this regard on  8 September 2025.

   68.     The Applicant agreed to amend the Application and the Application has been restricted to the Used Services namely:

   Class 35:   Business intermediary services relating to the commercialising of goods; Commercial intermediation services; Online retail services; Provision of an online marketplace for buyers and sellers of goods and services; The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods

   69.     Accordingly, I direct that the Application as amended may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application be in accordance with the court’s order or direction.

   Costs

   70.      Both parties requested an award of costs and as noted at [6], the Opponent had requested that costs to 23 June 2025 be awarded against the Applicant due to the late request for Amendment of the Application.  Both parties made submissions on this point at the hearing on 23 June 2025 and subsequently in writing.

   71.     The Opponent argues that it prepared its case based on the Application as filed and was not advised by the Applicant until three hours before the 23 June hearing that the Applicant no longer wished to use the Trade Mark in respect of the deleted goods and services.  As a result of the lateness of the Amendment, the Opponent argues that the cost of preparing for and attending the hearing of 23 June were ‘largely thrown away’.  The Opponent contends that the Applicant offers no substantive explanation for the late Amendment, referring only to it being a ’commercial decision’.  If the Applicant had made the Amendment in a more timely manner, the Opponent submits that the 23 June hearing could have proceeded as initially scheduled.  Accordingly, the Opponent says that given the Applicant’s conduct I should exercise my discretion and award costs against the Applicant.

   72.     The Applicant submits that it is entitled to make the Amendment, the deleted goods and services are irrelevant to the Opponent and unconnected to the Opponent’s Goods and Services.  The Applicant has always maintained that it offers a gifting platform that enables another person to pay for a consumer’s goods or services.  The only items that were deleted that could arguably have any relevance to the Opponent’s goods and services are ‘magnetic and coded cards; gift cards’ but even these items are not banking products but rather are provided by actual payment processing companies such as PayPal, Shopify etc.  Further, the Applicant argues, it was in a position to proceed with the substantive hearing on 23 June and should not be prejudiced in the form of an adverse costs award by the Opponent’s request for further time.

   73.     The Applicant is certainly entitled to amend the Application but it is the timing of the Amendment that is problematic.  One would expect that the Applicant had been preparing its case in advance of the initial hearing date and that any discussion about refining the scope of the Application commenced well before the morning of the June hearing.

   74.     It is apparent that the Amendment had an effect on the Opponent’s case as the Applicant deleted all of the goods and services which overlapped directly with those of the Opponent’s Marks, particularly registration 1212792.  That registration encompasses all of the Applicant’s class 9 goods and whilst the Applicant submits that the deleted services ‘generally relate to business administrative services in connection with purchasing goods, invoicing goods, customer data and data processing in the retail sector’, many of the items claimed are not limited to the retail sector and are encompassed by or are similar to services covered by the Opponent’s Marks.  Having said this, the Opponent deals with the similarity of the Applicant’s Goods and Services to those of the Opponent fairly briefly in its original written submissions of 9 June 2025, although I acknowledge that those submissions would have been expanded upon at the oral hearing.

   75. In the end, both parties have had some degree of success. I consider that in all the circumstances, it is appropriate to award costs against the Applicant in relation to preparing and attending the hearing of 23 June 2025 in the amounts set out in Schedule 8 of the Regulations and that the parties should otherwise bear their own costs.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   15 September 2025

   Annexure 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 (‘792 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: 792 class 9 Goods Class 16: 792 Class 16 Goods Class 35: 792 35 Services Class 38: 792  38 Services Class 41: 792 Class 41 Services
1447402	UTouch	8/9/2011	Class 36: 792 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
2293212	12/8/2022	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; databases; 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; buy now pay later software; authentication software for controlling access to and communications with computers and computer networks; downloadable software for providing access to a customer self-service portal; parts and accessories for the aforementioned goods Class 16:  Paper, cardboard; instructional and teaching material (except apparatus); printed matter including printed publications, books, booklets, diaries, calendars, magazines, brochures, leaflets, pamphlets, newsletters, periodicals, prospectuses, statements of account; stationery products including envelopes, folders, files, pads, paperweights, pencils, pens, rubber erasers, rulers, writing paper, bags; engraving blocks and printing blocks; letterhead, envelopes, business cards, cheques, drafts, forms, invoices, cheque books, cheque book holders, account record books; promotional materials; financial planning guides; credit cards (other than encoded or magnetic); school supplies; greeting cards, gift cards and gift wrappings; packaging; pen and pencil cases and holders; labels; cheque marking machines for use in preventing fraud  Class 35:  Advertising, marketing and promotional services; business management; business administration; business information; office functions; retail 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; 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; marketing and promotional services through customer loyalty programmes and incentive schemes; organisation and administration services in relation to the supply of benefits in connection with customer loyalty programmes and incentive schemes; arranging the provision by third parties of discounts; 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 (business) in the operation of franchises; computer assisted business information; business strategy services; electronic commerce services being online retail services 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; provision of financial information and investment information online or via a global computer network; 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; financial affairs being provided online or via a global computer network; monetary affairs being provided online or via a global computer network; financial analysis being provided online or via a global computer network; portfolio administration being provided online or via a global computer network; superannuation services; financial planning; deposit services; provision of online financial calculators; mortgage and superannuation trusteeship; currency exchange services; wealth management and protection services; share trading; options trading; 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; electronic commerce services being financial transaction services; buy now pay financial later services; providing processing of electronic payments for the purpose of facilitating purchases made by customers on terms of delayed and interest free payment; e-wallet payment services; information, consultancy and advice in relation to the foregoing Class 38:  Telecommunications services; audiovisual communication services; data transmission; electronic transmission of data; computer data transmission services; computerised data communications; communication via a global computer network; electronic mail and encrypted communications; providing Internet forums; access to computer networks; communication between computers; communication by electronic means; communication of information by electronic means; providing access to databases; operating of electronic communication systems and networks; point of sale communications services; call centre services (electronic call diversion and messaging); radio broadcasting; television broadcasting; message boards; news agencies; podcasting services; web portal services (providing user access to a global computer network); instant electronic messaging services; internet portal services; consultancy, information and advisory services regarding the aforementioned services Class 41:  Education; providing of training; entertainment; sporting and cultural activities; recreation services; publishing services; arranging and conducting of educational and training workshops; gymnasium services; keynote speaking; museum exhibitions; organizing of exhibitions for cultural or educational purposes; multimedia production, other than for advertising purposes; publishing of reviews; organising of games, festivals, musical events, ceremonial events, seminars; symposia, tournaments and training courses; photography; personal development courses; providing recreational facilities; providing information, including online, about education, training, entertainment, sporting and cultural activities; news and current affairs programmes; news reporters services; ticket agency services; amusements; art exhibition services; charitable services, namely academic mentoring, education and training; coaching (training); concert services; gaming services; health club services; news reporter services; prize draws; career information and advisory services in this class; consultancy, information and advisory services regarding the aforementioned services Class 42:  Scientific and technological services and research and design relating thereto; software as a service; database as a service; platform as a service; application service provider services; providing temporary use of non-downloadable software applications through a website; provision of online computer software (non-downloadable); 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; authentication services (verification of the attributes of goods); authentication services for electronic documents and e-mail; user authentication services using single sign-on technology for online software applications; quality testing; quality control; user authentication services using technology for e-commerce transactions; information, consultancy and advice in relation to the foregoing Class 45:  Personal and social services rendered by others to meet the needs of individuals; online social networking services; social networking services; security services including security checking and screening services; conducting identity checks on individuals and businesses; identity theft and fraud prevention services; verification of identity services including all types of photo capture, services relating to signature and electronic signature verification; security services for the protection of property and individuals; providing user authentication of personal identification information (personal background or security investigations) including for e-commerce transactions; information, consultancy and advice in relation to the foregoing (‘2293212 Goods and Services’)
2270287	15/2/2022	Classes 9, 16, 35, 36, 38, 41, 42 & 45: 2293212 Goods and Services