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

National Australia Bank Limited (the Opponent) opposed the registration of trade mark application number 2364062, for the figurative mark "youpay", in the name of YouPay Pty Ltd (the Applicant). The application sought registration in classes 35 and 42. The Opponent, a major Australian bank, argued that the Applicant did not intend to use the trade mark in Australia in relation to all the goods and services specified in the application, relying on section 59 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the court was whether the Applicant possessed a "real and definite intention" to use the trade mark in Australia in relation to the goods and services for which registration was sought, as required by section 59. This assessment was to be made as at the filing date of the application, with subsequent actions potentially informing inferences about that intention. The court also considered whether the Opponent had established a prima facie case of lack of intention, which would shift the onus to the Applicant to demonstrate its genuine intent.

The court reasoned that while the Applicant's evidence clearly demonstrated use of the trade mark in relation to a "gifting platform" and digital marketplace, which could be described as falling within the broad scope of the class 35 services, the evidence did not establish a similar intention or use for the class 42 services. Specifically, the court found that the Applicant had not asserted an intention to use the trade mark for computerised user authentication services in e-commerce transactions or user authentication services using technology for e-commerce transactions, and its evidence did not demonstrate that it offered such services.

Consequently, the court found that the ground of opposition under section 59 was established in relation to the class 42 services. The court then indicated it would proceed to consider other grounds of opposition concerning the class 35 services, for which it was satisfied the Applicant had demonstrated the requisite intention to use the trade mark.