Opposition by Paypal, Inc to registration of trade mark application no.(s) 1798894 and 1827780 – FINPAL and FINPAL with logo - in the name of Finpal Pty Ltd

[2018] ATMO 196

TRADE MARKS ACT 1995

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

Re:Opposition by Paypal, Inc  to registration of trade mark application no.(s) 1798894 and 1827780  – FINPAL and FINPAL with logo - in the name of Finpal Pty Ltd

DELEGATE:

Bianca Irgang

REPRESENTATION:

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

Applicant: Andrew Sykes of Counsel instructed by Y Intellectual Property

DECISION:

2018 ATMO 196

Trade Marks Act 1995 (Cth)

Section 52 opposition: sections 42(b), 44 and 60 pressed – ground of opposition established under section 60 for both trade marks -registration of trade marks refused.

Background

1. Finpal Pty Ltd (‘the applicant’), filed trade mark application numbers 1798894 and 1827780 on 14 September 2016 and on 23 February 2017 respectively in classes 9, 36 and 42 of the International (Nice) Classification of Goods and Services. Current details of the applications are set out below.

Trade mark:  FINPAL (‘the Trade Mark’)

Trade mark application no: 1827780

Filing Date:  23 February 2017

Specification:  Class 9: Computer software for accounting systems; Computer

software for business purposes; Computer programs for financial management; Computer programs for financial reporting; Computer programs for use in processing data relating to financial records; Computer programs relating to financial matters

Class 36: Administration of financial affairs; Advisory services relating to (financial) risk management; Advisory services relating to financial investment; Advisory services relating to financial matters; Advisory services relating to financial planning; Computerised financial services; Financial advisory services; Financial advisory services for companies; Financial advisory services for individuals

Class 42: Provision of online non-downloadable software (application service provider); Software as a service (SaaS); Software engineering

1. The Device Mark and the Trade Mark are together referred in this decision as the FINPAL marks. Acceptance of the FINPAL marks for possible registration was published in the Australian Official Journal of Trade Marks on 16 December 2016 and 1 May 2017 respectively. Subsequently Paypal, Inc (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars1.

2. The applicant then filed its Notices of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (‘the Regulations’).

1 Which together constitute ‘the Notice’

1. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 19 September 2018. The applicant was represented by Andrew Sykes of Counsel instructed by Y Intellectual Property. The opponent was represented by David Larish of Counsel instructed by King & Wood Mallesons.

Grounds of Opposition

1. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) being sections 42(b), 44 and 60 which were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd2 affirmed the approach in Pfizer Products  Inc. v Karam3 where Justice  Gyles J  referred  to  the  standard of  proof required in these matters in terms of a ‘balance of probabilities’. Should the  opponent establish one ground of opposition in relation to all of the applicant’s goods and services, there is no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence in this matter consists of the following:

Evidence in Support

·Declaration of Cifford C Webb (‘Webb’) dated 18 September 2017

Evidence in Answer

·Declaration of Stephen Handley (‘Handley’) dated 19 December 2017

Evidence in Reply

·Declaration of Henry Wells (‘Wells’) dated 1 March 2018

Discussion

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

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

2 [2015] FCAFC 156, [133]

3 [2006] FCA 1663, [26]

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. To establish the ground of opposition under section 60 the opponent relies on its use of and reputation in the registered trade marks below:

Trade Mark No.	Trade Mark	Classes	Priority Date
895146	PAYPAL	36	15 November 2001
941392	36	29 January 2003
991252	PAYPAL	9, 14, 21, 25	3 September 2003
1171776	9, 16, 21, 36, 45	19 April 2007
1327935	9, 42	26 October 2009
1473772	9, 36, 42	13 January 2012
1603454	35, 36, 42	17 January 2014
1659299	9, 35, 36, 42	28 April 2014
1705440	PAYPAL.ME	36, 42	7 July 2015

(‘opponent’s trade marks’)

1. The opponent’s trade marks have all attained registration. Unlike section 44 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade

mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the goods and services for which the above trade marks  are registered are the same and closely related to those of the FINPAL marks.

1. It is for me to determine whether the opponent has established that before 24 September 2016 the opponent’s trade marks were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of its FINPAL marks would be likely to cause the public confusion.

2. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: 4

   (ii)   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii)    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv)The rights of the parties are to be determined as at the date of the application.

(v)    The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:5

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in

4 [1999] FCA 1020 [50]

5 [1973] HCA 43; (1973) 129 CLR 353, 362

the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick6 by Kenny J:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

1. Webb states that the opponent was founded in 1998. Through its various websites and mobile application, including paypal.com, the opponent provides – under and by reference to its PAYPAL mark – a fast, secure and easy way for users to send and receive payments online. Mr Webb asserts (and the evidence establishes) that one or other of the opponent’s trade marks is displayed on the Opponent’s website, in emails from the opponent to users announcing that payment has been made or received and on the websites, stores and businesses which accept payments using the opponent’s PAYPAL payment system.

2. Webb establishes:

·The opponent has used its trade marks in Australia since at least 2000

·At the end of 2015 over 48 million PayPal user accounts had been registered from Australia and over 6 million active PayPal user accounts were registered to users in Australia.

·Many Australian websites, stores and other businesses accepted payment via the opponent’s PayPal services including QuickSilver, The Iconic, the Good Guys, OzSale and Virgin Australia7.

6 [2000] FCA 1335 [81]

7 Exhibit CW-4 accompanying Webb.

·During the five year period from 2011 to 2015 there were over 750 million transactions conducted via the opponent’s PayPal services sent by Australian PayPal users and over 500 million transactions conducted via PayPal that were received by PayPal users.

·During the five year period from 2011 to 2015 the total payment volume conducted via PayPal users in Australia was in the tens of billions.

1. Given all of the above, I am satisfied that the opponent’s trade marks had acquired a significant reputation in Australia before the priority date of the FINPAL marks. It now needs to be determined if, given this reputation in Australia, use of the FINPAL marks by the applicant would be likely to deceive or cause confusion.

1. Overall I consider that, given the reputation acquired by the opponent’s trade mark, a significant number of consumers would at the very least experience a reasonable doubt8 as to the existence of some sort of connection between the opponent’s trade marks and the FINPAL marks if it were used to the extent of all of the goods and services listed in the opposed applications. In considering the similarities between opponent’s trade marks and the FINAPAL marks it becomes clear that the respective trade marks share similarities.

Opponent’s trade marks

Trade Marks

PAYPAL

PAYPAL.ME

FINPAL

8 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

1. Both trade marks contain the word PAL as the suffix of their trade marks which is preceded by a three letter prefix – ‘FIN-’ and ‘PAY-’ respectively. While the applicant’s device trade mark contains an additional stylized letter ‘F’ within a circle and the opponent’s stylised trade marks do not contain a single stylised letter at the beginning of its trade mark, I do not believe that this additional letter in the applicant’s device trade mark is sufficient to preclude confusion from occurring between the opponent’s trade marks and the applicant’s device trade mark.

1. I believe that the -PAL suffix found in the respective trade marks are a striking similarity between the trade marks which adds considerably to the potential of confusion taking place between the trade marks. The opponent has argued that in both marks PAL is juxtaposed with a prefix – Pay or Fin – that is descriptive of a service relating to money; Pay and Fin are the first syllable of the words ‘payment’ and ‘finance’ respectively. The opponent concludes that both marks are made up of a descriptive syllable, followed by the arbitrary syllable Pal and that because of this commonality, when encountered with the FINPAL marks, consumers are

   likely to think that the opponent is offering a new or related good or service under the FINPAL marks. The opponent directed me to Kodak (Australasia) Pty Ltd’s Application9 which stated, “the well-known trade practice of traders in adopting a certain word as a trade mark and constructing other trade marks for distinguishing characteristics of their goods by using such word as a basis and adding thereto.”

1. The applicant has argued that:

“…the prefixes PAY- and FIN- are clearly not analogous term as the opponent has indicated. The term PAY has a clear standalone meaning, not just as the first syllable of ‘payment’ but as a word in its own right, to describe a transactional process. The term FIN does not have a clear standalone meaning and would not be viewed as a descriptive or allusory reference to “finance” in the absence of additional context of knowledge of the goods and services associated with the mark. The term FIN is not descriptive of any service relating to money or services of a transactional nature.

It is unlikely that consumers would assume that FinPal is a new or related good or service to PayPal in circumstances where the opponent has not provided any evidence that it has used any other –PAL derivative trade marks apart from PayPal and there are clearly many other businesses as identified in both the applicant’s and opponent’s evidence which use the –PAL suffix, both in the fields of finance-related services and software. ”

9 (1936) 6 AOJP 1724

1. The applicant is correct that there are are other trade marks which contain the suffix –PAL. However, the formula of using a three letter prefix which is clearly distinct from the suffix as demonstrated in the applicant’s device mark by changing the font style, is more unusual when applied to the goods and services in question and this is likely to lead consumers to wonder if the opponent has branched out into a new product line and service. I turn to the reasoning in

   PayPal Inc v Giftmobile Pty Ltd10 where Hearing Officer McDonagh concluded:

“Consumers knowing of the Opponent’s substantial business and reputation in the area of online payment, particularly in the retail context, are very likely to assume that the opponent has extended its product and service line into the provision of ‘gift’ gcards. (i.e. GiftPal rather than PayPal).”

1. This reasoning applies to the situation before me. While there has been some argument from the applicant that the financial services offered by the respective parties are far enough removed from each other to preclude confusion, I am satisfied that this is not the case.

1. The opponent’s services to which its trade marks relate are the use of software and online services which enable the transmission and recording of financial transactions, including payments. The applicant’s services relate to finance. The three categories of software related services for which registration is sought in class 42 are not limited to, but would incorporate, services relating to financial matters and systems. I am in agreement with the opponent that this falls squarely within the opponent’s core reputation.

1. The opponent has clearly invested a great deal of money and time in promoting its trade marks and also in growing its business significantly over the years. While section 60 does not require a finding that the trade marks are substantially identical or deceptively similar, I find that the similarities between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia and the nexus between the financial services offered by the respective parties adds to the likelihood of confusion taking place in the marketplace.

1. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all of the applicant’s goods and services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

10 [2017] ATMO 113

Decision

1. Section 55 of the Act provides:

55  Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:       For limitations see section 6.

1. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no.(s) 1798894 and 1827780.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer

Oppositions and Hearings 10 December 2018