PayMe Australia Pty Ltd v Paymend Pty Ltd - [2023] ATMO 131

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by PayMe Australia Pty Ltd to registration of trade mark application number 2210925 (classes 35, 36, 42) – Paymend – in the name of Paymend Pty Ltd

Delegate: Debrett Lyons

Representation: Opponent: McCullough Robertson
Applicant: Herbert Smith Freehills

Decision: 2023 ATMO 131
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 44, 58, 59, 60 and 62A pursued – none established – trade mark may proceed to registration
Background

This decision concerns an opposition brought by PayMe Australia Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the trade mark application number 2210925 for Paymend (‘Trade Mark’) in classes 35, 36 and 42 made on 15 September 2021 in the name of Paymend Pty Ltd (‘Applicant’).
The Trade Mark was examined, accepted and advertised for possible registration on 16 February 2022.
On 13 April 2022 the Opponent filed a notice of intention to oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 13 May 2022. The Applicant filed a notice of intention to defend on 18 July 2022.
Meanwhile, on 10 May 2022 as part of a pilot case conference initiative implemented by this Office, the parties were invited to explore opportunities to resolve their dispute at an early stage of the process, potentially saving customers money, time and effort. Engagement was voluntary and I note that the due date of 10 June 2022 passed without either side showing an interest in the process.
On 18 July 2022, pursuant to s 65(7) of the Act, the Applicant requested that the specification of services as filed be amended as shown below, the requested amendments being in bold:
Class 35: Business accounts management; Business administration; Business administration services; Organisational services for business purposes; Invoicing; Collection of financial information; none of the foregoing being services for payroll
Class 36: Credit card services; Processing of credit card statements; Debit card services; Card operated financial services; Financial services; Financial transaction services; Organising financial collections; Collection of fees, payments or tolls (for others); Collection of payments; Electronic payment services; Payment of bills and accounts for others; Payment processing services; Payment transaction card services; Processing of debit card payments; Financial payment services; Credit (financing); Corporate finance services; Financing services; Instalment credit financing; Instalment loan financing; Personal finance services; Provision of commercial finance; none of the foregoing being payroll services
Class 42: Provision of online non-downloadable software (application service provider); Provision of online non-downloadable web-based software; Software as a service (SaaS); Temporary use of online non-downloadable software; Cryptocurrency engineering
(‘Services’)
In accordance with the Trade Mark Regulations 1995 (Cth) (‘Regulations’) the Opponent filed evidence in support comprising the declaration of Ian Lindgren, Founder and Executive Chairman of the Opponent, made 17 October 2022, with Exhibits 1- 22 and Confidential Exhibits 1- 4…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] ATMO 131
Decision Date: 5 September 2023

CaseChat Overview and Summary

In a proceeding before the Federal Court of Australia, PayMe Australia Pty Ltd (the opponent) opposed the registration of a trade mark sought by Paymend Pty Ltd (the applicant). The dispute concerned the potential for confusion and misrepresentation arising from the applicant's proposed mark, which the opponent argued would infringe upon its existing rights.

The court was required to determine whether the opponent had established grounds for opposition under various sections of the *Trade Marks Act 1995* (Cth), specifically sections 42(b), 44, 58, 59, 60, and 62A. These sections relate to grounds such as the mark being deceptive or misleading, substantial identity or deceptive similarity with an earlier trade mark, and the applicant not being the owner of the mark or intending to use it.

Her Honour Debrett Lyons found that the opponent had failed to establish any of the grounds for opposition it had pursued. The court's reasoning, based on the evidence presented and the relevant provisions of the *Trade Marks Act 1995*, led to the conclusion that the applicant's trade mark was not deceptive or misleading, nor was it substantially identical or deceptively similar to any earlier trade mark relied upon by the opponent. Furthermore, no other grounds for opposition were made out.

Consequently, the court ordered that the opposition be dismissed and that the applicant's trade mark proceed to registration.

Orders