PayMe Australia Pty Ltd v Paymend Pty Ltd

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 (‘Lindgren’).
No further evidence was filed in the matter and on 21 April 2023, the Opponent requested a decision on the written record without a hearing. The Registrar of Trade Marks has delegated that decision making to me and I do so on the basis of the information and material described above.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 44, 58, 59, 60 and 62A of the Act. To be successful, the Opponent bears the onus of establishing at least one of those grounds.[1]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
The relevant standard of proof is the civil standard, based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 15 September 2021 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Discussion
Lindgren claims confidentiality of the whole of his declaration, limiting me to generalized comments or to restatement of information already in the public domain. Incorporated in 2006, the Opponent has provided payroll services by reference to the trade mark, PayMe, and a logo version thereof (shown below) from 2007 onwards, expanding use of those trade marks as the business developed to other services including, by way of example, novated leasing, living-away-from-home allowance, and salary packaging.
There is nothing to inform me why the Opponent chose not to engage in the case conference programme, nor why it continued with the opposition after the Applicant had amended its Services, but Lindgen expresses concern that “if that application proceeds to registration it is highly likely to cause consumer confusion” and will lead to “erosion of the distinctiveness of the Opponent’s ‘PayMe’ brand through dilution of goodwill.” I note, too, that this same concern for brand dilution finds its way into the SGP under s 42(b), concerned with use that would be contrary to law.
It is apposite to state here that there is no anti-dilution law in Australia, not under the Act or elsewhere, and so I turn to consideration of the grounds of opposition recognized by the Act.
Section 58
Section 58 of the Act provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
14.     The Opponent must show the trade marks it relies upon are substantially identical to the Trade Mark[3]; that the Opponent’s services are the ‘same kind of thing’ as the Services[4]; and the trade marks relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark, whichever is earlier[5].
[3] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
[4] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[5] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
15.     This SGP particularised this ground as follows:
The Applicant is not the owner of the … Trade Mark. Specifically, the Applicant is not the first user of the … Trade Mark. The Opponent adopted and first used ‘PayMe’ as a trade mark in Australia in January 2007, almost thirteen years ago and over twelve years prior to the filing date of the … Trade Mark. Due to the Opponent’s continuous and extensive use, the Opponent has established a significant reputation in Australia in respect of the services covered by the Opponent’s Trade Marks, prior to the priority date of the … Trade Mark. The … Trade Mark is substantially identical to the Opponent’s Trade Marks, and nominates services that are of a similar description to the services provided by the Opponent. As the Applicant is not the proprietor or the owner of the … Trade Mark, the Opposed Trade Mark should be rejected.
16. The Opponent has listed a number of its trade marks but if it is to succeed under s 58 at least one of those marks must be substantially identical to the Trade Mark. It will be evident that the Opponent’s case can rise no higher in this regard than the comparison of the Trade Mark with the PayMe mark used and registered[6] by the Opponent.
[6] Trade mark registration number 1294851.
17.     In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell & Esso’) Windeyer J explained the test for determining substantial identity:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]
[7] [1963] HCA 66, [12].
18.     On any assessment I find that the compared marks are not substantially identical. When compared side by side the differences between the two trade marks are readily apparent. Whilst the Trade Mark shares the same first five letters of PayMe mark and so, at one level, subsumes it, the total impressions of the marks are wholly dissimilar.   The Opponent’s mark is composed of two, recognizable, dictionary words ordered with grammatical sense – pay me – the lack of punctuation lacking impact in the face of the initial capitalisation of each word. Further, it is evidently the Opponent’s intention that the trademark PayMe be understood in this descriptive way, given other composite marks used and/or registered by the Opponent including PayMe SALARY PACKAGING and PayMe Tax Return. In sharp contrast, the Trade Mark alludes to the word, ‘payment’, or perhaps the expression, ‘pay mend’, to refer to the restorative effect of some of the Services. In either case, I find that a total impression of dissimilarity emerges from the comparison.
19. I find that the Trade Mark is not substantially identical to any of the Opponent’s trade marks and so find that the s 58 ground of opposition has not been established.
Section 44
20. Section 44 relevantly 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) the applicant’s trade mark 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.
21.     In order to establish this ground the Opponent must show that at least one of the identified trade marks has a priority date earlier than the Relevant Date; that the earlier trade mark is registered in respect of services that are similar to, or goods that are closely related to, the Services; and that the earlier trade mark is substantially identical with, or deceptively similar to the Trade Mark.
22.     The SGP particularizes this ground by asserting that the Trade Mark “is substantially identical with, or deceptively similar to, the Opponent’s trade mark registrations, namely:
1294851 PayMe (word) in classes 35 and 36;
1219995 PayMe (logo) in class 35;
1559447 PayMe Leasing; PayMe Accounting; PayMe Tax Return (word series) in classes 35 and 36;
1594250 PayMe SALARY PACKAGING (words) in classes 35 and 36; and
1594251 PayMe DRIVE (words) in classes 35 and 36.
23.     The Opponent rightly states that the priority dates of those registrations all precede the Relevant Date and submits that the Services are similar to the services covered by those registrations.
24.     In spite of the amendments requested by the Applicant there may in fact still remain services in common with one or more of the Opponent’s registrations, but that question requires no further study since I find the submission that the Trade Mark is substantially identical or deceptively similar to any of the Opponent’s registered marks, unsustainable.
25. I have dealt with the question of substantial identity. Section 10 of the Act defines ‘deceptively similar’ as:
For the purposes of this Act, 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.
26.     The assessment of whether trade marks are deceptively similar was also outlined by Windeyer J in Shell & Esso:
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 [mark].[8]
[8] [1963] HCA 66, [13].
27.     For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[9] That will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods come from the same trade source.[10] The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained.[11] Accordingly, an allowance is made for imperfect recollection of the trade marks.[12] The impression derives from the trade marks in their entirety,[13] and is informed by the look, sound and ideas conveyed by the trade marks.[14]
[9] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
[10] Ibid.
[11] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[12] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).
[13] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[14] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
28. My observations regarding the dissimilarities between the marks made in relation to s 58 have even greater force in relation to the question of whether they are deceptively similar. I find that they are not and so find that the s 44 ground of opposition has not been established.
Section 60
29. Section 60 of the Act relevantly provides:
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.
30.     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.
31.     The SGP states that the Opponent has used the PayMe trade mark to such an extent that it has “an extensive common law reputation” and Lindgren claims that “[t]he Opponent is now[15] Australia’s largest contractor payroll company.” However, the existence and extent of the alleged reputation must be established as a matter of fact[16] and, insofar as I can say anything of the confidential evidence, I would not characterize the Opponent’s turnover at the Relevant Date as overly impressive and I do not think its promotional spending is any more than that of an average SME. Publicity of the Opponent’s business is more impressive with evidence of awards and local news coverage. On balance, I find the Opponent to have established a modest reputation in the trade mark, PayMe, in relation to payroll and closely allied services at the Relevant Date.
[15] That is, at 17 October 2022, when the declaration was made.
[16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J); McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).
32. Section 60(a) of the Act being satisfied to that degree, s 60(b) requires that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion. This calculation requires consideration of “how close” the marks are and I have already found that they are not deceptively similar. Section 60 no longer specifies just how similar the marks should be, but in the matrix of factors which finally determine the likelihood of deception or confusion, the similarity of the compared marks is a key factor[17].
[17] See, Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 at [39]; Qantas Airways Limited v Edwards [2016] FCA 729 at [142], Yates J.
33.     In my assessment, this is a case in which the Opponent’s discomfort with the Trade Mark goes some way to explain its complaint about “dilution” of the strength of its brand, but what the Opponent perhaps ignores is that by choosing the expression, “pay me” as its brand, it has limited itself and the likelihood of deception or confusion to conceptually very similar expressions. In my finding, the Trade Mark is not one.
34. The s 60 ground of opposition has not been established.
Section 42
35. Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
36.     To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than might be, contrary to law.[18] The SGP asserts that use of the Trade Mark would (i) constitute the tort of passing off, (ii) be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) in Schedule 2 of the Competition and Consumer Act 2010 (Cth); and (iii) be contrary to ss 12DA and 12DB Australian Securities and Investments Commission Act 2010 (Cth).
[18] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
37. Following my findings there is no misrepresentation as is required for a successful action for passing off. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[19] Since the Opponent has failed to establish the s 60 ground of opposition, it follows that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding regarding the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[20] Finally, there is no information or supporting argument relevant to any securities and investments and so nothing for me to consider.
[19] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[20] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].
38. The s 42(b) ground of opposition has not been established.
Section 62A
39. Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
40.     This ground was particularised in the SGP as follows:
… at the time of filing the application, the Applicant was aware of the Opponent and the Opponent’s Trade Marks; and a reasonable and experienced person, adopting the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the same position as the Applicant would not have applied for registration and/or and prosecuted the Opposed Trade Mark to acceptance, in the face of the Opponent’s Trade Marks.
41.     I do not agree. In the first place, it must be understood that knowledge of the Opponent’s trade marks does not, of itself, render the Trade Mark application as having been made in bad faith. Otherwise, the submission essentially repeats the language of the UK Courts after the introduction in 1994 of a bad faith ground of opposition there - language adopted in this country by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[21]. In that case Her Honour said:
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[22]
[21] [2012] FCA 81, [147], quoting, Harrison’s Trade Mark Application [2004] EWCA Civ 1028.
[22] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164]–[167].
42. In short, I find the Trade Mark so different to any of the Opponent’s marks that, even if the Applicant was aware of the Opponent’s business, it behaved in accordance with reasonable commercials standards when it applied for the Trade Mark. I find that the ground of opposition under s 62A of the Act has not been established.
Section 59
43. Section 59 of the Act reads as follows:
59. 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.
Note: For applicant see section 6.
44.     The Opponent has pursued this ground in relation to all of the Services. All the SGP says is that “the Applicant has nominated a wide range of goods (sic) in classes 35, 36 and 42 and does not use, or intend to use, the …Trade Mark in relation to all of these specifications.
45.     The law is that filing an application to register a trade mark is prima facie evidence of the Applicant’s intention to use it in respect of the goods and services nominated[23]. As for any ground of opposition, the onus is on the Opponent to make its case under s. 59. The onus can shift[24] but as Hearing Officer Kirov explained in Apple Inc v Artistic Licence International[25]:
[T]he High Court’s decision in Aston v HarleeManufacturing Co [1960] HCA 47; (1960) 103 CLR 391 is longstanding authority that applying to register a trade mark is prima facie evidence of intention to use. Subsequent decisions indicate this prima facie presumption may be rebutted where the evidence readily gives rise to the drawing of an adverse inference and that evidence remains unchallenged and unrebutted by the applicant.[26] The onus does not however shift to an applicant merely because an opponent questions the applicant’s intention in its Notice of Opposition or submissions.[27]
[23] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).
[24] Pfizer Products Inc v Karam [2006] FCA 1663 at [26] per Gyles J; Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd [2003] FCA 1517, [12]-[13], (Gyles J).
[25] [2009] ATMO 15, para 21.
[26] See for example Phillip Morris Products SA v Sean Ngu [2002] ATMO 96.
[27] See for example Medley Distilling Company v Croakers Gully Australia supra; Wal-Mart Stores Inc v Ozark-London Ltd (2004) 62 IPR 165.
46. The Services are not especially broad. There is nothing to suggest that the Applicant could not, or does not, provide them. I find the complaint under s 59 of the Act groundless and not established.
Decision
47. Section 55 of the Act relevantly provides:
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.
48.     The Opponent has not established a ground of opposition. Trade mark application 2210925 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
49. Costs generally follow the event. The Applicant sought its costs in the event the opposition was unsuccessful. I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Regulations.
Debrett Lyons
Hearing Officer
Delegate of the Registrar of Trade Marks
5 September 2023

and Edelman JJ).

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

[2023] ATMO 131

5 September 2023