Paypal, Inc v Braintree Communications Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by Braintree Communications Pty Ltd to registration of trade mark application 1579864 (36) - BRAINTREE - filed in the name of Paypal, Inc.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Ben McEniery of Counsel instructed by Tucker & Cowen, Solicitors

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

Decision:

2017 ATMO 90

Trade Marks Act 1995

Section 52 opposition to registration: section 44 – ‘similar services’ and ‘closely related goods and services’ considered - opposition not established.

Background

1. In this matter Paypal, Inc, (‘the Applicant’) has made application under the Trade Marks Act 1995 (‘the Act’) for the registration of the trade mark which appears below:

Application No: 1579864

Priority Date:  18 July 2017

Goods:Class 36: Credit card payment processing services; credit card transaction processing services; payment processing services, namely, providing electronic processing of electronic funds transfer, ACH (automated clearing house), credit card, debit card, electronic check and electronic payments

(‘the Applicant’s Specification’)

Trade Mark:  BRAINTREE

(‘the Trade Mark’)

1. The Trade Mark was examined as mandated by section 31 of the Act and advertised as accepted for possible registration on 29 January 2015 in the Australian Official Journal of Trade Marks.

2. On 26 March 2015, Braintree Communications Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 26 April 2015, by a Statement of Grounds and Particulars citing grounds under sections 44 and 60 of the Act. The latter ground was formally withdrawn at the hearing.

3. On 12 May 2015 the Applicant filed a Notice of Intention to Defend.

4. Subsequently, the parties have filed their respective Evidence in Support, Evidence in Answer and Evidence in Reply.  I will further discuss this evidence below.

5. Both parties requested a hearing which was before me as a delegate of the Registrar of Trade Marks.  The hearing was in Canberra on 6 July 2017; Ben McEniery of Counsel instructed by Tucker & Cowen, Solicitors, represented the Opponent; David Larish of Counsel instructed by King & Wood Mallesons represented the Applicant.

Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].

2. The relevant date at which the sole ground under section 44 of the Act must be considered is the priority date of the opposed application.[2]

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

Evidence

1. The evidence is comprised of the following declarations:

   In Support

   Peter Richard Hamilton Mason, director of the Opponent, made on 5 August 2016 with attachments thereto;

   In Answer

   Clifford C.…