PayPal, Inc v Chippit Financial Pty Ltd
[2024] ATMO 233
•29 November 2024
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 2290754 (36) – PayPool– in the name of Chippit Financial Pty ltd
Delegate: | Bianca Irgang |
Representation: | Opponent: Gilbert Tsang of counsel instructed by King & Wood Mallesons Applicant: Eli Muse, director of the Applicant |
Decision: | 2024 ATMO 233 Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 42, 44, 60 and 62A grounds of opposition argued – no grounds of opposition established – trade mark to proceed to registration. |
Background
Chippit Financial Pty ltd (‘the Applicant’), filed trade mark application number 2290754 on 2 August 2022 in class 36 of the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark: PayPool (the ‘Trade Mark’)
Trade mark application no: 2290754
Filing Date: 2 August 2022
Specification: Class 36: E-wallet payment services; Electronic payment services; Financial payment services; Payment processing services; Payment transaction card services; Electronic transfer of crypto assets; Financial exchange of crypto assets
Acceptance of the application for possible registration was advertised on 3 January 2023. Subsequently PayPal, Inc (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).
The Applicant then filed its Notice of Intention to Defend. Thereafter, the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).
I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 6 November 2024. The Opponent was represented by Gilbert Tsang of Counsel instructed by King & Wood Mallesons. The Applicant was represented Eli Muse, director of the Applicant.
Grounds of Opposition
The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) and ss 42(b), 44, 60 and 62Awere pursued at the hearing. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
Evidence
The evidence filed in this matter consists of the following declarations being:
Evidence in Support
Declaration of Susan D. Stearns, Director Trade and Brand Enforcement for the Opponent, made on 16 August 2023 (‘Stearns 1’), and its exhibits SDS-1 to SDS-13.
Evidence in Answer
Declaration of Eli A. Muse, Director of the Applicant, made on 20 October 2023 (‘Muse’), and its annexures comprising of 11 pages.
Evidence in Reply
Declaration of Susan D Stearns, Director Trade and Brand Enforcement, made on 21 December 2023, and its exhibits SDS-14 to SDS-17.
Discussion
Section 44
Section 44 of the Act 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) it 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.
To establish its opposition in terms of section 44 of the Act the Opponent must show all of the following:
a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and
the priority date(s) of the other person’s trade mark(s) is (are) the earlier.
The Opponent is the registered owner of the following12 registrations relied on in support of its s 44 ground of opposition:
As verified on the Register of Trade Mark all of these trade mark registrations have an earlier priority date to the Trade Mark and cover the same services in class 36 to the Applicant’s services. Therefore, the remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to any of the previously registered trade marks put forward by the Opponent. I will refer to the Opponent’s trade marks collectively as ‘Opponent’s Trade Marks’ for ease of reference throughout the decision.
It is obvious that none of the Opponent’s Trade Marks are substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. While all of the respective trade marks contain the prefix ‘PAYP-’ and end with the letter ‘-L’ this is where the similarities between them end. They each have a different and well defined and understood word as the suffix which changes the visual and aural termination of each trade mark and precludes a finding of substantial identity.
[3] (1963) 109 CLR 407, 414.
I now consider whether the Trade Mark is deceptively similar to any of the Opponent’s Trade Marks. Deceptive similarity is defined by s 10 of the Act, which states ‘[f]or 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.’ The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[4] The probability of deception must be finite and non-trivial.[5]
[4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).
[5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).
Four of the Opponent’s Trade Marks consist of the word PAYPAL in essentially plain text. I will initially compare registration no.(s) 895146 ‘PayPal’, 991252 ‘PayPal’, 1659299 ‘PayPal (stylised)’, 2118961 ‘PayPal’ to the Trade Mark to determine if they are deceptively similar. Given that the remainder of the Opponent’s Trade Marks contain additional elements, if the below respective trade marks are not deceptively similar, then it follows that trade marks containing additional and differing elements are also likely to not be deceptively similar. The trade marks for comparison are:
| Opponent’s plain text Trade Marks | Trade Mark |
| PayPal | PayPool |
The Opponent’s plain text Trade Marks consist of the words ‘Pay’ and ‘Pal’ which have been joined together to form a single expression but with two capitalised letter ‘P’s. This is to emphasise to consumers that that the expression is for two words ‘Pay’ and ‘Pal’ which also aids in how the consumer is to read and pronounce the expression. Both words have distinct and easily understood definitions that the average Australian consumer would understand. The Trade Mark is for the two words ‘Pay’ and ‘Pool’ which have been joined together to form a single expression but with two capitalized letter ‘P’s. The format of the Trade Mark also emphasises to consumers that the expression is two, easily understood and pronounced words which have been joined together.
Looking at the Trade Mark it is clear that the respective trade marks share the same word ‘Pay’ at the beginning of them and contain a second word that beings with the letter ‘P’ and ends with the letter ‘L’. However, even though these similarities are present in the respective trade marks, I am not persuaded that the Trade Mark is deceptively similar to the Opponent’s plain text Trade Marks.
The Opponent has argued:
First, the trade marks are visually very similar. Both the Application and each of the PayPal Solus Marks consist of two syllables. The PayPal Solus Marks consist of six letters, while the Application contains seven. The first syllable in each trade mark is identical, being the prefix PAY. The second syllable in each is very similar, being the suffixes PAL and POOL. In addition, the Application adopts the same alliterative use of two capital P’s used by the PayPal Solus Marks[6].
Secondly, the trade marks are aurally very similar. Phonetically, each trade mark features the double use of the plosive ‘p’ sound. In both cases, the first (and most important – see paragraph 32 above) syllable is identical, being the word ‘PAY’. In both cases, the second syllable begins with the same plosive ‘p’ sound and ends with an ‘l’ (dark L) sound.
Thirdly, when the effect of spoken description is taken into account, the two sets of trade marks are almost identical. This is particularly important given the acknowledged tendency of persons using the English language to slur the termination of words. Applied in this instance, the double “o” sound in the Application becomes much closer, and almost aurally identical to the PayPal Solus Marks. A slurred pronunciation of PayPool would sound like “Pay-Pel”, a sound that is almost indistinct from “Pay-Pal”.
Fourthly, the degree of similarity between the two sets of trade marks is such that, even if consumers were able to discern that the Opponent’s PAYPAL marks on the one hand and the Application on the other comprise different words, there is nevertheless a real likelihood of ‘contextual’ or ‘conceptual’ confusion. That is, there is a real likelihood that consumers would consider the Application to be yet another example of a trader offering a new service, related to its existing service(s), under and by reference to a trade mark that is similar but not identical to its existing trade mark.
Finally, there are several closely analogous decisions of the Federal Court and the Registrar that have resulted in findings of deceptively similarly. Specifically, SOLARHUT and SOLAHART were found to be deceptively similar[7], as has SKYPOL and SKYPAL[8]. Both cases feature two sets of trade marks with substantially the same pattern of similarity under consideration here (identical prefixes, differing only in the vowel of the one-syllable suffix). While each case turns on its own facts, both cases suggest that the degree of resemblance between each of the PayPal Solus Marks and the Application is such as to cross the threshold of deceptive similarity.
…Accordingly, the overall impression created in the minds of consumers viewing the Application and the impression based on an imperfect recollection of each of the PayPal Solus Marks is such that there is a real tangible danger that a number of persons will be “caused to wonder” whether the Applicant’s services come from the same source as the Opponent’s services. Ordinary persons would at least “entertain a reasonable doubt”.
[6] In this regard, the Opponent’s registrations TM 895146 and 2118961 for PAYPAL in block capitals allows the Opponent to use that word in any clearly legible form, including ‘PayPal’: Morny Ltd’s Trade Marks (1951) 68 RPC 131, 149 (Jenkins LJ); see also eg Crossfit Inc v Bossfit Pty Ltd [2017] ATMO 74 [16].
[7] Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700 [40] (Perram J).
[8] Carl Zeiss AG v Zhang Yimin [2009] ATMO 69 [27]-[28].
However, I am not persuaded by this reasoning. As already discussed, the prefix PAY- is the common element in all the trade mark representations. This term is indicative to the average Australian consumer that the financial payment services offered by the Applicant and Opponent involve ‘paying’ in one way or another. It is also an expression which other traders dealing in financial services are likely to use in the ordinary course of their business. The use of such a prima facie non-distinctive term within each of the trade marks is unlikely to cause the potential consumer to wonder whether the trade marks are related.
The Applicant has argued:
Although both trademarks incorporate the prefix "PAY"—a generic term ubiquitously employed in everyday commerce—the suffixes “POOL” and “PAL” are markedly distinct both in concept and phonetics. Additionally, the discernible differences in our logo's design, font choice, color scheme, and overall branding further emphasize the unique identity of Paypool in contrast to PayPal. The inclusion of "POOL" in "PayPool" underscores its distinctive feature of consolidating funds, a functionality that stands apart from PayPal's peer-to-peer transactions, BNPL schemes, and other of its consumer services.
I agree with the Applicant.
Applying all the considerations relevant for an assessment of s 44, I am not satisfied the Trade Mark is deceptively similar to any of the Opponent’s Trade Marks, plain text or otherwise. This is particularly when the trade marks are considered, as they must be, as wholes. To refuse the Trade Mark because of the common and descriptive prefix Pay- would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[9].
[9] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).
In this case, the respective trade marks are all structured similarly. PayPal and PayPool both contain a combination of what may be perceived by the average Australian consumer to be a descriptive term; Pay- describing what the services are for doing. The Trade Mark is also structured similarly using the descriptive prefix Pay- followed by the word -Pool which may be descriptive of the nature of how the payment is offered. Given the descriptive nature of the respective terms used in the Trade Mark and the Opponent’s plain text Trade Marks, they become an allusion to the different types of financial payment services offered. These are all different ideas and the small changes in those visual, aural and cognitive cues are all important and carry significant weight when considering the respective trade marks. This reasoning continues to all the Opponent’s Trade Marks which contain additional and differing elements which further distinguish the Opponent’s Trade Marks from the Trade Mark.
My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under s 44 has not been made out.
Section 60 - Reputation in Australia
Section 60 of the Act provides:
60 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.
To establish the ground of opposition under s 60 the Opponent relies on its use of and the acquired reputation in the Opponent’s Trade Marks.
Unlike s44 of the Act, s 60 does not require that the services upon which the Opponent uses its Trade Marks be of a specified standard of similarity with the services of interest to the Applicant, nor is there a requirement that the Opponent’s Trade Marks be substantially identical or deceptively similar to the Trade Mark. However, I note from the evidence of both parties that the services of interest to both parties are financial payment services.
It is for me to determine whether the Opponent has established that before 2 August 2022 its PAYPAL trade mark was recognised 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 the Trade Mark would be likely to cause the public confusion.
In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[10]:
[i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.
Justice Kenny continues:
[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …
[10] (2000) 51 IPR 102, 128-129.
In considering whether the Opponent’s Trade Marks have acquired a reputation in its financial payment services, I turn to the Opponent’s evidence of use of the trade marks in Australia. Stearns 1 avers that the Opponent was founded in 1998 and is a leading global online payment company. Through its various websites, including (PayPal Website) and software, the Opponent’s financial payment services provided under the Opponent’s Trade Marks offer consumers a fast, secure and easy way for users to send and receive payments online without sharing financial information, and with the flexibility to pay using their PayPal account balances, bank accounts, credit cards or promotional financing.
Since the Opponent’s platform launched in 1999, it has continuously used the Opponent’s Trade Marks in connection with its goods and services. The Opponent has used its PayPal trade mark in Australia since at least as early as 2000, when the first Australian signed up for a PayPal account. According to Stearns 1, the Opponent’s payment platform is available in more than 200 jurisdictions around the world, including in Australia, which enables consumers and merchants to receive money in more than 100 currencies (including the Australian Dollar), withdraw funds in 56 currencies and hold balances in their PayPal accounts in 25 currencies.
Ms Stearns states that the Opponent has a large and loyal user base, with approximately 435 million active users worldwide as of the end of 2022 and approximately 7 million active customer accounts in Australia[11]. Total revenue generated from the Opponent’s financial payment services in Australia from 2019 until 2022 is very substantial[12]. The advertising, marketing and brand development expenditure are also very considerable[13].
[11] Stearns 1 [5].
[12] Stearns 1 [18].
[13] Stearns 1 [19-23] and exhibits SDS-9 to SDS-11.
The Opponent’s evidence demonstrates a consistent and very large reputation in Australia and the world for its financial payment services. However, I now must determine if the Opponent’s Trade Marks have acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. This is more than the Opponent merely indicating prior use, the Opponent’s trade mark needs to be ‘associated in the minds of the Australian public’[14] to such a degree that confusion is likely. This is the main point of contention between the two parties.
[14] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).
The Applicant has agreed that the Opponent has a very significant reputation in its financial payment services. However, the Applicant has argued that there is no reputation solely in the word PAY- such that the use of the Trade Mark on its financial payment services would deceive or cause confusion.
Mr Muse also argued that the Trade Mark is for the combination of the two words ‘Pay Pool’ and that there are substantial differences between the Opponent’s Trade Marks and the Trade Mark even though they share the prefix Pay-. This is because ‘Pay’ is a common, descriptive and well understood term used by financial services providers for a number of financial services[15].
[15] Muse [11, 14].
I am reminded of Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd[16] where Justice Stephen[17] said:
[t]here is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensure that it is not distinctive of any particular business and hence its application to other like business will not ordinarily mislead the public… quite small differences in a competitor’s trade name will render the latter immune from action…
[16] (1978) 140 CLR 216, 229-230.
[17] With Barwick CJ and Jacobs and Aickin JJ concurring. See also, Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [167] (Yates, Stewart and Rofe JJ) where descriptive elements were relevant considerations for the court’s section 44 comparison.
The degree of distinctiveness of the element or elements shared by the parties’ respective trade marks under comparison, in this case the prefix PAY, is limited. The likelihood of relevant deception or confusion is in my view very low. There are immediately obvious visual, aural and semantic differences between the parties’ marks when considered as wholes. The marks as wholes do not look alike, nor do they sound alike apart from the prefix, in my estimation.
While I do agree that it is important to consider possible notional use of the Trade Mark, that is to consider ‘what the [A]pplicant can do if registration is obtained’,[18] the evidence before me does not suggest the Applicant’s intention is to mimic the manner in which the Opponent’s Trade Marks are rendered and judicial commentary in this regard indicates I must assume use of an opposed mark in a ‘fair and reasonable manner’[19] and by reference to the use to which [the Applicant] can properly put [his] trade mark’[20].
[18] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
[19] Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, 101 (Evershed J).
[20] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362 (Mason J).
In considering the respective trade marks it becomes clear that the only similarity between them is the prefix element PAY-. Mr Tsang, Counsel for the Opponent, has argued that a similarity of idea, impression and language would give rise to a real risk that consumers might have cause to wonder that the Trade Mark used on the Applicant’s services was somehow related to the Opponent’s services. He cited the case of Rodney Jane Racing Pty Ltd v Monster Energy Company[21] in support of his argument. However, I am not persuaded by this reasoning.
[21] [2019] FCA 923; 142 IPR 275 [83].
Where trade marks share a descriptive element, small differences between the marks will take on and have greater emphasis when considering the differences between the trade marks. When the trade marks are considered as wholes, as they must be, I am not satisfied that use of the Trade Mark will lead a significant number of consumers to experience a reasonable doubt[22] as to the existence of some sort of connection between the Opponent’s Trade Marks and the Trade Mark. Nor am I satisfied there would be a real and tangible danger of confusion arising[23] between the respective trade marks.
[22] Southern Cross (n 36) 594-5 (Kitto J).
[23] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).
The Opponent has accordingly not established its ground of opposition under s 60.
Section 42(b) – Contrary to Law
Section 42(b) of the Act is reproduced below:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
I have found that the use of the Trade Mark is not, at a minimum, likely to ‘deceive or confuse’ under s 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive. I thus find that the Opponent has not established the ground of opposition under s 42(b).
Section 62A – Application made in bad faith
Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Justice Bennett in DC Comics v Cheqout Pty Ltd[24] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [25], wherein her Honour commented:
Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in the United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…
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.
[24] [2013] FCA 478; (2013) 101 IPR 334.
[25] [2012] FCA 81; (2012) 94 IPR 551, [164].
The Opponent has based its bad faith ground of opposition on the basis that given the Opponent’s history of use of, and reputation in its trade mark it is clear that the Trade Mark is likely to be recognised in Australia as a trade mark related to the Opponent. The Opponent has argued that the Applicant’s explanation for the adoption of the Trade Mark in light of the Applicant’s acknowledgment of the Opponent’s significant reputation doesn’t make sense. Instead, the Opponent argues:
The more compelling inference is that the Applicant, having determined at an early stage that its ‘Chippit’ product might eventually include functionalities such as those offered by the Opponent’s PayPal platform (viz. payment processing services including e-wallet payment services, transaction card services, and exchange and transmission of cryptocurrencies), was motivated by a desire to closely associate itself in the minds of consumers, merchants and capital investors with the Opponent and/or the Opponent’s PAYPAL Marks. In other words, the Applicant quite plainly desired to ‘free ride’ on, or take advantage of, the accumulated goodwill, success and reputation of the Opponent’s PAYPAL Marks.
The Opponent submits that, viewed objectively, the Applicant’s conduct demonstrates a conscious and deliberate intention to take advantage of the established reputation and goodwill in the Opponent’s PAYPAL Marks. This conduct falls well short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.
The Applicant submits that in July 2022, it embarked on its journey to finalise both its company name and the primary feature of its financial payment services product. Muse states:
Chippit's (the Applicant’s) product is designed to enable individuals with fraternal or familial ties to establish money pools for mutual lending, whether on a rotational or flexible basis. Intrinsically, these loans are interest-free. However, the group possesses the discretion to introduce interest-based lending among its members. The name "Chippit" was chosen, signifying "chipping into the pool," as it aptly captures the essence and functionality of our product.
In a bid to broaden the pool's utility beyond intra-group lending, we recognised the potential for group members to effectuate payments collectively from the pool. Consequently, our team introduced the derivative term "Pay Pool" on the 15th July 2022 to encapsulate this functionality. Documentation with corresponding timestamps, provided as evidence, attests to the originality of this nomenclature[26].
During our naming process, the team explored numerous potential brand names, eventually narrowing our choices down to Co-pay, Peer Wallet, and PayPool. We decided against the name Co-pay, given the prevalent use of the 'Pay' suffix in numerous financial brand names. Upon researching, we discovered that the registration for 'Peer Wallet' was not feasible due to its generic nature and other traders are likely to use it in their normal course of trade. However, further investigations revealed the name 'Pay Pool' was available for registration, leading us to finalise it.
[26] Muse [6-8] pages 6-10 accompanying the declaration
I agree with the Applicant. The Applicant’s evidence provides details of the adoption of the Trade Mark and given the low distinctiveness of the word Pay, the Applicant’s reasons for adopting the Trade Mark and the process it went through sounds reasonable. There is nothing in the Opponent’s evidence that might support an argument that the Applicant filed the Application in bad faith. At any rate, ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith’[27].
[27] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
As such, I am not persuaded that the Applicant applied for the Trade Mark in bad faith. Therefore, the Opponent has not established the ground of opposition under s 62A.
Decision
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.
The Opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.
Costs
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 Opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 November 2024
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