PayPal, Inc v Chippit Financial Pty Ltd - [2024] ATMO 233

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.

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: [2024] ATMO 233
Decision Date: 29 November 2024

CaseChat Overview and Summary

This decision concerns an application for trade mark registration by PayPal, Inc. (the Applicant) and an opposition lodged by Chippit Financial Pty Ltd (the Opponent). The matter came before Bianca Irgang, acting as Registrar.

The primary legal issue before the Registrar was whether any of the grounds of opposition raised by Chippit Financial Pty Ltd had been established, thereby preventing the registration of PayPal, Inc.'s trade mark.

The Registrar determined that the Opponent had failed to establish any of the grounds upon which the opposition was based. Consequently, pursuant to section 55 of the relevant Act, the Registrar decided to allow the trade mark application to proceed to registration, subject to a one-month waiting period from the date of the decision. The Registrar further directed that registration would be stayed pending the outcome of any appeal. Costs were awarded against the Opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for 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. 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.

Ratio Decidendi

Legal Principle Established

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