PayPal, Inc. v Credibanc Pty. Ltd

[2011] ATMO 76

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 1266640(36) - CashPal - filed in the name of Credibanc Pty. Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent:  Melissa Marcus of Counsel, instructed by Mallesons   Stephen Jaques, Solicitors

Applicant:     Not represented

Decision:

2011 ATMO 76

Section 52: Pursued grounds under ss42(b), 44 and 60 – s44 established since trade marks under comparison found to be deceptively similar - registration refused – costs awarded against the applicant.

Background

1.     Credibanc Pty. Ltd. (‘the applicant’) applied for registration of a trade mark, current details of which are:

Application No: 1266640

Priority Date:  10 October 2008

Services:  Class: 36 Advice on finance for retirement; advisory services

relating to finance; advisory services relating to investment finance; consultancy services relating to finance; consultancy services relating to personal finance; corporate finance consultancy; corporate finance services; finance leasing; lease purchase finance; management of finances; personal finance services; project finance; providing finance for credit sales; provision of commercial finance; provision of equipment finance; provision of finance; provision of lease-purchase finance facilities; provision of trade finance; raising of finance; trade finance services; advice regarding credit; advisory services relating to credit; collection of credit sales; consultancy services relating to credit; consultations relating to credit; consumer credit services; co-operative credit society services; credit (financing); credit account insurance brokerage; credit bureaux; credit card registration services; credit card services; credit insurance underwriting; credit union services; export credit management; financial credit services; instalment credit financing; insurance services relating to credit; issuance of credit cards; issue of credit cards; issue of letters of credit; issuing of credit cards; issuing of letters of credit; preparation of credit rating reports; preparation of credit reports; providing finance for credit sales; provision of consumer credit; provision of credit; provision of credit cards; provision of credit facilities; provision of credit information; provision of credit rating; provision of credit rating reports; provision of trade credit; revolving credit securities; revolving credit services; sales credit financing; advice relating to loan recovery services; advisory services relating to loan services; financial loan services; financing of home loans; financing of personal loans; guaranteed loans; guaranteeing loans; instalment loan financing; instalment loans; loan financing; loan guarantees; loan services; loan services for property investment; loans (financing); loans against securities; mortgage loan services; mortgage loans; personal loan services; provision of bridging loans; provision of commercial loans; provision of consumer loans; provision of home loans; provision of industrial loans; provision of instalment loans; provision of loans; provision of mortgage loan insurance; provision of mortgage loans; provision of real estate loans; provision of secured loans; revolving loan services; secured loans; syndicated loans; cash card services; cash disbursement services; cash dispenser services; cash dispensing services; cash management; cash processing; cashing of personal cheques; cheque cashing services; dispensing of cash; issuing of cash vouchers; provision of emergency cash

(‘the services’)

Trade Mark:  CashPal

2.     Following examination, the application was accepted for possible registration and advertised as such in the Official Journal of Trade Marks on 12 February 2009.

3.     After an extension of time for doing so, PayPal, Inc. (‘the opponent’) filed a Notice of Opposition on 12 August, 2009 under section 52 of the Trade Mark Act 1995 (‘the Act’), opposing the registration of the trade mark.

4.     The opponent duly served and filed evidence in support, comprising a statutory declaration of Mike Yaghmai dated 18 August 2010 and a statutory declaration of Leslie Tilly dated 19 August 2010.  The applicant did not file evidence in answer to the opposition.

5.     The opponent asked to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Sydney on 7 June, 2011.  The opponent was represented by Melissa Marcus of Counsel, instructed by Mallesons Stephen Jaques, Solicitors.  The applicant was not present or represented at the hearing but instead relied on written submissions which are discussed where relevant below.

Discussion

6.     The Notice of Opposition cited most grounds of opposition available to the opponent under the Act however in submissions the opponent limited its grounds of opposition to those under sections 42(b), 44(2) and 60.  For the sake of completeness, I treat the remaining grounds of opposition listed in the Notice of Opposition as having been abandoned.

7.     After reviewing the precedents in Pfizer Products Inc v Karam [2006] FCA 1663, in particular whether such matters should be decided in summary manner only on clear proof, Gyles J said of the onus in trade mark oppositions:

I am faced with the clear words of the statute, on one hand, and the opinions of various judges, on the other. There is no binding Full Court authority. I cannot find any instance where a single judge has actually applied the higher standard. In my opinion, in this case, comity does not demand that I depart from my view as to the meaning of the statute. ‘The fundamental responsibility of a court when it interprets a statute is to give effect to the legislative intention as it is expressed in the statute’ per Mason J in Babaniaris v Lutony Fashions Pty Ltd [1987] HCA 19; (1987) 163 CLR 1; cited with approval by Mason CJ, Wilson, Dawson, Toohey and Gaudron JJ in John v Federal Commissioner of Taxation [1989] HCA 5; (1989) 166 CLR 417 at 439. I will, therefore, approach the matter on the basis that the opponent has to establish a ground of opposition, although not clearly establish such a ground, whether in a summary fashion or otherwise.

8.     The opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.  See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

9.     It was clear at the hearing that the opponent felt that its case under section 44(2) of the Act was soundly grounded.  The applicant’s written submission also centre on matters critical to section 44.  For these reasons, I will approach this ground of opposition first.

10.   Section 44(2) of the Act provides:

(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.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

11.   The opponent is the registered proprietor of, inter alia, the following Australian trade mark registrations:

No.	Trade Mark	Reg. Date	Services
895146	PAYPAL	15 Nov 2001	Class 36: Clearing and reconciling financial transactions via a global computer network; providing a wide variety of banking services and providing financial services, credit card services, processing and transmission of bills and payments thereof, and insurance for financial transactions
941392	29 Jan 2003	Class 36: Clearing and reconciling financial transactions via a global computer network; providing a wide variety of payment services and providing financial services, including credit card processing and transmission of bills and payments thereof, conducted via a global computer network
1171776	19 April 2007	Class 36: Insurance; monetary affairs; real estate affairs; financial affairs including enabling transfer of funds and purchase of products and services offered by others, all via electronic communications networks, clearing and reconciling financial transactions via electronic communications networks, providing a wide variety of payment and financial services, including, credit card services, issuing credit cards and lines of credit, processing and transmission of bills and payments thereof, payment services, providing guaranteed payment delivery and money market funds

(‘the registrations’)

12.   In terms of section 44, each of the registrations has an earlier priority date than that of the application.

13.   Section 14(2) of the Act provides that services are similar to other services if they are the same as the other services or if they are of the same description as the other services.  Registration nos. 895146 and 941392 include the service of “providing financial services” whilst registration no. 1171776 includes “providing a wide variety of payment and financial services”.  Those generic terms encompasses all of the services of the application.  For the purposes of section 44, the respective services are similar, if not the same.  The fact that, in practice, the applicant might be offering services or conducting a business somehow distinguishable from the services or business of the opponent is immaterial to the question to be determined under section 44(2) of the Act which hinges on a comparison of the services of the application with the services covered by the registrations.

14.   The only remaining question is whether the trade mark of the application is substantially identical or deceptively similar to one or more of the trade marks of the registrations.

15.   The opponent conceded that the trade mark of the application was not substantially identical to any of the trade marks of the registrations, but argued that it was deceptively similar to all of them. 

16.   The opponent directed my attention to the definition of deceptive similarity in section 10 of the Act and to the classic test propounded by Windeyer J in Shell Co. of Australia v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415.

17.   My attention was also drawn to the authorities holding that a trade mark will be found to be deceptively similar to another trade mark if it takes a prominent and distinctive feature of that mark[1], that most persons recall a trade mark by general impression[2] and that commonality in the idea of two trade marks will sometimes have as much influence on a person as visual and phonetic similarities[3].

[1] Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; De Cordova v Vick Chemical Co. (1951) RPC 271; Saville Perfumery Ltd v June Perfect Ltd (1941) 1B IPR 44; Polaroid Corp. v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498

[2] De Cordova v Vick Chemical Co. (1951) RPC 271.

[3] Jafferjee v Scarlett (1937) 57 CLR 115, per Latham CJ at 121-2.

18.   As I understand its written submissions, the applicant on the other hand reasons that the opponent’s trade mark is composed of generic terms over which it has no exclusive rights.   At one point the applicant writes that “the common use of the word ‘Pal’ by both companies cannot exclusively be claimed by a party.”

19.   In my opinion, there is no doubt that the impression conveyed by the trade mark CashPal is such that there is a very real likelihood that people viewing or hearing the two marks PayPal and CashPal will wonder or be left in doubt as to whether the two sets of services come from the same source.

20.   The registrations I am content to consider are nos. 941392 and 1171776.  For the purpose of determination of the question of deceptive similarity, the only stylization of the registered trade marks which is noteworthy is the initial capitalization of the words “Pay” and “Pal” which, conjoined, form the trade marks.  The trade mark of the application, CashPal, adopts the same stylization.  The word “Pay” means to give money and the word “Cash” is a synonym for money.  The word “Pal” is a colloquialism meaning a friend or “buddy”.  It is not a generic expression.  Set in the context of financial services, it is a quite arbitrary term, but it has been adopted as the suffix of the applicant’s trade mark.

21.   Moreover, as the opponent argued:

the most interesting aspect of [the opponent’s] mark is the idea that it conveys by virtue of the juxtaposition of the words “Pay” and “Pal”.  The word “Pay” is semantically unemotional.  It is part of the vocabulary of commerce.  The word “Pal” is semantically softer.  It is part of the vocabulary of friendship.  The two words have been merged in the Opponent’s Marks to form the coined word “PayPal”. … The juxtaposition of the two words results in a mark that suggests the subtle humanising of a dry commercial act.  The mark conveys the idea that here is a “buddy” who will help you out with a financial process that might otherwise be somewhat inhuman.  It is this interesting combination or juxtaposition of words and the resultant idea to which that combination gives rise which, in the Opponent’s Submission, is a dominant feature of the Opponent’s PayPal mark.

…

the idea conveyed by the Applicant’s Mark is identical (or almost identical) to that of the Opponent’s PayPal mark.  …  the word “Cash” (like “Pay”) is semantically unemotional.  It is part of the vocabulary of commerce.  As in the Opponent’s PayPal mark, this hard commercial word is juxtaposed with the softer word “Pal”, to form the coined word “CashPal”. The resulting idea conveyed by the Applicant’s Mark is almost identical to that of the Opponent’s PayPal mark: a “buddy” who will help you out with a financial process.

22.   I consider the trade mark of the application to be deceptively similar to at least registration nos. 941392 and 1171776.  Accordingly, I find that the opponent has made out all elements required of it under section 44(2) of the Act with the result that it has established this ground of opposition.

23.   With that finding, there is no need for me to consider the remaining grounds of opposition pressed by the opponent.

Decision

24.   Section 55(1) provides:

(1) Unless the proceedings are discontinued or dismissed, 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.

25.   The opponent has established a ground of opposition under the Act. As a result, the applicant is unsuccessful in this matter and I refuse to register trade mark application no. 1266640.

Costs

26. The opponent is successful and there is no reason why costs should not follow the event, as is ordinarily the case. Therefore, I award costs against the applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

8 August 2011