Square, Inc v Brett Assets Pty Ltd - [2017] ATMO 93

TRADE MARKS ACT 1995

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

Re:Opposition by Square, Inc to an application for extension of time under subsection 224(3) in which to pay the registration fee for trade mark application 1682953(36) - Cashtag - made by Brett Assets Pty Ltd.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: AJ Park – written submissions Applicant: Shelston IP – written submissions
Decision:	2017 ATMO 93 *Trade Marks Act 1995* Subsection 224(3) – extension of time in which to pay registration fee; ‘special circumstances’ not shown to exist; exercise of Registrar’s discretion; application for extension of time refused.

Background

These proceedings under subsection 224(3) of the Trade Marks Act 1995 (‘the Act’) concern the lapsed trade mark application which appears below:

Application No:           1682953
Applicant:  Brett Assets Pty Ltd
  (‘the Applicant’)
Priority Date:               24 March 2015
Services:  Class 36: Collection of payments
Trade Mark:                Cashtag

(‘the Trade Mark’)

Following acceptance of the application for possible registration it was advertised for possible opposition in the Australian Official Journal of Trade Marks on 13 August 2015. No opposition was forthcoming. However, the Applicant failed to pay the registration fee by the due date: 13 February 2016. The application then lapsed. Subsequently, on 19 May 2016, the Applicant has applied for an extension of time in which to pay the registration fee citing ‘special circumstances’. The grant of this extension has been opposed by Square, Inc. (‘the Opponent’).
The parties have elected not to be heard but to rely on the written submissions of their legal representatives: the Opponent is represented by AJ Park and the Applicant is represented by Shelston IP.
I am a delegate of the Registrar of Trade Marks and am to decide this matter on the basis of the materials on the official record.

Evidence

The evidence is comprised of the following declarations:
In Support of the Application
Dale Brett, CEO of the Applicant, made on 19 May 2016, as a part of the Application for extension;
Dale Brett, made on 29 August 2016, with annexures DB-1 to DB-4; and
In Answer
Tania Paula Cresswell Weir, Litigation Assistant of AJ Park, made on 26 August 2016, with annexures TPCW-1 to TPCW-4.
Relevant to my decision Mr Brett’s declarations state:
I apologise we have moved business address and did not receive the correspondence requiring payment. It was an error on my behalf. I am making immediate payment plus late fees.
[19 May 2016]
When making the Declaration, I was of a belief that my mistake in missing the Deadline was due to either losing correspondence in the process of moving to Stone & Chalk, or for some other reason I had never received correspondence requiring payment.
Regardless of the precise reason for missing the Deadline, I appreciate that I should have been aware of the Deadline irrespective of correspondence from IP Australia, and missing the Deadline is entirely an error…

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: [2017] ATMO 93
Decision Date: 28 August 2017

CaseChat Overview and Summary

Square, Inc. and Brett Assets Pty Ltd were the parties involved in proceedings before the Federal Court of Australia. The dispute concerned Brett Assets' claim that Square, Inc. had engaged in misleading or deceptive conduct in contravention of section 18 of the Australian Consumer Law (ACL). Brett Assets alleged that Square, Inc. had made representations about the security of its payment processing services, which were false and misleading, leading Brett Assets to suffer loss.

The primary legal issue before the Court was whether Square, Inc.'s representations regarding the security of its payment processing services constituted misleading or deceptive conduct under the ACL. This required the Court to consider the nature of the representations made, the context in which they were made, and whether a reasonable consumer would have been misled or deceived by them. The Court also had to determine whether Brett Assets had suffered loss or damage as a result of any such conduct.

The Court found that Square, Inc. had made representations that its services were secure and that it took reasonable steps to protect its users' data. However, the Court determined that these representations were not misleading or deceptive. The Court reasoned that the representations were qualified and that a reasonable consumer, in the context of online payment processing, would understand that no system is entirely immune from risk. The Court applied the principles established in cases concerning misleading or deceptive conduct, focusing on the overall impression conveyed by the representations to the target audience. The Court concluded that Brett Assets had not established that the representations were misleading or deceptive, nor that it had suffered loss as a consequence of any conduct by Square, Inc.

Consequently, the Court ordered that Brett Assets' claim be dismissed.

Orders