Tencent Holdings Limited v WePay Inc

[2018] ATMO 117

TRADE MARKS ACT 1995

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

Re:Oppositions by Tencent Holdings Limited to registration of trade mark applications 1701672 (35, 36, 42 and 45) – WEPAY and 1752845 (9, 35, 36, 38, 42) – WEPAY & Device - in the name of WePay, Inc.

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 117

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42 and 60 considered – neither established – trade mark to proceed to registration

Background

1.  These are oppositions brought by  Tencent Holdings Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade marks (collectively, the ‘Trade Marks’) which are the subject of the applications detailed below in the name of WePay, Inc. (‘Applicant’). 

Application Number:	1701672
Filing Date:	19 June 2015
Services:	Class 35: Promoting the goods and services of others by hosting micro websites for businesses; Business information management, namely, electronic reporting of business analytics relating to payment processing, tracking, and invoicing; Business management relating to business optimization; Invoicing services Class 36: Managing and tracking credit card, debit card, automated clearing house (ACH), prepaid cards, payment cards, and other forms of payment transactions via electronic communications networks for business purposes; financial risk assessment and reporting Class 42: Cloud computing; Software as a service (SaaS); Hosting of software as a service (SaaS); Providing temporary use of on-line non-downloadable computer software for payment processing, tracking, and invoicing; Providing temporary use of on-line nondownloadable authentication software for controlling access to and communications with computers and computer networks; online provision of web based software (non-downloadable) for creating and hosting micro websites for businesses; Computer services, namely, providing application programming interfaces (APIs) that allow users to consolidate and manage payment processing, tracking, and invoicing for the users' own customers, as well as for the users themselves; Providing computer programming services to customers for the creation of payment and donation options on the customer website; Providing computer programming services to customers to facilitate sales through customer websites, namely, by providing online invoicing, on-site checkout buttons, virtual terminal, and application programming interfaces (APIs); Providing nondownloadable software, platform as a service services, and application programming interfaces for financial risk assessment and reporting, fraud detection, identity verification, and for verifying the background, training, qualifications and capabilities of individuals and businesses; Providing nondownloadable software, platform as a service services, and application programming interfaces for monitoring of credit reports, the Internet, and public records to facilitate the detection and reporting of fraud and to provide identity verification services, and for verifying the background, training, qualifications and capabilities of individuals and businesses; Providing nondownloadable software, platform as a service services, and application programming interfaces for monitoring, reporting, and assessing risks, identification verification, and for verifying the background, training, qualifications and capabilities of individuals and businesses in connection with online financial transactions; Providing computer programming services to customers to facilitate sales through customer websites, namely, by providing fraud detection and reporting and identity verification, verification of the background, training, qualifications and capabilities of individuals and businesses, monitoring and assessing risks related to online financial transactions, and application programming interfaces (APIs) Class 45: Fraud detection, reporting and identity verification services, and verification of the background, training, qualifications and capabilities of individuals and businesses; Fraud detection, reporting and identity verification services, and verification of the background, training, qualifications and capabilities of individuals and businesses in the field of online payments; identity verification, and verification of the background, training, qualifications and capabilities of individuals and businesses; Monitoring of credit reports, the Internet, and public records to facilitate the detection and reporting of fraud, to provide identity verification, and for verifying the background, training, qualifications and capabilities of individuals and businesses services; Providing fraud detection and identity verification services, and for verifying the background, training, qualifications and capabilities of individuals and businesses in connection with electronic funds transfer, credit and debit card and electronic check transactions; Monitoring, reporting, and assessing risks, and identification verification, and verification of the background, training, qualifications and capabilities of individuals and businesses in connection with online financial transactions
Trade Mark:	WEPAY	(‘Trade Mark’)
Application Number:	1752845
Filing Date:	17 February 2016
Priority Date:	24 August 2015 (Convention)
Goods and Services:	Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Computer software for processing electronic payments, financial donations, crowdfunding, and transferring funds to and from others; Authentication software for controlling access to and communications with computers and computer networks; Software for making and processing payment transactions with credit cards, debit cards, Automated Clearing House (ACH), prepaid cards, payment cards, and other payment forms; Software for making and processing financial donations and crowdfunding with credit cards, debit cards, Automated Clearing House (ACH), prepaid cards, payment cards, and other payment forms; Financial software for accepting, effecting, enabling, facilitating, processing, operating and managing payment transactions, financial donations, and crowdfunding on mobile devices, handheld computers, tablets, and other point of sale systems; Analytic tools, namely, software for payment processing, tracking, and invoicing; Computer software for businesses and organizations, namely, software for use in enabling, operating, and managing customer relations; Computer software for mobile phones, portable media players, handheld computers, tablets, namely, software for processing electronic payments, financial donations, crowdfunding, and transferring funds to and from others Class 35: Invoicing services; Advertising; Business management; Business administration; Office functions; Promoting the goods and services of others by hosting micro websites for businesses; Business information management, namely, electronic reporting of business analytics relating to payment processing, tracking, and invoicing; Business management relating to business optimization Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs; Financial services; Financial services, namely, electronic funds transfer via electronic communications networks; Financial clearing; Clearing and reconciling financial transactions via electronic communications networks; Payment processing; Providing payment and financial services, namely, processing and transmission of invoices and payments thereof and processing and transmission of financial donations and crowd funding, all conducted via a global communications network; Processing of payment transactions via the Internet; Financial services, namely, credit card, debit card, Automated Clearing House (ACH), prepaid cards, and payment card transaction processing services; Accepting, processing, and reconciling credit card, debit card, Automated Clearing House (ACH), prepaid cards, payment cards, and other forms of payment transactions; Fraud reimbursement services in the field of credit card and debit card purchases; Financial management of reimbursement payments for others; Financial risk management; Providing financial risk management services for electronic funds transfer, credit, debit card, Automated Clearing House (ACH), prepaid cards, payment cards, and other forms of payment via a global computer network; Managing and tracking credit card, debit card, Automated Clearing House (ACH), prepaid cards, payment cards, and other forms of payment transactions via electronic communications networks for business purposes Class 38: Telecommunications; Electronic transmission services; Electronic data transmissions; Electronic data communications; Providing electronic transmission of payment transactions data and related information and merchant-customer communications; Providing electronic transmission of financial and business information between and among customers and businesses Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Providing temporary use of non-downloadable computer programs; Providing temporary use of non-downloadable business software; Providing temporary use of non-downloadable software applications accessible via a website; Providing temporary use of non-downloadable software for importing and managing data; Providing temporary use of on-line non-downloadable computer software for payment processing, tracking, and invoicing; Providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks; Website hosting services; Creating and hosting micro websites for businesses via an online website; Computer support services (computer software and peripherals advisory and information services); computer support services (programming, software installation, repair and maintenence services); computer advisory services; computer consultancy services; computer software design services; Computer services, namely, providing application programming interfaces (APIs) that allow users to consolidate and manage payment processing, tracking, and invoicing for the users' own customers, as well as for the users themselves; Computer programming; Providing computer programming services to customers for the creation of payment and donation options on the customer website; Providing computer programming services to customers to facilitate sales through customer websites, namely, by providing online invoicing, on-site checkout buttons, virtual terminal, and application programming interfaces (APIs)
Trade Mark:	(‘Composite  Mark’)

2.  Following the examination process, the trade mark applications’ acceptance for possible registration was advertised on 4 August 2016 in the Australian Official Journal of Trade Marks.  The Opponent filed a Notice of Intention to Oppose on 30 September 2016 in respect of both trade mark applications.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 25 October 2016. The SGP raised grounds of opposition under ss 42(b) and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 6 December 2016.

3.  Neither party filed any evidence or submissions in respect of the opposition.

4. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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 applications were opposed has been established.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs, which in this case consists of the SGP.

The Parties

5.  As neither party has provided any evidence, I cannot provide any information about the parties other than what is set out on the Register, namely that the Applicant is a company based in the United States that has applied for the Trade Marks. 

6.  The Opponent is the applicant for registration of the trade mark set out below (‘Opponent’s Trade Mark’).  The examination process for the Opponent’s Trade Mark is currently deferred, awaiting the outcome of the present opposition.

Number	Trade Mark	Priority Date	Goods and Services
1730218	23 Oct 2015	Class 9: Computer hardware and software for facilitating on-line commercial transactions; billing application software specifically designed to facilitate automated payment of multiple bills; on-line and off-line electronic payment apparatus; authentication and authorization software; bank credit, debit, cash, cheque and identification cards, all being encoded or magnetic; electronic cards and stored value cards; encoded cards used in relation to the electronic transfer of funds and other financial transactions; cash payment service computer terminals; computers; computer peripheral devices; sound recording strips; PDA (personal digital assistant); disks, magnetic; books in electronic form; computer keyboards; computer mouse; CD-ROM disks recorded with computer program; electronic pocket translators; digital audio-video CD-ROMs; mobile phones; computer programs; computers and computer hardware components; network communication apparatus Class 36: Electronic payment transactions; electronic billing and payment services; electronic transfer of funds; processing of payments to and from others conducted via a global communications network; providing secure financial transaction in the nature of electronic cash transactions, electronic credit card transactions, electronic debit transactions, electronic check processing transaction and electronic transmission of bill payment data via a global computer network; Internet-secure electronic transaction solutions for e-commerce namely processing electronic custody, banking, cash management, trade finance transactions and payments; automated payment of accounts provided on-line from the Internet; electronic payment card services; financial administration services; financial services accessible on-line via digital computer networks; issuance of stored value cards; financial advisory services; arranging of financial loans; insurance; financial affairs; monetary affairs; real estate affairs Class 38: On-line electronic transmission services for use in handling of secure payment transactions; pay-mobile telephone communication services; providing computer links to third party web sites to facilitate e-commerce and real world business transactions; transmission (including on-line transmission) of financial transactions; providing multiple-user access to a global computer network; electronic mail; telephone services; Internet protocol transmission services; communications via fiber-optic networks; providing access to computer bulletin boards and real-time chat forums; instant messaging services; telecommunications; providing access to computer information through a global network Class 42: Designing, creation and hosting of bill payment websites; design and development of computer hardware and software for authentication of identity; computer consultancy services relating to electronic business transactions; maintenance and upgrading of computer networks; computer network and time-sharing services; updating of game software in the Internet; hosting computer sites (web sites); creating and maintaining web sites for others; design and development of web pages; rental of web servers; providing search engines for the internet; computer programming; computer system software services; conversion of data or documents from physical to electronic media; computer development services for Intranet and web-based portals; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software

Grounds of Opposition, Onus and Standard of Proof

7. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42, and 60 of the Act. To successfully oppose the applications the Opponent needs to establish at least one of those grounds.

8.  The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 19 June 2015 for the Trade Mark and 24 August 2015 for the Composite Mark, being the filing date of the application in Australia for the Trade Mark and the convention priority date for the Composite Mark (‘relevant dates’).[3]

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32], see also Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [2006] FCA 1663, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

9. As the Opponent has filed no evidence and provided no submissions I have no hesitation deciding that the Opponent has not discharged the onus on it and has consequently not to any extent established the s 60 ground of opposition nominated in the SGP since the s 60 ground of opposition requires evidence of a reputation in a nominated mark. The mere filing of the Notice of Opposition without any supporting evidence or submissions does not serve to place the onus on the Applicant to defend its application.[4]

[4] Medley Distilling Co v Croakers Gully Australia (2000) 53 IPR 430, 433.

Discussion

Section 42

1. Section 42 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.

2. The Opponent particularised this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[5]  The relevant time for assessing whether an application is contrary to law is at the relevant dates but ‘looking forward to prospective conduct after registration’.[6]

   [5] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [6] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 59 IPR 343, 353.

3. The Opponent has particularised the ground of opposition in the SGP as follows 

   (a) The Opponent has established a reputation in Australia in the Opponent’s Trade Mark in relation to the Opponent’s Goods and Services.

   (b) As a result of this reputation, use of the Opposed Trade Mark in respect of the services in Classes 35, 36, 42 and 45 would be misleading and deceptive or likely to mislead or deceive, a false or misleading representation that the Applicant and the claimed services have the sponsorship and approval of the Opponent.

   (c) Accordingly such use would be contrary to law pursuant to the common law principle of passing off and sections 18 and 29 of the Australian Consumer Law as set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth).

1. As the Opponent has filed no evidence of the Opponent’s reputation in Australia in respect of any trade marks it owns, it has failed to establish that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Decision

1. The Opponent has failed to establish  either of the grounds of opposition it nominated in the SGP.  Trade Mark application nos. 1701672 and 1752845 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the applications should be in accordance with the Court’s order or direction.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

24 July 2018