Trade mark application number 2396663 (class 36) – EBC FINANCIAL GROUP - in the name of EBC Financial Group (UK) Ltd

[2025] ATMO 40

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2396663 (class 36) – EBC FINANCIAL GROUP - in the name of EBC Financial Group (UK) Ltd

Delegate:

Tracey Berger

Representation:

Applicant: Patents AU Pty Ltd

Decision:

2025 ATMO 40

Trade Marks Act 1995 (Cth) – s 33 proceeding– ground for rejection under s 39 considered – no grounds for rejection – trade mark to proceed to acceptance

Background

1. On 16 October 2023, EBC Financial Group (UK) Limited[1] applied to register the trade mark detailed below pursuant to the provisions of the Trade Marks Act 1995 (Cth)[2]:

   Trade Mark:                   EBC FINANCIAL GROUP (‘Trade Mark’)

   Number:   2396663

   Services:Class 36: Investment of funds; Financial analysis; Bureau de change services; Monetary exchange; Investment bank services; Stock brokerage services (‘Applicant’s Services’)

   [1] The application was initially filed in the name of EBC Financial Group Limited and a change of name was subsequently recorded.

   [2]  Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) or a regulation of the Trade Marks Regulations 1995 (Cth) respectively, unless otherwise indicated.

2. The application was examined as required by s 33 and on 29 November 2023, an adverse examination report issued raising grounds for rejection under ss 39, 41 and 43.  The basis of the objections was that EBC is the main feature of the Trade Mark which is an acronym for ‘Europejskiego Banku Centralnego’, which is Polish for European Central Bank and hence the Trade Mark:

   ·    indicates that the Applicant’s Services are provided by the European Central Bank (s 41);

   ·    would mislead or cause confusion in the marketplace by indicating that the Applicant’s Services are provided by the European Central Bank (s 43); and

   ·    EBC is a prohibited sign under Schedule 2 of the Regulations (s 39).

3. The Applicant responded to the examination report arguing that Australian consumers would not understand EBC as an acronym for the Polish words for European Central Bank, particularly when the mark contains other English words and moreover, the Applicant’s Services are different from those provided by the European Central Bank. 

4. The Examiner was not persuaded by the Applicant’s submissions and maintained the objections.  In response, the Applicant filed further arguments and a declaration of Zihan Wang, General Manager of EBC Financial Group (Australia) Pty Ltd made on 12 September 2024 with Exhibits A to S (‘Wang’) attesting to the Applicant’s use of the Trade Mark.  The Examiner withdrew the objections raised under ss 41 and 43 but maintained the s 39 objection in the third examination report.

5. Following the Examiner’s third report, the Applicant requested a hearing by written submissions.  The Applicant filed written submissions on 23 December 2024.  This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks and I do so based on the aforementioned materials.

6. As a preliminary matter, I note that the application is subject to a presumption of registrability under s 33.  As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the application.  I must also consider afresh the grounds for rejection under s 39 maintained by the Examiner and I am not bound by the Examiner’s findings. Whilst I may consider reasoning provided by the Examiner in support of the objections, ultimately I must make a decision based on my interpretation of the facts and law.

   Declaration of Zihan Wang

7. Wang details his experience in the financial services industry for the past 10 years and declares that the Applicant was incorporated in the United Kingdom on 9 March 2020.  The Trade Mark was adopted as an acronym for ‘Exceptional Brilliant Care’ and has been continuously used since March 2020.

8. In October 2020, GTI Global Pty Ltd, which was initially incorporated in 2017 as Zeus Wealth Pty Ltd, became part of the EBC Financial Group and changed its name to EBC Global Pty Ltd before becoming EBC Financial Group (Australia) Pty Ltd in September 2023.  According to Wang, the Trade Mark is used in Australia in relation to the Applicant’s Services.

9. The Applicant’s Services are promoted on its websites at and its LinkedIn account and social media including its YouTube channel at The most popular video on this channel has over 1 million views.  The Applicant has a rating of 4.7 stars on Trustpilot, an online review community.  The Applicant’s followers on Facebook, Instagram and X are provided.

10. In 2024, the Applicant was awarded the ‘Most Trusted FX Broker’ and ‘Best CFD Broker’ at the World Finance Awards and won the ‘Most Efficient Broker’ at the FXDailyInfo Forex Brokers Awards which was reported in the Australian Securities Exchange News Today.

11. In February 2024, EBC Financial Group collaborated with the Department of Economics at the University of Oxford in a webinar entitled “The Economics of Tax Evasion”. Wang exhibits a copy from the Yahoo Finance Australia website reporting on this seminar.

12. In April 2024, the Applicant entered into a partnership with United to Beat Malaria, a United Nations Foundation campaign to protect children from Malaria.  A copy of the Environmental News Australia reporting on this partnership is provided.

13. Also in April 2024, the Applicant became a sponsor of FC Barcelona, one of the 3 most valuable football clubs in the world with 113 million Facebook followers, 125 million Instagram followers, 485 Million X followers and 32.3 million TikTok followers. FC Barcelona has a large number of supporters in Australia and runs football camps in Australia.  An extract from the Australian Barca Academy website is exhibited to Wang.

14. Wang declares that based on his knowledge of the Australian financial services market, consumers would not assume any connection between the Applicant and the European Central Bank because Australian consumers who know of the European Central Bank;

    ·    understand that it is similar to the Reserve Bank of Australia or Federal Reserve in the United States of America, setting monetary policy with the aim of keeping inflation low, regulating banks, issuing bank notes and preserving financial stability. The European Central Bank does not offer any retail financial services;

    ·    are aware that it does not conduct business in Australia and hence would not associate any business being conducted in Australia with the European Central Bank; and

    ·    would know that the acronym for the European Central Bank is ECB not EBC.

15. Wang notes that the Applicant has never received any inquiry or communication suggesting that a member of the public believed there to be a connection with the European Central Bank.  Further, Wang attests that the Trade Mark is registered in the United Kingdom, Japan, India, Indonesia and Malaysia.

    Legal Framework

16. Section 39 states:

    39  Trade mark containing etc. certain signs

    (1)  An application for the registration of a trade mark must be rejected if the trade mark contains or consists of a sign that, under regulations made for the purposes of section 18, is not to be used as a trade mark.

    (2) An application for the registration of a trade mark may be rejected if the trade mark contains or consists of:

    (a) a sign that is prescribed for the purposes of this subsection; or

    (b) a sign so nearly resembling:

    (i) a sign referred to in paragraph (a); or

    (ii) a sign referred to in subsection (1);

    as to be likely to be taken for it.

17. Regulation 4.15 relevantly provides:

    4.15  Trade marks containing etc certain signs

    For the purposes of paragraph 39(2)(a) of the Act (which deals with signs), the following signs are prescribed:

    …

    (e) a representation of a mark notified by the International Union for the Protection of Industrial Property as not entitled to registration under international arrangements;

    …

    Note 2: A list of the marks mentioned in paragraph 4.15(e) is available at the Trade Marks Office and sub‑offices (if any).

18. This regulation is intended to give effect to Australia’s international obligations under Article 6ter of the Paris Convention for the Protection of Industrial Property (‘Article 6ter’).  Article 6ter protects, amongst other things, armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations of which one or more States party to the Paris Convention are members.  Article 6ter (1) and (2) are set out below:

    (1) (a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.

    (b) The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection.

    (c) No country of the Union shall be required to apply the provisions of subparagraph (b), above, to the prejudice of the owners of rights acquired in good faith before the entry into force, in that country, of this Convention. The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization.

    (2) Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind.  

19. By WIPO circular C. 7066, the following mark, which forms the basis of the s 39 objection, was notified for protection under Article 6ter and entered on the Australian Trade Marks Register as a prescribed mark:

Discussion

1. It is not a basis for objection simply that a trade mark is prescribed.  The wording of s 39(2) is discretionary in that the Registrar ‘may’ reject an application for a prescribed sign. This is consistent with Australia’s obligations under Article 6ter(1)(c) which provides that member countries need not refuse to register the name of an international intergovernmental organisation where ‘use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization’.  Accordingly, I concur with the Applicant that the critical question in this case is whether use of the Trade Mark will suggest to the public that the Applicant’s Services are provided by or are in some way connected with the European Central Bank.  If I am satisfied that the Trade Mark indicates the European Central Bank, or a connection with that organisation, use of the Trade Mark will give rise to deception or confusion.

2. The Trade Marks Manual of Practice and Procedure (‘Manual’) sets out the following list of factors to be considered in determining whether the public would be deceived or confused:[3]

   [3] Part 31.3.1 Manual.

   i.With what person, body, organisation etc is the sign associated?

   ii.With what activity is that person, body, organisation etc associated?

   iii.Does that person, body, organisation, etc produce the goods and services?

   iv.Would that person, body, organisation, etc be associated with particular goods or services because of the nature of the activity?

   v.Who constitutes the “public” who will purchase the goods or services to which the trade mark containing or consisting of the sign is to be applied?

   vi.Would that “public” know of that person, body, organisation, etc and its activities or goods and services?

3. The Manual then states:

   After considering the above factors, another question needs to be asked: is use of the trade mark likely to deceive or cause confusion? If the answer is “NO” (or not clearly “YES”), no ground for rejection should be raised.

4. In the Applicant’s submission, when each of the above factors is considered, it is clear that use of the Trade Mark is not likely to deceive or cause confusion and that this conclusion is supported by the evidence provided in Wang. 

5. With respect to the first question, the Applicant notes that in this case, the prescribed sign ECB is protected only because it is an acronym for the Polish translation of European Central Bank.  Polish is the only language for which the acronym of the European Central Bank is ECB.

6. In terms of the second and third factors above, the Applicant submits that it does not offer financial services to the public but rather is similar to the Reserve Bank of Australia.  The European Central Bank’s website lists its activities as controlling inflation, contributing to the safety of the banking system, developing and issuing euro banknotes, maintaining the smooth operation of the financial infrastructure and preserving financial stability.  The European Central Bank does not make money from selling goods or providing services. It has capital funds which are contributed by the national central banks of all EU member states. Each year it makes a profit or loss based on income from investment of those funds less expenses of operation. The European Central Bank does not conduct any of these activities nor any other activities in Australia.

7. The Applicant contends that the only goods or services which the European Central Bank is associated is the provision of Euro banknotes.

8. Whilst some of the Applicant’s Services could conceivably be offered to members of the public, the Applicant primarily provides trading services in foreign exchange, commodities and CFDs[4] to sophisticated financial traders.

   [4] According to a CFD is  a ‘contract for differences’ which is an agreement between a trader and a financial institution in which the investor bets on the future value of an asset.

9. The Applicant argues that the Australian public would not know that the prescribed mark EBC is associated with the European Central Bank and hence would not expect the Applicant’s Services offered under the Trade Mark to be provided or associated with the European Central Bank.  This is because the national language of Australia is English and the English abbreviation of European Central Bank is ECB, not EBC.  Only a very small percentage of Australians speak Polish and even if those people knew of the European Central Bank, they would be aware of the English name of this institution and that the main acronym is ECB.  Furthermore, even those Polish speaking Australian consumers who know of the acronym EBC as indicating the European Central Bank are unlikely to assume that the Trade Mark or the services offered under it are associated with the European Central Bank because of the inclusion of the English words ‘FINANCIAL GROUP’ in the mark.  Consumers would not expect a combination of a Polish language abbreviation in combination with English words to indicate the European Central Bank particularly when three letter acronyms often have multiple meanings.

10. I find the Applicant’s submissions persuasive.  In my opinion, use of the Trade Mark is not likely to deceive or cause confusion by suggesting that the Applicant’s Services are provided by or associated with the European Central Bank.  Unless Australian consumers are aware of the Polish translation of European Central Bank and the acronym EBC, there is no reason that consumers would assume any connection between the European Central Bank and services offered under the Trade Mark.

11. In considering whether use of Trade Mark is likely to mislead or confuse consumers, the relevant public is Australian consumers of financial services whom are likely to predominantly fall into one of the following three categories:

    i.sophisticated consumers who work in the financial industry or are connected with the provision of financial services;

    ii.those who are unaware of the European Central Bank and are unsophisticated consumers of financial services; and

    iii.those that have some knowledge of the European Central Bank but do not fall in category (i).

12. The first category of consumers would probably be aware of the European Central Bank, that the English acronym for that institution is ECB and that the European Central Bank engages in highly specialised services not offered to Australian consumers.  It is improbable that this class of consumers would assume any relationship between the Applicant’s Services offered under the Trade Mark and the European Central Bank. 

13. The second category of Australian consumers of financial services who are unaware of the European Central Bank will not be misled or confused.  Since they do not know of the European Central Bank, they cannot assume any connection between it and the Applicant’s Services offered under the Trade Mark. 

14. Even the third category of Australian consumers who have some limited knowledge of the European Central Bank are, in my view, not likely to be confused because such consumers would probably assume that the acronym for this organisation is ECB not EBC.  Awareness of the European Central Bank does not imply knowledge of the Polish translation or Polish acronym for European Central Bank.  Additionally, the name European Central Bank suggests either an institution similar to the Australian Reserve Bank, in which case the relevant consumers are not likely to expect the European Central Bank to be offering financial services to the general Australian public, or an international bank operating predominantly in Europe.  It seems to me that most Australian consumers would not choose a European bank without first conducting some research to confirm that the bank provides the financial services they require.  In my view, the Trade Mark does not suggest the European Central Bank or a connection with that institution simply by virtue of the fact that it contains the acronym for the Polish translation of European Central Bank. 

15. There may be a fourth category of Polish speaking Australians who know of the Polish name and acronym for European Central Bank.  These consumers are likely to be aware that the European Central Bank carries out a different function to a retail bank. However, the number of such consumers is likely to be very small and they are unlikely to assume any connection between financial services being offered to Australian consumers and the European Central Bank because they will have some general familiarity with the functions of the European Central Bank and/or would not expect that organisation to be offering services to Australian consumers.  I agree with the Applicant that consumers would not assume a mark comprised of an acronym for the Polish translation of European Central Bank and English words to be a reference to the European Central Bank.

16. Accordingly, I do not consider that the Trade Mark EBC FINANCIAL GROUP will mislead or confuse consumers into thinking that the Applicant’s Services are provided by or connected with the European Central Bank. 

    Decision

17. I am not satisfied that there is a ground for rejecting the Trade Mark under s 39.  Trade mark application number 2396663 should be accepted for registration.

    Tracey Berger

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    26 February 2025