This article discusses the recent IP Australia Hearings Office decision in the case eBay Inc v Tradiebay Pty Ltd. The decision concerned an opposition by the owner of the well-known internet auction and shopping website eBay against registration of the trade mark TRADIEBAY.

Tradiebay Pty Ltd applied to register the trade mark TRADIEBAY for printed matter including magazines and advertisements, and classified advertising services, among other goods and services. The application was accepted for registration by IP Australia and published for opposition purposes. eBay Inc opposed registration of the trade mark.

eBay’s reputation in Australia

The grounds of opposition relied upon by eBay Inc were that its eBay trade mark has a reputation in Australia, and, due to that reputation, use of the trade mark TRADIEBAY would be likely to deceive or confuse (section 60), that the TRADIEBAY trade mark was deceptively similar to eBay and other trade marks registered by eBay Inc (section 44), and that use of TRADIEBAY trade mark would be contrary to the Australian Consumer Law, being Schedule 2 of the Competition and Consumer Act 2010 (section 42(b)).

In support of its opposition, eBay Inc provided evidence demonstrating that the eBay trade mark has acquired a substantial reputation in Australia. Tradiebay Pty Ltd did not provide evidence.

Outcome

The Hearing Officer determined the section 60 ground in favour of eBay Inc. The Hearing Officer concluded that due to the substantial reputation acquired in the eBay trade mark, that a significant number of consumers would assume there was a connection between the eBay and TRADIEBAY trade marks. In reaching this conclusion, the Hearing Officer noted that the eBay trade mark has a substantial reputation in Australia, that the eBay and TRADIEBAY trade marks share some common features, and that the services of the parties were similar. The Hearing Office also discussed previous oppositions by eBay Inc based on its eBay trade mark, and noted a successful opposition against the trade mark EARTHBAY.

The Hearing Officer determined the section 44 ground of opposition in favour of Tradiebay Pty Ltd. After extensive discussion, the Hearing Officer determined that the eBay and TRADIEBAY trade marks were not deceptively similar.

The Hearing Officer also determined the section 42(b) ground of opposition in favour of Tradiebay Pty Ltd. As the two trade marks were not deceptively similar, eBay Inc could not establish a likelihood of misleading or deceptive conduct for the purposes of the Australian Consumer Law. As the standard required to establish a likelihood of misleading or deceptive conduct is higher than that required to establish deceptive similarity, in light of the section 44 ground of opposition not being established, this ground could not be established.

In light of the section 60 ground of opposition being established, the opposition was successful and the TRADIEBAY trade mark was refused registration.

Take home lessons

The decision is illustrative of the fact that in order to succeed under section 60, the opponent relies on its reputation, and not the similarity of the trade marks (although an opponent’s claim under section 60 will be stronger if the trade marks are similar). The decision also highlights the risk of adopting or seeking to register a trade mark which may be similar to a well-known trade mark, even if the two trade marks are not overly similar.