The Registrar of Trade Marks has recently upheld an objection by eBay Inc (eBay) to the application for registration of the trade mark TRADIEBAY, a classified advertising site for tradespeople.
The grounds of opposition relied on by eBay were:
- TRADIEBAY is deceptively similar to the registered trade mark EBAY, under section 44 of the Trade Marks Act 1995 (Cth) (the Act);
- use of TRADIEBAY is contrary to law within the meaning of section 42 of the Act; and
- EBAY had acquired a significant reputation in Australia such that the use of TRADIEBAY would be likely to deceive or cause confusion, under section 60 of the Act.
Section 44 of the Act
The relevant principles to be applied in assessing deceptive similarity are:
- that there is a real tangible danger of deception or confusion occurring. Mere possibility is not sufficient;
- a trade mark is likely to cause confusion if a number of persons are caused to wonder whether the two products or services come from the same source. It is enough if the ordinary person entertains a reasonable doubt;
- all surrounding circumstances have to be taken into consideration, including the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services;
- that likelihood of confusion is not by reference to how the proposed mark has been used in the past, but by reference to the use to which the mark can be properly put; and
- the mere appearance of a shared or common element (in this instance, the expressions BAY or EBAY) located within the respective trade marks is not sufficient to render those marks deceptively similar to each other.
Based on these tests, it was found that EBAY and TRADIEBAY were not deceptively similar and that it was unlikely that the proposed mark, TRADIEBAY, would be mistaken for EBAY. The marks were considered to have significant points of dissimilarity with sufficient differences in appearance and impression. Consequently, there was no tangible danger of deception or confusion arising under section 44 of the Act.
Section 42 of the Act
Section 42 provides that an application for registration of a trade mark must be rejected if its use would be contrary to the operation of law or legislation other than the Act. In this case the question was whether the use of TRADIEBAY was misleading or deceptive under sections 18 or 29 of the Australian Consumer Law.
Given the differences between the respective marks when each mark is compared as a whole and in the absence of any evidence of actual deception, it was found that the use of TRADIEBAY for the goods or services in question would not be likely to mislead or deceive consumers in breach of the Australian Consumer Law.
Section 60 of the Act
eBay argued that its reputation in the EBAY trade marks was such that use of the TRADIEBAY mark was likely to deceive or cause confusion within the meaning of section 60 of the Act.
In order to establish this ground of opposition eBay needed to satisfy the following elements:
- eBay was in existence before the priority date of the TRADIEBAY application;
- eBay had acquired a reputation in Australia before the priority date;
- the requisite reputation was held by a significant section of the public or a substantial number of persons; and
- that reputation is such that use of TRADIEBAY would be likely to cause instances of deception or confusion.
eBay led evidence that it has 280 million registered users worldwide and 1.3 million registered users in Australia. The website ebay.com.au is the sixth most visited website in Australia and during the five year period from 2005 to 2009, the gross merchandise value on the eBay trading platforms exceeded $US7 billion. Each day approximately 7 million new listings are added to the eBay marketplace globally.
The Registrar concluded that eBay’s ground of opposition under section 60 had been made out on the basis that:
- there was no question that eBay had the requisite level of reputation in its trade marks in Australia;
- it was likely that TRADIEBAY would deceive or cause confusion with the EBAY trade marks; and
- a significant number of consumers would have reasonable doubt on the question of whether there was some sort of connection between the two marks.