PayPal opposed a trade mark application for GIFTPAL applied for by Giftmobile in connection with ‘gift cards’ and ‘retail services’.

Initially, the GIFTPAL trade mark was accepted for registration without objection being raised. However, PayPal’s opposition listed numerous prior Australian trade marks, which it considered to be deceptively similar to the GIFTPAL trade mark.

In addition, PayPal filed evidence of the use of its PAYPAL trade mark in Australia and worldwide to support its argument that it has a reputation in the PAYPAL trade mark and that as a result of that reputation, the use/registration of the GIFTPAL trade mark is likely to lead to consumer deception or confusion.

The Hearing Officer only dealt with section 60 in the decision, finding that PayPal holds a reputation:

[I]n respect of online financial transactions, including processing electronic payments and transferring funds to and from account holders, as well as use of credit and debit cards, prepaid cards and payment cards.

Given the reputation of the PAYPAL trade mark and the direct correlation between the good/services covered under the GIFTPAL trade mark and the area of established reputation for PAYPAL, the Hearing Officer determined that consumer deception or confusion was likely.

Accordingly, the GIFTPAL trade mark has been refused registration.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.