EBAYINC V DEAN WILLIAM HAWKINS [2014] ATMO 54 (14 JUNE 2014)

In this case eBay opposed the registration of the following mark:

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in respect of class 35 retailing of goods by any means.

The Delegate’s decision was made under section 60 that the mark was deceptively similar to a mark that had already acquired a reputation in Australia. The Opponent had used its mark in respect of “internet auctions and sales of a vast range of goods in many countries of the world including Australia”.

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Evidence led by the Opponent spoke to the facts that, as at May 2013, the Opponent’s Australian website had over 10 million registered users in Australia and was the 6th most visited Australian website.

The Delegate noted that “most, if not practically all, Australias must be aware of the Opponent’s Trade Mark, and the evidence shows that … well over a third of the population had purchased through a website bearing the Opponent’s trade mark.”

It was argued by the Applicant that the extent of brand recognition for the Opponent’s mark would reduce the likelihood of confusion.

Noting however that the services in respect of which the mark was sought to be registered, was the same as those of the Opponent, the Delegate held that a consumer might wonder if the services of the Applicant emanate from the Opponent, or whether the similarity of the trade marks might signify some other connection in trade between the Applicant and the Opponent.

The application to register the trade mark was refused.

To view the Office decision, click here.