Online auction website eBay Inc. has successfully prevented registration of the trade mark TRADIEBAY in Australia.
Based on the services claimed in its application, it appears Tradiebay Pty Ltd was seeking to operate a classified advertising site for tradespeople under the trade mark TRADIEBAY. In an apparent attempt to resolve the opposition, the company subsequently deleted some of the online services it had originally claimed in class 35 and excluded “auction services” from its application.
In the opposition proceedings before the Trade Marks Office, eBay argued that such was its reputation in its EBAY trade marks that use of the TRADIEBAY trade mark was likely to deceive or cause confusion as is required to succeed in an opposition based on s.60 of the Trade Marks Act 1995 (Cth) (“the Act”).
There was no question that eBay had the requisite level of reputation in its trade marks in Australia and that Tradiebay’s goods and services were similar to those of the EBAY registrations. Adopting the reasoning of an earlier Office decision where use of the trade mark “earthbay” was found likely to deceive or cause confusion with the EBAY registrations, the Delegate considered a significant number of people would not fail to recognise a connection between the TRADIEBAY trade mark and EBAY trade marks and that at least some part of that number would be likely to be deceived or confused.
The Delegate stated that “When regard is given to the element of “reputation”, that factor is sufficient to overcome the obvious points of difference which exist between the respective TRADIEBAY and EBAY marks and to have the effect that it is likely that instances of deception or confusion would occur.”
On the question of whether the marks were deceptively similar under s.44 of the Trade Marks Act 1995 (Cth) (“the Act”) (where the issue of reputation does not arise), the Delegate found that the mark TRADIEBAY in normal use would be unlikely to be mistaken for EBAY. The marks were considered to have significant points of dissimilarity with sufficient differences in appearance and impression. Consequently, the Delegate considered there was no tangible danger of deception or confusion arising.
The differences between the marks when compared as a whole and the absence of any evidence of actual confusion occurring led to a finding that use of the TRADIEBAY mark would not be likely to mislead or deceive in contravention of the Trade Practices Act 1974 (Cth) (now the Competition and Consumer Act 2010 (Cth)).
eBay was therefore successful on the s.60 ground of opposition only. The decision is available here. It illustrates the different considerations that apply when assessing deceptive similarity under s.44 of the Act and whether deception or confusion are likely to occur as required to succeed in an opposition under s.60.