Online auction giant baying for blood

eBay has lodged a Federal Court appeal against a decision to allow registration of the trade mark UBAY in Australia.

UBAY Pty Ltd applied for registration of the trade mark UBAY and two UBAY logo trade marks in 2007. The company sought a monopoly in the trade marks in connection with a range of services including operating online marketplaces in respect of goods and services and electronic retailing and online shopping services.

eBay Inc subsequently opposed the registration of the three trade marks however, in a decision by a Delegate of the Registrar of Trade Marks, the UBAY marks were found not to be substantially identical with, or deceptively similar to any trade marks within eBay’s family of 12 Australian trade marks. The Delegate said that whilst there were similarities between the marks, he “could not be satisfied that there would be a real tangible danger or likelihood of confusion amongst a substantial number of consumers”.

Ubay's TM 1216097
Ubay's TM 1216097

Attempts by eBay to argue against registration of the UBAY marks on the basis the online auction giant had acquired a reputation in Australia, and that because of that reputation use of the UBAY marks would be likely to deceive or cause confusion also failed. It relied in part on evidence of a 2004 US survey showing 58 per cent of respondents would associate a website using the word “bay” within its name or on its website with eBay, to argue deception or confusion between the UBAY and eBay marks was likely to arise.

However, the Delegate agreed with UBAY’s argument that the ‘brand recognition’ of eBay reduced the likelihood of confusion between the marks with consumers unlikely to believe eBay would vary its well-known trade mark. The Delegate found use of the UBAY trade marks was not likely to deceive or cause confusion and eBay’s opposition failed, which absent the Federal Court appeal, would have resulted in the UBAY trade marks being registered.

A directions hearing is set down for the appeal later this month.