eBay appeals 'controversial' ruling

Australia
eBay Inc has lodged an appeal with the Federal Court against a decision of the delegate of the registrar of trademarks in which the latter had allowed the registration of the trademark UBAY.

eBay owns several trademark registrations in Australia for the word 'eBay' and several eBay logos in respect of a range of goods and services in Classes 9, 14, 16, 25, 28, 35 and 41 of the Nice Classification, including "online trading services". An Australian company, uBay Ptd Ltd, applied for the registration of the word mark UBAY, as well as a uBay logo, in respect of a wide range of goods and services in Classes 20, 14, 35 and 36, including "providing customised online web pages, which includes search engines and online web links", and "electronic retailing and online shopping activities". eBay opposed the application.

eBay's principal grounds of opposition were under:
  • Section 44 of the Trademarks Act, based in its prior registrations for substantially identical or deceptively similar marks; and
  • Section 60 (likelihood of deception and confusion) in light of its reputation.
It seems that the question of the similarity of the goods and services was not dealt with. uBay successfully argued, however, that the marks were not deceptively similar. The delegate accepted uBay's submission that the dominant role of the letter 'E' in eBay's marks, and its use to convey an online context, distinguished those marks from UBAY. The delegate also held that uBay's logos were clearly different from eBay's.

Further, the delegate found that eBay had established a reputation in its EBAY mark, as well as its logos, "particularly in the area of online marketing". However, somewhat controversially, he accepted uBay's argument (based on an earlier delegate's decision in McDonald’s Corporation v Bowditch), that because of the high level of recognition of eBay's mark, people would be unlikely to think that eBay was using a modified version of its mark. The delegate held that:

"the reputation of the opponent is such that the 'brand reputation' of its various marks would make it unlikely that the applicant's device trademarks would be confused for the opponent's word or fancy word marks."

Arguably, the delegate's reasoning was unsound, and at odds with the evidence that eBay used its mark in a number of different logo presentations.

Des Ryan, Davies Collison Cave Solicitors, Melbourne

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