04 October, 2017
Spruson

Paypal, Inc v Braintree Communications Pty Ltd [2017] ATMO 90

Paypal, Inc v Braintree Communications Pty Ltd [2017] ATMO 90

This matter concerned Paypal’s application to register BRAINTREE in connection with financial services in Class 36 and opposition thereto by Braintree.

The crux of the opposition was whether the opponent’s prior registration for BRAINTREE Logo covered similar/related goods/services to the financial services covered under Paypal’s application.  Braintree’s registration covers goods in Class 9 and services in Classes 38 and 42, largely relating to software and telecommunications hardware and services.

It was the Hearing Officer’s view that Braintree’s services do, in effect, ‘enable communication of data which might be used as part of an electronic payment (EFTOPS) system but may also function in relation to’ a range of other services.

Despite Braintree’s services being used in connection with a financial service, it was not sufficient for the Hearing Officer to consider those services as being of the ‘same description’.  By way of analogy, the Hearing Officer commented that:

[A] plumber who may install taps, pipes, drains, and pumps is not in the businesses of water supply or of effluent treatment

This observation was carried across the remainder of Braintree’s goods and services, to the conclusion that Braintree’s registration does not cover goods/services that are closely related to the services within Paypal’s application.  The application is to proceed.

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.


TRACEY BERGER

Principal / Trade Mark Attorney
Trade Marks Team
Sydney, Australia
DanielWilson_2015_370x270

DANIEL WILSON

Senior Associate / Trade Mark Attorney
Trade Marks Team
Sydney, Australia

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