eBay Inc. has successfully opposed an application to register TRADIEBAY as a trade mark in respect of goods and services that included paper, cardboard and goods made from these materials, printed matter and classified advertising, including online, but excluding auction services; providing a searchable online classified advertising service (but excluding auction services), featuring goods relating to building, construction, plumbing, electrical, automotive, gardening, cleaning, building tools, equipment and accessories; providing and rental of advertising space on the internet.
eBay pressed 3 grounds of opposition – that the trade mark TRADIEBAY was deceptively similar to earlier registrations for EBAY (Section 44), that use of TRADIEBAY was contrary to the previous Trade Practices Act (Section 42) and EBAY had acquired a reputation in Australia and because of the reputation of EBAY, the use of TRADIEBAY would be likely to deceive or cause confusion (Section 60).
The hearing officer considered that EBAY and TRADIEBAY were not deceptively similar and thus the attack based on similarity to eBay’s earlier trade mark registrations was unsuccessful. Similarly, the hearing officer was not satisfied that eBay would be successful under the Trade Practices Act. However, eBay was successful on the grounds under Section 60.
eBay led impressive evidence of reputation. This evidence showed that eBay has 280 million registered users worldwide and 1.3 million registered users in Australia. The website “ebay.com.au” is the 6th most visited website in Australia. In Australia, during the 5-year period from 2005 to 2009, the gross merchandise value on the eBay trading platforms exceeded $US7 billion. Each day approximately 7 million new listings are added to the eBay market-place throughout the world. It is said that there are over $US2,000 in transactions per second on eBay. Not surprisingly, the hearing officer concluded that eBay had established significant reputation in Australia.
The hearing officer also concluded that eBay made out the grounds of opposition under Section 60, saying:
“Overall, I think that, given the impressive reputation evidenced by the opponent in its ebay trade mark, a significant number of consumers would at the very least subscribe to a reasonable doubt as to some sort of connection between that well-known trade mark and the applicant’s trade mark. Both trade marks share a commonality of features (note – being the suffix BAY) that, if not unusual, are at least not mundane… When to this are added the facts that the services in question share at least a vague nexus and the enormous size and character of the opponent’s reputation, the degree of speculation would, in my assessment, rise to, at the very least, the reasonable doubt required to trigger s 60.”
As a result, the application to register TRADIEBAY was refused.