A recent decision of the Australian Trade Marks Office has sided with an Australian crypto firm, upholding its opposition to a US company’s trade mark application. The decision demonstrates the increasing integration of software into financial and other services and accordingly the potentially broad scope for confusion in the offering of different types of software.
On 4 May 2024, AudD LLC, the developer of a music recognition API, applied to register the trade mark “AudD”. The application covered services in Class 9 and 42 such as “encoding of digital music”, “software as a service featuring software for machine learning”, and “deep learning and deep neural networks”. It also covered goods including “application software”, “downloadable software applications”, and “computer interface software”.
This move ruffled the feathers of AUDC Pty Ltd, the fintech company behind the Australian backed stablecoin AUDD, who filed a notice of intention to oppose AudD’s application on 4 December 2024.
CEO of AUDC, Effie Dimitropolous, supported the firm’s opposition by declaring that the AudD trademark was “substantially identical, or deceptively similar, to a trade mark registered by the Opponent in respect of closely related services”.
AUDC had already registered the trade mark “AUDD” on 12 September 2022, which covered services under Class 36 including “financial exchange in crypto assets”, “financial exchange services”, “currency exchange services”, and “brokerage of currency”.
The Law
Section 44(2) of the Trade Marks Act 1995 (Cth) provides that a trade mark application in respect of services must be rejected if it is substantially identical, or deceptively similar to a trade mark registered by another person in respect of similar services or closely related goods.
The Decision
Delegate of the Registrar of Trade Marks, Debrett Lyons, determined that the marks “AudD” and “AUDD” were “substantially identical” despite the difference in upper and lower case letters.
This left the issue of whether AUDC’s registered trademark covered services which were similar to the services and/or closely related to the goods covered by AudD’s application. The Delegate found the finance/currency exchange services covered by AUDC’s registered trademark were not the same as the music recognition/software services outlined in AUdD’s application. However, the Delegate determined that the services covered by AUDC’s trade mark were closely related to the goods covered by AudD’s application. The Delegate stated that:
Application software and a host of other nominated services are necessary adjuncts to virtually all of the services covered by AUDC’s registered trademark. Some, such as trading in currencies, will in this age absolutely depend on application software…
In other words, the Delegate found that trading in currencies and crypto assets will necessarily depend on application software, and consequently rejected the application in its entirety. That is, the decision did not turn on the actual use of the software (e.g., music vs crypto trading), but rather on the broader category of “application software” and its functional proximity to service delivery in general. On one view, this proximity is particularly close in the context of stablecoins as opposed to traditional financial services as stablecoins inherently involve a type of software service.
Implications for Australian Fintech Firms
The decision highlights a potentially expansive interpretation of the relationship between software goods and service-based trademarks under section 44(2). Tech companies looking to protect their brand can take this into account when assessing whether to oppose a trade mark application which they regard as the same or deceptively similar to their own registered trade marks.
Fintech firms looking to register a trade mark should be aware that including broad descriptions of software related goods could increase the risk of overlap with existing trade marks. As the boundaries between software and services continue to blur, industry participants should be prepared for broader interpretations of what constitutes a “closely related” good or service.
