BlueKey vs Blukee: when is a trade mark “used”?

Bupa filed 2 trade mark applications, word and logo versions of ‘Bluekey’. These applications were opposed by Bluekee Pty Ltd on the grounds that Bupa was not the owner since Bluekee had previously used its Bluekee trade mark.

Under section 58 of the Australian Trade Marks Act, a trade mark can be opposed on the grounds that the opponent had used an identical trademark for the same kind of goods or services.

Bluekee, however, acknowledged that it had not offered or sold goods or services before Bupa filed its application for ‘Bluekey’. In order to succeed an opponent must establish that there was a connection between them in the course of trade with the goods and the trade mark. In this case, Bluekee Pty Ltd had engaged a business consultant to prepare a white paper on the market, used the name in internal emails about the project, made 30 presentations to get feedback and raise capital; incorporated a new company and registered domain names.

It was decided that these activities were “directed to prospective investors rather than prospective customers”, and not public commercial use. Accordingly, their opposition failed.

Bluekey had established an intention to use the trade mark but not introduced the trade mark to persons for the purpose of soliciting trade. It was not until later that Bluekee registered an external shareholder, launched a website , secured a customer and made their app available on the AppStore.

This is a reminder that preparatory activities do not accumulate common law trade mark rights in Australia. What is required is either authorship and application for trade mark registration or introduction to potential customers in Australia with genuine commercial intent to trade.

Bluekee Pty Ltd v Bupa HI Pty Ltd [2024] ATMO 162