T Skevington and M Bacina
Update: Ripple request rejected at Interlocutory Hearing, injunction imposed
Following our earlier article about the dispute between Ripple Labs is being sued by New Payments Platform Australia (NPPA), NPPA has obtained orders restraining Ripple from advertising its PayID product in Australia.
To recap, global digital asset juggernaut Ripple Labs is being sued by NPPA for alleged infringement of the PayID trade mark. In an originating application filed by NPPA on 20 August in the New South Wales division of the Federal Court, NPPA alleged that Ripple infringed its PayID trade mark by promoting its own payment system under the same name and accused Ripple of engaging in misleading and deceptive conduct.
Although Ripple made an undertaking (without admission of liability) to rebrand its PayID offering following a preliminary judgment from Justice Burley, NPPA wanted its application for the injunctive relief sought in its originating application to be heard.
At an interlocutory hearing on 28 August 2020, Justice Thawley heard from both parties as to whether, first, an order should be made against Ripple or an undertaking from Ripple would be sufficient, and secondly, whether the form of order proposed by NPPA was preferable in form to that provided by Ripple.
Justice Thawley found in favour of NPPA, and ordered that:
[Ripple] will not (whether by itself or by its officers, employees, or agents) advertise, promote, or offer to provide electronic payment services in Australia, or provide electronic payment services directed to Australia, under or by reference to the words “PAY ID” or “PayID” or any similar mark, sign or brand using or incorporating the words “PAY ID” or “PayID”, in relation to electronic payment services, without the licence or authority of [NPPA], until the determination of this proceeding or until further order.
However, Justice Thawley accepted in principle an argument made by Ripple's Counsel that there was a risk that Ripple could be found to be providing electronic payment services in Australia in contravention of the order even though it had blocked access to its site for Australian users and without knowing that an Australian user was accessing its site. On that basis, Justice Thawley accepted the form of order set out above proposed by Ripple.
The case is NPP Australia Limited v Ripple Labs, Inc.