T Skevington and M Bacina
What's in a name? Ripple rebrand required over PayID stoush
Global digital asset juggernaut Ripple Labs is being sued by New Payments Platform Australia (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.
For clarity, NPPA's PayID was first launched in February 2018 to allow real-time payments between particular Australian bank accounts, and uses a universal payment identifier in place of the conventional BSB and account number combo. Ripple's PayID was only launched in June 2020.
In its filing, NPPA claimed that:
The aim of this action is to protect Australian consumers and businesses from potential losses or scams that could arise as a result of confusion created from a payments service using the same name
In addition to trade mark infringement, NPPA claimed that Ripple was engaging in misleading and deceptive conduct in breach of the Australian Consumer Law and Australian Security and Investments Act. In an affidavit supporting NPPA's claim, NPPA's solicitors argued that Ripple had demonstrated this by partnering with 3 Australian companies, FlashFX, Independent Reserve and BTC Markets, and that:
there is evidence that each of these companies incorrectly believed there was an association between services offered by NPPA under the PayID trade mark and those offered by Ripple in using the PayID trade mark, when there is no such association
NPP is owned by a consortium of Australia's largest banks, including the Reserve Bank of Australia, ANZ, CBA NAB and Westpac. This might explain why, following a preliminary judgment from Justice Burley granting leave to NPPA to pursue the matter, Ripple has confirmed that it will rebrand its PayID offering. In comments at the matter's first case management hearing, Counsel for Ripple Neil Murray SC confirmed that:
[Ripple's] intention, again, without admissions, is to re-brand. Now the scope and timing of that is under consideration but it is ... some priority. The hope is that this dispute will be resolved without too much contest in due course
Regarding Ripple's partnerships with FlashFX, Independent Reserve and BTC Markets, Ripple's Counsel confirmed:
Each have been put on notice of the applicant's claims and have agreed to stop promotion of [Ripple's] services under the PayID mark
Interestingly, while NPPA filed an application for registration of the PayID mark in October 2016, the application lapsed in April 2018, and was only recently replaced with a new application (in more classes) on 24 July 2020. Regardless, even if Ripple pursues a domestic/international rebrand of PayID, NPPA has indicated that it is willing to pursue further interim relief. More to come at the next interlocutory hearing on 28 August 2020.