Macquarie Bank Limited v Great Southern Loan (SP) Pty Ltd

This matter concerned an opposition by Macquarie Bank Limited to the registration of a trade mark by Great Southern Loan (SP) Pty Ltd. The opposition was brought before a Hearing Officer of the Trade Marks Hearings. The dispute centred on whether the applicant's proposed trade mark was identical or deceptively similar to the opponent's registered trade mark, which covered financial and banking services.

The Hearing Officer was required to determine whether the applicant's trade mark infringed section 44(2)(a) of the *Trade Marks Act 1995* (Cth). This section mandates the rejection of an application if the applicant's trade mark is substantially identical with, or deceptively similar to, a registered trade mark for similar services, and the applicant's priority date is not earlier than the registered trade mark's priority date. The Hearing Officer also considered the definition of "deceptively similar" under section 10 of the Act, which requires the mark to nearly resemble the other mark such that it is likely to deceive or cause confusion.

The Hearing Officer applied the test for substantial identity, which involves comparing the marks side by side, noting similarities and differences, and assessing their importance in light of the essential features of the registered mark and the overall impression of resemblance. In this instance, the Hearing Officer found that the applicant's services were the same as those protected by the opponent's registration, and the registration clearly predated the application's priority date. The Hearing Officer concluded that the applicant's trade mark was substantially identical to the opponent's registered trade mark.

Consequently, the Hearing Officer decided that the ground of opposition based on section 44 of the Act succeeded. As at least one ground of opposition had succeeded, the opposition was upheld, and the Hearing Officer directed that the application for registration be refused. The applicant was also ordered to pay the opponent's costs.