Macquarie Bank Limited v Macquarie Bank Limited
[2025] ATMO 38
•24 February 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Macquarie Bank Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by Macarthur Credit Union Ltd to remove trade mark number 922504 (class 36) - MACBANK - in the name of Macquarie Bank Limited
and
Opposition by Macquarie Bank Limited to registration of trade mark application number 2133339 (class 36) - THE MACBANK (figurative) - in the name of Macarthur Credit Union Ltd
Delegate:
Timothy Brown
Representation:
Opponent: Frances St John of counsel, instructed by Baker Mckenzie
Applicant: Shauna Ross of counsel, instructed by IP Solved
Decision:
2025 ATMO 38
Trade Marks Act 1995 (Cth) – application under section 92(4)(b) - opposition to removal under section 96 – no use, or obstacle to use, of the trade mark during the relevant period – Registrar’s discretion not exercised – trade mark registration removed
Trade Marks Act 1995 (Cth) - opposition under section 52 – ss 42(b), 44, 58, 59, 60 and 62 considered – no grounds established – trade mark to proceed to registration.
Background
This decision concerns two matters: an opposition brought by Macquarie Bank Limited to an application made by Macarthur Credit Union Ltd under s 92 of the Trade Marks Act 1995 (Cth)[1] for the removal of trade mark 922504 from the Register of Trade Marks (‘Removal Application’) and an opposition brought by Macquarie Bank Limited under s 52 to the registration of trade mark application 2133339 (‘Application’) in the name of Macarthur Credit Union Ltd.
[1] In this decision, all references to sections or regulations are references to sections of the Trade Marks Act 1995 (Cth) or regulations of the Trade Mark Regulations 1995 (Cth) respectively, unless otherwise indicated.
Definitions
For clarification, this decision utilises the following definitions:
·The ‘Opponent’, Macquarie Bank Limited, being both the opponent to the Removal Application and the opponent to the Application.
·The ‘Applicant’, Macarthur Credit Union Ltd, being the removal applicant for the Removal Application, and the applicant for the Application.
Background to the Opposition to the Removal Application
Macquarie Bank Limited is the owner of the following registered trade mark:
Trade Mark Number
922504
Trade Mark
MACBANK (‘Registered Mark’)
Filing Date
7 August 2002
Services
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; including financial information services including on-line information services, banking and investment services, property investment banking, advisory and management services, commodities trading, futures trading, leasing and financing services, valuation services, sponsorship management (‘Registered Services’)
On 21 December 2021, the Applicant filed an application under s 92(4)(b) to remove the Registered Mark. The Removal Application was made in respect to all of the services for which the Registered Mark is registered.
The Opponent filed a Notice of Intention to Oppose the Removal Application on 23 February 2022 and subsequently filed a Statement of Grounds and Particulars on 23 March 2022. The Applicant filed a Notice of Intention to Defend on 11 May 2022. On 27 July 2022, the parties made an application for a cooling-off period of 6 months, which was subsequently granted. The cooling off period discontinued on 17 January 2023, following which the Opponent filed Evidence in Support on 17 April 2023. The Applicant filed Evidence in Answer on 8 August 2023. Evidence in Reply was filed by the Opponent on 13 October 2023.
Background to the opposition to registration of trade mark
The Applicant is the owner of the following trade mark:
Trade Mark Number
2133339
Trade Mark
(‘Applicant’s Mark’)
Filing Date
4 November 2020
Services
Class 36: Credit union services; banking services including savings, deposit, credit and electronic funds transfer services; credit card services; investment services; money exchange services; provision of loans including home, car and personal loans; insurance services including car, home and contents, valuables, travel insurance and pleasure craft and caravan insurance; lease-purchase financing; Internet banking; none of the aforesaid services relating to any form of charitable services, financial collections or financial sponsorships (‘Applicant’s Services’)
Endorsement
Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied;
It is a condition of registration that the word BANK in the mark shall, when the mark is in use, either be left out, or replaced by a word or words that are wholly descriptive and that have no trade mark significance in relation to the services in respect of which the mark is registered. Registration of this trade mark shall give no right to the exclusive use of the word BANK separately on its own
The Applicant’s Mark was examined and advertised for possible registration on 21 October 2021. The Opponent filed a Notice of Intention to Oppose registration of the Applicant’s Mark on 20 December 2021, followed by a Statement of Grounds and Particulars on 20 January 2022. The Applicant filed a Notice of Intention to Defend on 18 March 2022. Evidence in Support was filed by the Opponent on 23 June 2022, following which the parties requested a cooling off period of six months. The cooling off period was discontinued on 5 January 2023. Evidence in Answer was filed by the Applicant on 5 April 2023. The Opponent did not file any Evidence in Reply.
Hearing
Following the conclusion of the evidence stages of proceedings, the parties were provided with an opportunity to request a hearing. Both parties requested to be heard in relation to both matters and requested that the two matters be heard together. The matters were heard before me, a delegate of the Registrar of Trade Marks, on 25 November 2024. Frances St John of counsel, instructed by Elisabeth White and Colette Downie of Baker McKenzie, appeared on behalf of the Opponent. Shauna Ross of counsel, instructed by Tim Marshall of IP Solved, appeared on behalf of the Applicant.
Evidence
The following evidence was filed in relation to opposition to the Removal Application:
Declarant
Position
Date
Annexures or Exhibits
Evidence in Support
Paul Marriott (‘Marriott’)
Global Head of Corporate Affairs for the Macquarie Group Limited
15 April 2023
PM-1 to PM-29, including confidential annexures PM-18 and PM-28
Nicola Winifred Scheepers (‘Scheepers’)
Principal and Practice Group Leader at Griffith Hack
13 April 2023
NWS-1 to NWS-6
Nicole Kayla Smee (‘Smee’)
Manager of the Macquarie Group Limited’s Media Relations
14 April 2023
NKS-1 to NKS-4
Evidence in Answer
David Cadden (‘Cadden’)
Chief Executive Officer of the Applicant
8 August 2023
Exhibit DC-1 to DC-4
Evidence in Reply
Paul Marriott (‘Marriott 2’)
Global Head of Corporate Affairs for the Macquarie Group Limited
13 October 2023
PM-1 to PM-8 including Confidential Annexures PM2-4, PM2-5 and Confidential Schedule.
The following evidence was filed in relation to the opposition to the registration of the Applicant’s Mark:
Declarant
Position
Date
Annexures or Exhibits
Evidence in Support
Paul Marriott (‘Marriott 3’)
Global Head of Corporate Affairs for the Macquarie Group Limited
23 June 2022
Annexures PM-1 to PM-29 including Confidential Annexures PM-18 to PM28.
Nicola Winifred Scheepers (‘Scheepers 2’)
Principal and practice Group Leader at Griffith Hack
23 June 2022
Annexures NWS-1 to NWS-6
Nicole Kayla Smee (‘Smee 2’)
Manager of the Macquarie Group Limited’s Media Relations
23 June 2022
NKS-1 to NKS-4
Evidence in Answer
Dave Cadden (‘Cadden 2’)
Chief Executive Officer of the Applicant
4 April 2023
Exhibit 1 to Exhibit 36, including Confidential Exhibits A and B
Opponent
The Opponent is a wholly owned subsidiary of Macquarie Group Limited (‘Macquarie Group’), a holding company established in 2007. The Opponent is a global financial services provider that operates in various markets, including asset management, retail and business banking, leasing, commodity trading, investment and wealth management. According to Marriott, the Opponent’s history dates to 1969 when Hill Samuel Australia Limited, a predecessor company to the Opponent, began offering banking and investment services in Australia. The Opponent adopted the name ‘Macquarie Bank’ in 1985 and opened its first branch in Sydney in March 1985.
According to Marriott, the Opponent, its predecessors in title and its related entities under the Macquarie Group have continuously used the trade marks ‘MACQUARIE BANK’ and ‘MACQUARIE’ since at least the 1970s. Annexed to Marriott and Marriott 3 are examples of advertising campaigns featuring these trade marks from between 2009 and 2020.[2]
[2] Marriot 3 Annexure PM-17.
In addition to the Registered Mark, the Opponent is the owner of the following registered trade marks (‘Macquarie Marks’):
Trade Mark Number
Trade Mark
Priority Date
Services
805905
MACQUARIE BANK
2 September 1999
See Schedule A
805906
2 September 1999
415326
18 September 1984
1104046
MACQUARIE BANK FOUNDATION
15 March 2006
805904
MACQUARIE
2 September 1999
1056136
MACQUARIE
19 May 2005
Mr Marriott declares that because of their extensive use, the Macquarie Marks have acquired a significant reputation. In support, Marriott 3 includes
·The Opponent’s annual marketing expenditure since 2010;[3]
·The Opponent’s net global operating income, total income and the Australia/New Zealand share of the total income generated by the Opponent from 2010 to 2020;[4]
·Screenshots from the Opponent’s social media accounts featuring use of the Macquarie Marks, namely Facebook (since 2012), Twitter (since 2008) and Instagram (since 2016);[5]
·Photographs of prominent signage feature the Macquarie Marks.[6]
[3] Marriott 3 Confidential Annexure PM-18.
[4] Marriott 3 Annexure PM-19.
[5] Marriott Annexure PM-15; Marriott 3 Annexure PM-15.
[6] Marriott Annexure PM-16; Marriott 3 Annexure PM-16.
Furthermore, from 2010 to 2022, Brand Finance has ranked ‘MACQUARIE’ as one of Australia’s top 100 brands across all sectors,[7] and from 2018 to 2022, one of the top 500 global banking brands.[8] Independent brand tracking surveys conducted by KPMG are also annexed to Marriott 3.
[7] Marriott 4 [50]; Annexure PM-27.
[8] Ibid.
Mr Marriott declares that he is aware that the Opponent has been colloquially referred to by the Australian public as ‘MACBANK’. Mr Marriot further declares that the Registered Mark has been commonly and continuously used as a moniker for the Opponent’s trading name, Macquarie Bank, since as early as 1988. Annexed to Marriott and Marriott 3 is an extensive collection of media articles that utilise the Registered Mark in reference to the Opponent.[9] In addition, the following domain names are registered by the Opponent:
· ‘Opponent’s Domain Names’)
[9] Marriott Annexure PM-22, Annexure PM-23; Marriot 3 [45], Annexure PM-23.
The above domain names redirect users to the websites or (‘Opponent’s Websites’). The Opponent has also used the Macquarie Marks on the websites macquariebank.com.au and Annexed to Marriott is a schedule of domain names (numbering 116) that refer to Macquarie Bank or contain obvious misspellings of Macquarie Bank.[10]
[10] Marriott Annexure PM-14.
Smee and Smee 2 include social media searches for the word ‘macbank’ using the program Spinklr, a social media monitoring platform. Annexed to Smee are the results of these searches, which include references to ‘macbank’ and the Opponent by users of various popular social media platforms. For example:
Scheepers and Scheepers 2 include an examination report dated 26 February 2018 issued by IP Australia and a response dated 21 September 2021, including a declaration made by David Cadden dated 9 September 2021 (‘Cadden 3’).
Applicant
The Applicant is a financial banking institution and authorised deposit taking institution founded in Camden, New South Wales, in 1971. Initially called Clutha Employees Credit Union, it became Macarthur Credit Union in 1978 and rebranded to ‘THE MAC’ in 2013. At present, the Applicant operates three branches in Camden, Picton and Tahmoor. The ‘MAC’ was adopted to recognise the Applicant’s connection with the Macarthur region in New South Wales from which it originated.
Mr Cadden states that use of the word ‘bank’ is permitted provided it is used and licensed by an authorised deposit taking institution. Annexed to Cadden 2 is an extract of s 66(1AC) of the Banking Act 1959 (Cth). Mr Cadden declares that by utilising the term ‘bank’, the Applicant is better able to communicate the nature of its services to customers rather than relying on more ambiguous terms such as ‘credit union’.
The Applicant’s Mark was developed in August 2012 in conjunction with consultants as part of an audit designed to refresh all of the Applicant’s branded assets. Exhibited to Cadden 2 is a copy of the results of this audit.
According to Cadden 2, ‘THE MAC’ has been in use since July 2013. This has included use of ‘THE MAC’ on the Applicant’s website,[11] and in signage in its three branches. Cadden 2 includes website traffic data from 2017 to 2022.[12] Additionally, ‘THE MAC’ has been used on external communications, all marketing material, agreements with third party suppliers and in relation to all the Applicant’s social media channels.[13] Exhibited to Cadden 2 are examples of this use.
[11] Cadden 2 Exhibit 13.
[12] Cadden 2 [38].
[13] Cadden 2 [53].
According to Cadden 2, the Applicant intends to replace ‘THE MAC’ with the Applicant’s Mark.
Opposition to the Removal Application
Provisions, Onus and Relevant Period
The Applicant filed for removal under section 92(4)(b), which relevantly provides:
92 Application for removal of trade mark from Register etc.
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a)…
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application for registration of the trade mark.[14] I note that five years since filing the application for registration of the Registered Mark have passed.
[14] Section 93(2) prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) sch 1 pt 3 as applies in the present matter. The updated s 93(2) applies to trade marks filed from 24 February 2019 onwards.
The Applicant alleges that the Opponent did not use the Registered Mark in the course of trade in Australia at any time within the three-year period ending on 21 November 2021 (‘Relevant Period’).
The Opponent bears the onus of rebutting the allegation made under s 92(4)(b).[15] The standard of proof is on the balance of probabilities.[16] The Opponent may rebut the allegation by establishing that:
·The Registered Mark was used in good faith by its registered owner in relation to the Registered Services during the Relevant Period;[17] or
·The Registered Mark was not used because of circumstances that were an obstacle to use of the Registered Mark during the Relevant Period.[18]
Discussion
[15] Trade Marks Act 1995 (Cth) section 100(1)(c).
[16] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[17] Ibid s100(3)(a).
[18] Ibid s100(3)(c).
Use of the Registered Mark during the Relevant Period
The first issue to be determined is whether there has been use of the Registered Mark by the registered owner, or an authorised user, in good faith in relation to the Registered Services during the Relevant Period.
The ‘use’ required is ‘use as a trade mark’. This is use of the sign as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between the goods and the person who applies the trade mark to the goods.[19] In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the High Court stated:
Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[20]
[19] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
[20] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).
In its Statement of Grounds and Particulars, the Opponent contends that it has used the Registered Mark in good faith for all of the Registered Services up to and during the Relevant Period. The Opponent relies on the following:
·use of the Registered Mark in Domain Names, all of which redirect to the Opponent’s Websites; and
·use of the Registered Mark in the form of keywords comprising of ‘MACBANK’ or ‘MACBANK’ with additions or alterations not substantially affecting the identity of the Registered Mark.
The primary issue between the parties in regard to the opposition to the Removal Application is whether any of the alleged instances of trade mark use relied on by the Opponent can be considered use as a trade mark.
The Opponent’s Domain Names and Opponent’s Websites
The Opponent asserts its use and registration of the Opponent’s Domain Names constitutes use of the Registered Mark in relation to the Registered Services. The Opponent contends that its use of these domain names has caused a significant portion of the Australian public to associate the Registered Mark with the Opponent or the broader Macquarie Group.
The Opponent’s Domain Names were all registered well before the Relevant Period and continued to be used during the Relevant Period. According to Marriott, the Opponent utilises the Opponent’s Domain Names to direct consumers to the Opponent’s Websites. The Opponent’s Websites do not feature the Registered Mark but instead utilise the Opponent’s various Macquarie Marks. Reproduced below is a screenshot from the Opponent’s Websites:
Whether a domain name can be considered use of a trade mark is not straightforward. This issue was considered in Solahart Industries Pty Ltd v Solar Shop Pty Ltd,[21] a trade mark infringement matter, in which the domain name was used to direct customers to a different website, The trade mark, SOLARHUT, had previously been used by the respondent, but had been replaced by the trade mark SUNSAVERS. The respondent continued to maintain the domain name with intent of redirecting users to its new domain, Justice Perram concluded the previous domain name was being used as a trade mark because there had historically been promotion of a trade mark, SOLARHUT, in conjunction with the domain name, and that the domain name remained in use for the purposes transferring customers seeking goods by reference to the old trade mark, SOLARHUT, to the new website.[22]
[21] [2011] FCA 700 (Perram J).
[22] Ibid [61].
A different outcome was reached in Taxiprop Pty Ltd v Neutron Holdings Inc[23] (‘Taxiprop’). In Taxiprop, the website redirected users to a website featuring the trade mark 13CABS. The limetaxis.com.au domain name remained visible, but O’Callaghan J held that a reasonable member of the public would conclude that despite the presence of the limetaxis domain name, the badge of origin for the services was 13CABS.[24]
[23] [2020] FCA 1565 (O’Callaghan J).
[24] Ibid [145].
In this matter there is no evidence of any historical use of the Registered Mark by the Opponent, nor is there any demonstrated use of the Opponent’s Domain Names for any purpose other than directing users to the Opponent’s Websites. Upon being directed to the Opponent’s Websites consumers are not exposed to the Registered Mark, but to the Macquarie Marks. In this context, any consumer who attempts to access a webpage associated with the Opponent’s Domain Names will only be exposed to the Macquarie Marks, and in my view, will only be able to associate the Macquarie Marks with any offer of service being made. Accordingly, I do not consider the use of the Opponent’s Domain Names to constitute use of a trade mark.
Use of Macbank Keywords
The Opponent contends that its use of ‘MACBANK keywords’ is use as a trade mark. In around February 2020, the Opponent purchased Google keywords including ‘Macbank’, ‘Macbank online’ and ‘macbank login’.[25] As Mr Marriott explains, when a consumer conducts a search for ‘macbank’ in Google’s search engine, the result will often be an advertised link from the Opponent.[26] The Opponent compensates Google to ensure this sponsored link is one of the top search results.[27] In essence, the keywords are utilised to ensure potential customers are exposed to a link sponsored by the Opponent. Annexed to Marriott 2 is a search traffic report showing consumer searches featuring the keywords.[28] An example of the sponsored link is reproduced below:
[25] Marriott 2 [11].
[26] Ibid.
[27] Ibid.
[28] Ibid Annexure PM2-3.
There is no dispute between the parties that the Opponent use of ‘MACBANK in the various keywords was use of a sign without additions or alterations substantially affecting the identity of the Registered Mark. The more difficult question is whether this use constitutes use as a trade mark. This was the issue considered in Veda Advantage Ltd v Malouf Group Enterprises Pty Ltd[29] (‘Veda’). In Veda, it was alleged that use of the word ‘veda’ as a keyword and in sponsored links generated by the keywords amounted to trade mark infringement. Justice Katzmann concluded that the keyword was not use as a trade mark, emphasising, amongst other things, that the keywords was invisible to consumers.[30]
[29] [2016] FCA 255 (Katzmann J).
[30] Ibid [126].
The Opponent submits that Veda is distinguishable from the present matters. The basis for this submission is that consumers who search for ‘macbank’ in google will be presented with a sponsored link to the Opponent’s Websites. In my view, this fact does not assist the Opponent. Although the keywords may assist the Opponent in attracting prospective customers who search online for the term ‘Macbank’, I have difficulty viewing the use of the keywords in this manner as use a badge of origin. The keywords only serve the function of ensuring a consumer who enters ‘macbank’ in Google’s search engine is exposed to the Opponent’s sponsored link. Whilst it is evident from the search traffic report provided in Marriott 2 that consumers have done this,[31] the intent behind the consumers searches, and whether they were seeking to interact with the Opponent’s services is unclear. More importantly, as with the Opponent’s Domain Names, all keywords are directed to links to the Opponent’s Websites, which features only the Macquarie Marks. Consumers interacting with the Opponent’s Websites would only construe MACQUARIE and MACQUARIE BANK as the origin of the services being offered, not the Registered Mark. It is unclear to me in this context how use of ‘MACBANK’ as a keyword could serve to distinguish the Registered Services from those of other traders. The presence of ‘MACBANK’ is, ultimately, indiscernible to the consumers. For these reasons, I do not consider use of the keywords to be use as a trade mark.
[31] Marriott 2 Annexure PM2-3.
For these reasons I am not satisfied that the Opponent has used the Registered Mark within the Relevant Period. As the Opponent has not established use of the Registered Mark or raised any circumstances that were an obstacle to the use of the Registered Mark, I will now consider whether it is appropriate to exercise discretion to allow the Registered Mark to remain registered.
Discretion
The Opponent submits that to extent the Registered Mark has not been used in respect of any services, the Registrar ought to exercise its discretion to allow the Registered Mark to remain registered in respect of those services.
Section 101 relevantly provides:
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
The Removal Opponent bears the onus of satisfying me that that the discretion under s 101(3) ought to be exercised.[32]
[32] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).
In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[33] the Full Court summarised the considerations relevant to the exercise of the Registrar’s discretion:
·whether there has been abandonment of the trade mark;
·whether the registered proprietor of the mark still has a residual reputation in the mark;
·whether there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
·whether the applicant for removal had entered the market in knowledge of the registered mark;
·the registered proprietors were aware of the applicant’s sales under the mark;
·whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[34]
[33] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).
[34] Ibid [153].
The Opponent advanced the following reasons as to why the Registered Mark should not be removed from the Register:
·There has been no abandonment of the Registered Mark.
·There is an enduring connection in the relevant consumers mind between the Registered Mark and the Opponent. The Opponent relies on references to MACBANK in third party media articles, and the various extracts of social media posts featuring members of the public referencing MACBANK annexed to Smee. The Opponent submits that consumers would be confused should another party adopt the trade mark, MACBANK.
·The is a danger of confusion between the Opponent and the Applicant should the Registered Mark be removed and the Applicant allowed to use the Applicant’s Mark, noting both parties operate in the finance and banking sectors.
·Removal of the Registered Mark will undermine the Opponent’s various anti-fraud and anti-phishing strategies.
·The Opponent will be severely prejudiced if the Registered Mark is removed.
As an initial observation, I do not consider this matter to involve any abandonment. The Opponent has never used to Registered Mark as a trade mark prior to or including the Relevant Period. According to Marriott 2, the Opponent explored potential brand extensions utilising the Registered Mark. Mr Marriott declares that in around January 2022 the was informed by an officer of the Macquarie Group that an external design company was commissioned to prepare a proposal relating the Opponent’s brand evolution.[35] A further brand extension report was prepared in December 2022. Annexed to Marriot 2 are copies of these proposals.[36] The Opponent has requested these annexures remain confidential, so I will merely note that they do feature the Registered Mark.
[35] Marriott 2 [12].
[36] Ibid Confidential Annexure PM-2-4; PM-2-5.
The Applicant notes that these proposals occurred after the Removal Application was made, and the filing of the Applicant’s Mark. Further, the Applicant submits that the context surrounding the proposals, the purpose for which they were prepared, and whether there was any intention to proceed with the proposal is lacking. On this point, I agree with the Applicant. The proposals annexed to Marriott 2 demonstrate a degree of consideration towards the potential usage of the Register Mark as a trade mark. However, there is no evidence of any implementation, or plans to implement that might demonstrate a clear intention to use of the Registered Mark as a trade mark in the future, nor has there been any evidence of use of the Registered Mark after the Relevant Period.
I acknowledge that the registration of the Opponent’s Domain Names serves a defensive function, and as Mr Marriott describes, helps prevent rogue and/or potentially malicious third parties from conducting fraudulent, malicious or scamming activities.[37] However, the removal of the Registered Mark will not preclude the Opponent from maintaining those domain names or from engaging in anti-fraud/phishing measures.
[37] Marriott 2 [24].
Regarding the connection in minds of the public between the Registered Mark and the Opponent, I do not find this submission persuasive. I acknowledge that the third party media articles and social media, included in the Opponent’s evidence in support, demonstrate a tendency amongst some members of the media and public to abbreviate ‘Macquarie’ as ‘Mac’, or use ‘Mac’ as a moniker for ‘Macquarie’. However, this is not the result of any trade mark or commercial use by the Opponent, or from any residual reputation in the Registered Mark.
Considering all of the above, I am not satisfied that it is reasonable to exercise the Registrar’s discretion. Accordingly, the Removal Opponent has not established its opposition to the removal of the Registered Mark. I now turn to the opposition under s 52.
Opposition to the Registration of the Applicant’s Mark
Grounds, Onus and Relevant Date
The nominated grounds of opposition to the registration of the Applicant’s Mark are ss 42(b), 44, 58, 59, 60, and 62.
The Opponent bears the onus of establishing one or more of the grounds of opposition.[38] The required standard of proof is on the balance of probabilities.[39] The date at which the rights of the parties will be determined is 4 November 2020 (‘Relevant Date’), being the filing date of the Applicant’s Mark and the priority date of the Applicant’s Mark for the purposes of ss 44 and 60.
Discussion
[38] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[39] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Section 44
Section 44 relevantly provides:
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
To succeed under this ground of opposition the Opponent must establish that the Applicant’s Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods or services that are similar or closely related to the Applicant’s Services.
The Opponent relies on the Registered Mark and the Macquarie Marks as the basis for its ground of opposition under s 44. As the Registered Mark was the subject of the Removal Application, and I have decided to remove the Registered Mark from the Register, I have only considered the Macquarie Marks under this ground of opposition.
The Macquarie Marks have an earlier priority date than the Applicant’s Mark and are made in the name of a person other than the Applicant. The services of the Macquarie Marks, being a variety of banking and finance services, are the same or similar to the Applicant’s Services.
Comparison of Marks
The Opponent submits that the overall impression of the Applicant’s Mark and the Macquarie Marks are such that a sufficient number of ordinary persons would be caused to wonder whether services offered under the Applicant’s Mark derive from the same source as services provided under the Macquarie Marks.
Whether two trade marks are substantially identical is determined by a side by side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emergers from the comparison.[40] On a side by side comparison the differences between the Macquarie Marks and the Applicant’s Mark are readily apparent. ‘MACQUARIE’ and ‘MAC’ are distinct words with overt visual and aural differences between them. There is no overall impression of similarity between the marks.
[40] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
Section 10 defines ‘deceptive similarity’ in the following terms:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[41]
[41] [1963] HCA 66, [13].
The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[42] Accordingly, an allowance is made for imperfect recollection of the trade marks.[43] The impression comes from the trade marks in their entirety,[44] and is informed by the look, sound and ideas conveyed by the trade marks.[45]
[42] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[43] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).
[44] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[45] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[46] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[47]
[46] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
[47] Ibid.
The Applicant’s Mark is comprised of the phrase ‘the mac bank’ presented inside a square with the words covering the upper half of the square. The word ‘mac’ is significantly more prominent than the other elements. The Macquarie Marks are comprised of either the word MACQUARIE by itself, or with the words ‘BANK’ or ‘BANK FOUNDATION’. A circular device is also present in trade mark registrations 805906 and 415326.
Visually and aurally, there are significant differences between the trade marks. The word ‘MACQUARIE’ is comprised of three syllables and shares only the initial three letters with the Applicant’s Mark. Similarly, there is little conceptual similarity to be found between the trade marks. ‘MAC’ is not a common or established abbreviation for Macquarie. The additional word elements of the marks, namely the article ‘THE’, and the word ‘BANK’ are either descriptive or otherwise non distinctive and have little impact when considering the trade marks in their entirety. On the other hand, the stylisation of the Applicant’s Mark, and in the case of trade mark registrations 805906 and 415326 the circular device, only serve to further differentiate the trade marks. In my view, even allowing for imperfect recollection there would not be a real and tangible danger of confusion between the trade marks.
For these reasons, I am not satisfied that the Applicant’s Mark is deceptively similar to any of the Macquarie Marks. The ground of opposition under s 44 is not established.
Section 60
Section 60 provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
To establish this ground of opposition, the Opponent must establish:
- A reputation was acquired by another trade mark in Australia before the Relevant Date; and
- That because of the reputation of the other trade mark, use of the Applicant’s Mark would be likely to deceive or cause confusion.
The Opponent contends that the Macquarie Marks and its MACBANK mark have acquired a reputation in Australia before the Relevant Date.
Reputation, in the context of s 60, refers to the ‘recognition of [the mark] by the public generally’.[48] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[49]
[48] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[49] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[50] or providing evidence of a high volume of sales,[51] advertising expenditure or other promotion of goods or services to which the trade mark applies.[52] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[53]
[50] Ibid [118].
[51] McCormick (n 48) [86].
[52] Ibid.
[53] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
Generally, the relevant reputation must be amongst a significant or substantial number of persons.[54] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[55]
[54] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[55] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
The Applicant emphasises that any reputation acquired by the Macquarie Marks should not be equated with a reputation in ‘MACBANK’. The Applicant submits that the evidence does not establish that MACBANK has acquired a reputation as of the Relevant Date, and reiterates its submissions made in the context of the Removal Application that there has been no use of MACBANK by the Opponent in Australia.
I have no difficulty finding that the Macquarie Marks have acquired a reputation in Australia before the Relevant Date in relation to banking and financial services. I arrive at this conclusion having regard to:
·The Opponent’s extensive history of continuous use of the Macquarie Marks since 1985;
·The Opponent’s significant advertising expenditure demonstrated from 2010 onwards.
·The Opponent’s considerable net global operating income, and total income, including the Australia/New Zealand share of the total income generated by the Opponent from 2010 to 2020;
·The Opponent’s various advertising campaigns featuring the Macquarie Mark.
·The Brand Finance survey listing ‘MACQUARIE BANK’ as one of the top 500 global brands and top 100 Australian brands.
·The use of the Macquarie Marks on the Opponent’s social media accounts.
The same cannot be said for the Opponent’s Registered Mark. As discussed in the context of the Removal Application, there has been no use of the Opponent’s Registered Mark as a trade mark. The only use of the Registered Mark by the Opponent is in the form of keywords or in the Opponent’s Domain Names. This use is not sufficient to establish any degree of reputation acquired by the Registered Mark.
The Opponent claims customers and the media habitually refer to it as ‘MACBANK’. In support, the Opponent directs me to the various media articles and social media posts included in its evidence referencing ‘MACBANK’ in association with the Opponent. An example of one of these articles is The Australian article published on 7 January 2003 entitled MacBank targets Korea. Marriot 3 references 100 such articles from various dates between 1999 and 2020. Smee 2 also includes an extensive list of social media posts referencing ‘MACBANK’ in a similar manner.
Despite the extensive references to MACBANK from the media, there is not a single instance of use in the course of trade of the Registered Mark by the Opponent. Whilst this is not a requirement of s 60, there are significant challenges in the Opponent relying only on use by others to establish that its trade mark has acquired a reputation. It also stands in stark contrast to the Opponent’s usage of its Macquarie Marks. Significantly, the use in media articles is not commercial use, and the evidence only establishes that the media and consumers have, in the context of writing or posting about the Opponent, referred to the Opponent as ‘MACBANK’. In most cases the public appears to be using ‘MACBANK’ to refer to the Opponent as a corporate entity or the Macquarie Group. This does not equate to the Registered Mark having acquired a reputation in its own right, or the reputation of the Macquarie Marks extending to the Registered Mark. In the absence of any use as a trade mark by the Opponent, I am not satisfied that the Registered Mark has acquired a reputation in Australia.
Accordingly, I am satisfied that only the Macquarie Marks have a reputation in relation to banking and finance services as of the Relevant Date. I will now consider whether because of this reputation, use of the Applicant’s Mark would be likely to deceive or cause confusion.
Likelihood of deception or confusion
The existence of a reputation does not necessarily mean use of the Applicant’s Mark would be likely to deceive or cause confusion. The Opponent needs to establish a causal connection between the reputation of the Macquarie Marks and the likelihood that use of the Applicant’s Mark will deceive or cause confusion.
The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd:[56]
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[57]
[56] [1979] 19 RPC 410.
[57] Ibid 423.
The test for deception or confusion turns on whether use of the Applicant’s Mark would result in a reasonable number of people being caused to wonder whether the Applicant’s Services derive from the same trade source as another trade mark.[58] Factors relevant to this determination include the strength of the reputation of the other trade mark, the similarity between the Applicant’s Services and the goods or services associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[59] As a delegate of the Registrar of Trade Marks explained in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[60]
[58] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).
[59] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
[60] [2010] ATMO 5 (Hearing Officer Lyons).
In this instance the services associated with the trade marks are the same or very similar. However, as discussed in regard to the section 44 ground of opposition, I do not consider the Macquarie Marks and the Applicant’s Mark to be deceptively similar. Although deceptive similarity is not a requirement of s 60, the similarity of the trade marks remains a relevant consideration,[61] and the differences between the trade marks discussed earlier in this decision are applicable here. In my view, the differences between the trade marks are significant enough that a consumer encountering services bearing the Applicant’s Mark would not likely be confused or deceived as to the origin of those services due to the reputation of the Macquarie Marks. Accordingly, I am satisfied that there would not be a real tangible danger of confusion between the Macquarie Marks and the Applicant’s Mark. The ground of opposition under s 60 is not established.
[61] Qantas Airways Ltd v Edwards [2016] FCA 729, [142]-[143] (Yates J).
Section 42(b)
Section 42(b) of the Act relevantly provides:
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent relies on ss 18 and 29 of the Australian Consumer Law (‘ACL’) in Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under s 42(b).
To succeed in an opposition under s 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Applicant’s Mark would contravene ss 18 or 29 of the ACL or constitute passing off. [62]
[62] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
Australian Consumer Law
The requirement that the relevant consumer be misled or deceived is one of the main differences between ss 18 and 29 of the ACL and s 60. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[63] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than s 60.[64]
[63] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
[64] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).
For the reasons outlined in relation to the s 60 ground of opposition, in my view it is not likely that use of the Applicant’s Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant services into believing that the Applicant’s Mark, and any of the Opponent’s marks are related.
Passing Off
Where a trade mark does not contravene s 18 of the ACL, it is unlikely to amount to passing off.[65] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation that:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[66]
[65] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).
[66] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40].
Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of ss 18 and 29 of the ACL. Given my findings in relation to ss 18 and 29 of the ACL, I am also satisfied that use of the Applicant’s Mark would not constitute passing off.
In consideration of the above reasons, the ground of opposition under s 42(b) has not been established.
Section 58
Section 58 provides:
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark can be established through authorship and use of a trade mark,[67] or, in the absence of use, a combination of authorship, the filing of an application and an intention to use the trade mark.[68] To succeed in this ground of opposition, the Opponent must establish the following:
· The Applicant’s Mark is identical, or substantially identical, to an earlier trade mark;
· The alleged earlier mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicant’s Services; and
· Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[69]
[67] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd. v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).
[68] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).
[69] Pham (n 68) [50].
The Opponent contends that it is the owner of the Applicant’s Mark on the basis that it has used a substantially identical mark since at least 1988, and since February 2020 in the form of the MACBANK keywords.
As discussed earlier in this decision in relation to the Removal Application, I do not consider the Opponent’s use of keywords or domain names to be use of ‘MACBANK’ as a trade mark. It follows that the Opponent’s use of the domain names or keywords is not sufficient to establish an earlier claim of ownership of the trade mark.
Furthermore, despite the contention that the Opponent has used a substantially identical mark since 1988, there is no evidence of any other use of MACBANK by the Opponent other than the use in the Opponent’s Domain Names and keywords. Marriott 3 includes use by others of MACBANK, namely in the form of media and newspaper articles since as early as 1988.[70] However, none of these articles are published by the Opponent. Rather, MACBANK appears to be utilised as a moniker, contraction or abbreviation in the context of articles discussing Macquarie Bank.[71] I am not satisfied that these articles establish any claim of ownership based on use of a trade mark.
[70] Marriott 3 PM-22.
[71] Ibid.
In so far as the Opponent’s Macquarie Marks are concerned, as stated in the discussion of the s 44 ground of opposition, I do not consider the Applicant’s Mark substantially identical to any of the Macquarie Marks. Accordingly, I am not satisfied that a person other than the Applicant is the owner of the Applicant’s Mark.
The ground of opposition under s 58 is not established.
Section 59
Section 59 provides:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) To use, or authorise the use of, the trade mark in Australia; or
(b) To assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Filing an application for registration of a trade mark is a claim of intention to use the trade mark.[72] The onus is on the Opponent to establish a lack of intention to use the trade mark.[73] If the Opponent makes out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date, the evidentiary onus will shift to the Applicant to demonstrate its intention to use the trade mark at the time of filing.[74]
[72] Aston Harlee Manufacturing Co (1963) 103 CLR 391, 401 (Fullagar J); Suyen Corporation v Americana International Limited [2010] FCA 638, [193] (Dodds-Streeton J) (‘Suyen’).
[73] Ibid.
[74] Suyen (n 72) [190].
100.In the SGP, the Opponent contends that the Applicant never has, or no longer has, any intention of using the Applicant’s Mark in Australia, and that to date the Opponent has not provided any evidence that it has used the Applicant’s Mark in Australia. In particular, the Opponent asserts that the effect of the endorsement is that any use of the Applicant’s Mark without the term ‘BANK’ would not constitute use of the Opposed Mark. In support of this contention, the Opponent directs me to the statement in Cadden 2 that ‘[t]he Applicant intends to use the Opposed Mark in the same way it has used THE MAC including as detailed below’[75].
[75] Cadden 2 [18].
101.The Applicant submits that the reliance on the endorsement is of no assistance to the Opponent. Rather, the endorsement simply indicates that the word ‘BANK’ is descriptive. Further, Opponent submits that Cadden 2 contains a number of statements from Mr Cadden concerning intent to use the Applicant’s Mark.
102.I am not persuaded that the Opponent has discharged its onus to establish a lack of intention to use the Applicant’s Mark. Mr Cadden states that the ‘Applicant is migrating to the Opposed Mark’,[76] ‘planning to change to THE MAC BANK officially’[77] and that by utilising the term ‘bank’ the Applicant ‘is better able to simply describe what it does’[78]. The Opponent has introduced no evidence that casts doubt on any of Mr Cadden’s statements.
[76] Ibid [17].
[77] Ibid [10].
[78] Ibid.
103.Regarding the endorsement, in my view this merely reflects an acknowledgment by the Applicant that in the context of the applied for services the term ‘bank’ is descriptive. Furthermore, there is no evidence, or any persuasive submission from the Opponent, that the absence of the word ‘’bank’ or its replacement with an element similarly descriptive would not result in a trade mark with additions or alterations substantially affecting the identity of the trade mark.[79]
[79] See: s 7(1).
104.The ground of opposition under s 59 is not established.
Section 62
Section 62 relevantly provides:
The registration of a trade mark may be opposed on any of the following grounds:
…
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
106.To establish the ground of opposition under section 62(b), the Opponent must demonstrate that in applying for the registration of the Applicant’s Mark that the Applicant filed representations or evidence that was false in material particulars and that due to those false representations or evidence the trade mark was accepted for registration.
107.Section 62(b) is concerned with ‘representations that are false in a way that was material to the decision to accept the application for registration’.[80] There must be a causal connection between the false representation and the decision to accept the application for registration of the trade mark.
[80] Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138, [96] (Katzmann, Wheelahan and Hespe JJ).
The Opponent submits the evidence submitted by the Applicant to the Delegate during the examination process falsely represented that the Applicant is using the Applicant’s Mark since 2021 and that it had used the Applicant’s Mark throughout Australia for all of the services claimed in Applicant’s Services.
Central to the Opponent’s submission is the contention that the use demonstrated in Cadden 3 is not use of the Applicant’s Mark. Examples of the trade marks featured in Cadden 3 and the Applicant’s Mark are reproduced below:
Examples from Cadden 3
Applicant’s Mark
THE MAC
110.As an initial observation, I note that the Opponent seems to take issue with the delegate’s assessment under s 7(1) rather than any statement or exhibit included in Cadden 3. In its SGP, the Opponent states that ‘there is no evidence submitted by the Applicant that shows use of the Opposed Mark in manner applied for’. However, whether this is the case depends on the delegate’s assessment on whether the use demonstrated in Cadden 3 was use with additions or alternations that do not substantially affect the identity of the trade mark.
Section 7(1) provides:
If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark’.
112.Whether a trade mark has been used with additions or alterations that substantially affect the identity of the trade mark has been interpreted to equate to an assessment of whether the alleged use of the trade mark is substantially identical to the registered trade mark.[81] The test for assessing substantial identity involves a side by side comparison between the trade marks, and a determination of whether, having regard to their similarities and differences, a total impression of similarity emerges.[82]
[81] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [256] (Yates J); PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128, [161] (Jagot, Nicholas and Burley JJ).
[82] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
In my view, whilst I do consider the addition of ‘macarthur credit union’ to be an addition that substantially affects the identity of the mark, the remainder of the trade marks included in Cadden 3 demonstrate use of the Applicant’s Mark. The essential feature of these marks is ‘THE MAC’, and the addition of the word BANK, which is plainly descriptive in the context of the Applicant’s Services, is not sufficient to differentiate the marks. Compared side by side there is a total impression of similarity. It follows that it was reasonable for the delegate to conclude that the Applicant’s Mark had been used in the manner applied for, and that the Applicant’s Mark was not accepted on the basis of false representations.
Accordingly, the Opponent has not established the ground of opposition under s 62(b).
Decision
The Removal Opponent has not established its opposition to the removal of the trade mark 922504. Accordingly, I direct that trade mark registration 922504 be removed from the Register one month from the date of this decision.
116.Should the Registrar be served with a notice of appeal before the removal of the Registered Mark, I direct that the removal of the Registered Mark not occur until the appeal has been decided or discontinued, and that any disposition of the removal application be in accordance with the Court’s orders or direction.
117.Section 55(1) relevantly provides:
Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
118.The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark 2133339 may proceed to registration one month from the date of this decision.
119.Should the Registrar be served with a notice of appeal before the registration of the Applicant’s Mark, I direct that the registration of the Applicant’s Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.
Costs
120.Both parties sought an award of costs. As the Applicant has been successful, I award costs against the Opponent under section 221 in accordance with Schedule 8 of the Regulations in respect of the removal application for trade mark number 922504. For the opposition under s 52 to the registration of trade mark number 2133339, I award reduced costs against the Opponent in the same manner as Hume Industries (Malayasia) Berhad v James Hardie & Coy Pty Ltd.[83]
[83] [2001] ATMO 78 (Delegate Williams).
Timothy Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
24 February 2025
Schedule A – Services of the Macquarie Marks
Trade Mark Number 415326
Class 36: Banking services
Trade Mark Number 805904
Class 35: Corporate advisory services including providing advice on corporate strategies and restructures, mergers, acquisitions, joint ventures and sales and purchases of businesses; managing client and customer relation issues; economic forecasting and market research; auditing and due diligence services
Class 36: Financial services; financial information services including on-line information services; banking and investment services; property investment banking, advisory and management services; commodities trading; futures trading; insurance services; leasing and financing services; valuation services; real estate management
Trade Mark Number 805905
Class 35: Corporate advisory services including providing advice on corporate strategies and restructures, mergers, acquisitions, joint ventures and sales and purchases of businesses; managing client and customer relation issues; economic forecasting and market research; auditing and due diligence services
Class 36:Financial services; financial information services including on-line information services; banking and investment services; property investment banking, advisory and management services; commodities trading; futures trading; insurance services; leasing and financing services; valuation services; real estate management; sponsorship management
Trade Mark Number 805906
Class 35: Corporate advisory services including providing advice on corporate strategies and restructures, mergers, acquisitions, joint ventures and sales and purchases of businesses; managing client and customer relation issues; economic forecasting and market research; auditing and due diligence services
Class 36:Financial services; financial information services including on-line information services; banking and investment services; property investment banking, advisory and management services; commodities trading; futures trading; insurance services; leasing and financing services; valuation services; real estate management; sponsorship management
Trade Mark Number 1056136
Class 35:Business management services including those services for corporations, businesses and individuals; business advisory services including corporate business management advisory services, providing advice on corporate strategies and restructures, fund raising, mergers, acquisitions (including private treaty acquisitions), divestments, take overs/defences, corporate restructuring, privatisations and tailored strategic advice, joint ventures and sales and purchases of businesses; business advisory services in relation to optimal structures for corporations; economic forecasting and market research services, business research services; auditing services; import and export agency services including those services in relation to trading; auction services including those services in relation to trading; agency services for others (purchase for others of goods) including those services in relation to trading: none of the foregoing being personnel and employment advisory services relating to the health care sector
Class 36:Banking services; investment services, capital investment services; investment banking services including, corporate finance services, project finance services; property investment banking, including wholesale investment management services; property development services and asset disposal services; financial services; financial services and advice in relation to mergers and acquisitions; capital raising services; debt and transaction restructuring; major project financing services; institutional stockbroking, including, cash equity sales, sales trading, facilitation trading and execution; advisory services in relation to the structuring of equity capital raisings; financial market services including commodities trading, trading of equities, derivatives trading, treasuries trading, debt trading and futures trading; trading, structuring and financing all in relation to commodities including financing, hedging, trading and market making and tailored risk management services for commodities, the agricultural sector and the energy sector; foreign exchange services including structured derivative products, debt markets including arranging and placement of debts, providing secondary market liquidity in government, corporate, global and asset-backed securities, providing risk management solutions and products via structured securities and derivative based products relating to credit and interest rate risk and the securitisation of mortgages, equipment and motor vehicle securities; futures trading services including broking and clearing services and including those services for exchange traded financial and commodity derivative markets; treasury services including funding, liquidity and interest rate risk management, domestic and international funding markets services; research services including financial research services, economic commodity and financial trend review, commentary, analysis and forecasting; financial market services in relation to equity derivatives including providing a wide range of unlisted equity-based products, providing services as principal trader for client transactions in listed securities, issuer of equity warrants, structured equity solutions and international market risk management services; financial market services in relation to global equity trading; financial market services in relation to hedge funds; lending services including asset financing services, property finance services, mortgage services, securitisation services, margin lending services, business banking services, securitised lending services, lending to corporations, individuals and government; financing services (provision of credit) including financing of loans, lease financing services including lease purchase financing services, structured financing services including advising on large asset financing, cross border financing as it relates to leasing and structured financing; asset and wealth management services including retail financial services namely, cash management trust administration services, retail superannuation services, provision and management of annuity and pension products, retail investment platform administration services, alternative asset fund management services, third party managed fund distribution services, stockbroking and investment planning services, online stockbroking services, strategic financial planning services, executive wealth management services, private banking services, private portfolio management services, advisory services and dealing services in relation to currencies, commodities, derivatives, bonds and cash securities; retail and traditional funds management, securities funds management namely, providing a range of managed funds in equities, alternative investments, currency, cash, balanced funds, fixed interest and small cap equities, specialist funds management services, property funds management services and private equity funds management services; broking services including stock brokerage services, private client broking services; leasing services including leasing of information technology, electronics manufacturing, motor vehicles, plant and equipment, telecommunications, aviation engines, water infrastructure, transportation, vendor financing, utility meters and modular structures such as car parks, leasing of real estate, structured leasing solutions including those services for corporate and government organisations, operating and financing leases, hire purchase services including commercial hire purchase, sale and leaseback transactions, advisers and arrangers of cross- border leasing, occupation leasing; financial information services including on-line information services; financial advisory services including those services in relation to corporate finance, equity markets, treasury, commodities, mergers and acquisitions; financial management services including those services in relation to property investment banking, investment management services including those services for corporations, businesses and individuals; compliance and risk management services including those services for corporations, businesses and individuals, risk and capital management services including in particular to organisations who finance leased assets; insurance services including financial insurance services, derivative products to hedge or manage risk, life insurance services, insurance premium funding, general insurance services; underwriting services including procuring subscribers or purchasers for debt, equity or other securities offered for issue or subscription; valuation services including valuation of businesses and companies, valuation of listed and unlisted securities, valuation of financial assets and of infrastructure assets, valuation of real property, valuation of personal property and valuation of intellectual property; risk advisory services including across a broad range of financial and commodity related issues, financial advisory services in particular in relation to property investment banking, corporate and project financing transactions; real estate services including real estate management services, real estate agency services, real estate appraisal, real estate brokers, rent collection services, rental of property; sponsorship management services including those services provided in relation to sporting events, cultural events, arts events, entertainment, professional memberships and associations, business forums and web sites, industry forums and web sites, educational events, environmental undertakings and research undertakings; property investment advisory services
Class 44: Medical services, health care services, including aged care facilities, convalescent homes, nursing homes, hospices, medical assistance services, rehabilitation centres, rest homes
Trade Mark Number 1104046
Class 36: Sponsorship of education, training, entertainment, sporting or cultural activities; fundraising; charitable fundraising services
Class 41: Education and training services, including literacy and numeracy programmes
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