Macquarie Bank Limited v Macquarie Bank Limited

This case involved two separate proceedings before a delegate of the Registrar of Trade Marks. The first concerned an application to remove a trade mark registration (the "Registered Mark") from the Register, opposed by Macquarie Bank Limited (the "Opponent"). The second proceeding involved an opposition by the Opponent to the registration of a different trade mark (the "Applicant's Mark"). The Opponent is a wholly owned subsidiary of Macquarie Group Limited and has a long history of providing financial services under the "Macquarie Bank" and "Macquarie" names, supported by extensive advertising and brand recognition.

The legal issues before the delegate were whether the Registrar should exercise discretion to remove the Registered Mark from the Register due to non-use or an obstacle to use during the relevant period, and whether the Applicant's Mark should be registered, considering grounds of opposition including substantial identity or deceptive similarity to existing trade marks, misrepresentation, and other potential grounds under the *Trade Marks Act 1995* (Cth). The Opponent bore the onus of establishing these grounds on the balance of probabilities, with the relevant date for assessing rights being the filing date of the Applicant's Mark.

In relation to the removal application, the delegate was not satisfied that it was reasonable to exercise the Registrar's discretion to remove the Registered Mark, and therefore the Opponent did not establish its opposition. Regarding the opposition to the registration of the Applicant's Mark, the Opponent relied on its "Macquarie Marks" as the basis for a ground of opposition under section 44 of the Act, arguing that the Applicant's Mark was substantially identical or deceptively similar to the Macquarie Marks, which had earlier priority dates and covered similar services. The delegate considered the comparison of the marks and the overall impression they would create on ordinary persons.

Ultimately, the delegate directed that the Registered Mark be removed from the Register one month from the date of the decision, as the Removal Opponent had not established its opposition. The delegate also found that the Opponent had not established its grounds of opposition to the registration of the Applicant's Mark.