Piper Alderman v Chase Manhattan Bank, National Association

[1996] ATMO 33

TRADE MARKS ACT 1955

DECISION BY A DELEGATE OF THE REGISTRAR OF TRADE MARKS

WITH REASONS

Re:      Opposition by THE CHASE MANHATTAN BANK, NATIONAL ASSOCIATION, to registration of trade mark application numbers 527503 (42), 527504 (35) and 527505 (36) in the name of PIPER ALDERMAN.

As set down by the transitional provisions of part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, the authority I refer to is the Trade Marks Act 1955.
Background

Application numbers 527503, 527504 and 527505 were lodged on 19th January, 1990 by PIPER ALDERMAN, a South Australian firm (the applicant).  The applications are for registration of the mark shown below.

The classes in which the applications are lodged and the services in respect of which registration of the mark is sought are as follows:-

1. class 42 - ‘legal services in class 42; legal consultation, solicitors   services; taxation advice in class 42; estate planning and administration                   services; all the aforegoing being services in class 42’

2. class 35  - ‘corporate, personal and commercial taxation advice;   business consultants; preparation of taxation returns; administration of                    trusts; formation of trusts; all of the aforegoing being services included               in class 35’

3. class 36  - ‘real estate transactions, land broking; business transfer   services; trustees of estates; all the aforegoing being services in class                    36’

The marks, which I refer to as the application marks, were advertised as accepted in Part A of the Register in the Australian Official Journal of Trade Marks  of 2nd July, 1992.

Notices of opposition to the marks’ registration was lodged, following an extension of time request in which to lodge the notice, on 30th December 1992, by The Chase Manhattan Bank, National Association, which has its principal place of business in New York, United States of America (the opponent).  Various matters were raised in the Notices of Opposition.  However, the evidence and subsequent submissions only support the s 33 ground. This ground depends on the opponent’s registered trade mark 392743 (36), depicted below, and registered in respect of  ‘banking services, being services in class 36.’  I shall refer to this as the opponent’s striped octagonal mark.

The opponent’s evidence in support also refers to use by the opponent of their registered mark, 392742 (36),depicted below.

The mark is registered for ‘banking services, being services included in class no 36’.  I shall refer to this as the opponent’s solid octagonal mark.

The evidence

The service and lodgment of the evidence relied upon by both sides in the matter was completed by 29th March, 1995.  The evidence comprised:

Evidence in support

A statutory declaration by Peter C. Kirschenbaum dated 25th August, 1993

and exhibits A to E.

Evidence in answer

A statutory declaration by Anthony Norman Abbott dated 28th March 1995

and exhibits ANA 1 - ANA 3.

The opponent did not lodge any evidence in reply and on 1st September, 1995 the Trade Marks Office advised both parties that, as neither party had sought a hearing, the Registrar would decide the matter on the basis of all evidence served and any written submissions.  Written submissions were subsequently received from the applicant through  Collison & Co, patent and trade mark attorneys of Adelaide. No submissions were received from the opponent.  The matter was then delegated to me for a decision.

Evidence in support of the opposition
Mr. Kirschenbaum is Vice President of the Chase Manhattan Bank.  Mr. Kirschenbaum sets out the history of the national banking association since its formation in 1955 and its provision of  banking and financial services throughout many countries of the world, including Australia.  Services, he says,  are provided under the striped octagonal mark and the solid octagonal mark.

The striped octagonal mark (392743)  was first adopted in 1960  and has been used in the form shown in Mr. Kirschenbaum’sas Exhibit A.  Exhibit A also shows the solid octagonal mark  and refers to use of this mark, however, no details are given as to when use of this mark commenced.
Mr. Kirschenbaum gives details of the international banking and financial services provided (Exhibit B).  This includes  a copy of the report of  the Chase Manhattan Corporation for the fourth quarter 1992 and covers the core businesses of the organisation, including global corporate finance, global risk management, transaction and information services, global private banking, consumer products and regional banking.  Figures in this report show earnings of the corporation,  and capital and liquidity information are also included. A bank name study was conducted by the opponent in 1982 and this included a poll of corporate officers from corporations in a number of countries, including Australian corporations.  A copy of the study is  included as Eexhibit C.

Mr. Kirschenbaum deposes that the name CHASE was first used by the opponent on its services in Australia in 1929.  The name CHASE MANHATTAN was first used in 1955.  The device marks in question, he says, have also been used for many years in Australia.  Turnover figures and advertising figures for the opponent’s services in Australia, are also supplied and a list of clients who, he says, are aware of the trade mark is also included.Copies of advertisements showing use of the trade marks are also included as Exhibit D.

Evidence in answer
Mr. Abbott is a solicitor and partner with the firm of Messrs Piper Alderman, the applicant for these trade mark applications.  Mr. Abbott  sets out the history of the firm, which is one of the oldest legal firms in South Australia.  He says that neither he nor any of  the partners of his firm are aware of any instances of confusion between the subject marks and the opponent’s two  marks.  He points to the differences between the services offered by the opponent and the applicant.  The services offered by the opponent, he says, do not enter into the field of traditional legal services, provided to the public by legal practitioners.  Mr. Abbott maintains that the public has no difficulty in distinguishing the services provided by the opponent from services provided by the applicant.

Mr. Abbott then gives details of the use of the applicant’s mark since 1988. Examples of how the mark is used on a letterhead are given, (exhibit ANA 1), advertising (exhibit ANA 2) , and brochures (included as exhibit ANA 3).  The trade marks are also used on banners which are erected at functions sponsored by the applicant, and at sporting and cultural events held at the Entertainment Centre and the Festival Centre, in Adelaide where the applicant has a box for entertaining

Written submissions
The applicant’s written submissions are from Mr. Alun Thomas.  These submissions focus on two considerations :-
           (i) whether the trade marks are identical or deceptively similar
           and
           (ii) whether the services on which the trade marks are used are ‘services of the      same description’

Regarding the possibility of confusion between the marks, Mr. Thomas outlines the differences between the marks and the impression left by the various angles and shapes incorporated in the marks.  He also refers to the well established case law to be considered when comparing  trade marks that contain devices - Jafferjee v Scarlett (1937) 57 CLR 115 and Shell Co (Australia) Ltd  v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407 (Shell case).  He maintains that the marks give a different impression to the viewer and that, therefore, the applicant’s and the opponent’s trade marks are not the same, nor are they deceptively or confusingly similar.

Concerning the question of whether banking services are services of the same description as legal services, Mr. Thomas directs me to the Trade Mark Examiners’ Manual relevant to the Trade Marks Act, 1955, which lists a series of six points to be considered by Examiners when determining whether goods are those of the same description.  He also points out that there is very little case law on whether services are services of the same description.  He maintains that banking is not a service of the same description as legal services.  He also refers to Mr. Kirschenbaum’s declaration at paragraph 16.1 of the declaration and argues that in the statement Mr. Kirschenbaum has not indicated that the opponent is providing the same services (financial services in connection with the sale and leasing of land) as the applicant.  Furthermore, Mr. Kirschenbaum has not stated  that the public would be confused between the legal and financial aspects of such services.  In conclusion Mr. Thomas sought costs on behalf of the applicant.

Discussion
Section 33
In considering the question of whether the marks in question offend the provisions of s.33, I must firstly determine whether they are substantially identical with or deceptively similar to the marks owned by the opponent.

Sub-section 33(2) reads:

Subject to this Act, a trade mark is not capable of registration by a person in respect of services if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same services, of services of the same description as those services, or of goods that are closely related to those services, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

Substantial identity
To judge whether the opponent's marks are substantially identical to the subject marks, it is necessary to carry out a straight comparison of the marks.  In the Shell case, supra, the words of Windeyer J. at p.414 are pertinent:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or similarity that emerges from the comparison...

The opponent’s solid octagonal mark and the applicant’s marks, do share some common elements.  They are both eight-sided figures  with a blank space in the centre.  Both have a wide border which clearly defines each sector of the mark and emphasises the blank space in the centre of the marks. The size and proportions of the marks as a whole appear to be alike.

However, on close scrutiny, the angle of each segment of the figure is slightly different, with the solid octagonal mark being more acute compared to the rounded sections of the applicant’s marks.  The blank space in the centre of the marks is shaped differently, being a square in the solid octagonal  mark and a diamond in the applicant’s marks.

The opponent’s striped octagonal mark, while similar in shape and design  to the applicant’s marks, has the added feature of the stripes.  This clearly adds a different dimension to the mark. Having the benefit of placing the striped octagonal mark beside the applicant’s marks I think that the marks are not substantially identical.  I therefore cannot agree that the applicant's marks are substantially identical to those of the opponent.

Deceptive similarity
The matter of deceptive similarity is, however, another matter.  Sub-section 6(3) defines a mark as "deceptively similar" to another if it, "...so nearly resembles that other trade mark as to be likely to deceive or cause confusion".  Here, the marks should not be placed side by side but consideration should be given to any common net impression inferred from the two marks. I turn here to the judgment in Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 where Dixon and McTiernan JJ. said, at p. 658 :

"In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight."

Having compared the impressions created by these marks and applied the marks side by side, in light of the above criteria,  I cannot agree with Mr. Kirschenbaum that the marks under consideration are deceptively similar.  The overall impression of the marks is that they are composed of different elements.  The opponent’s marks would be described as being of an octagonal shapes, while the applicant’s marks is a representation of could be seen as a knot, or as an impeller.  As all the marks are device only marks, they can only be represented visually and rely on sight recognition, rather than oral representation.   Also, as the marks are all used to identify services it is quite likely that the use on signage, for example at a shopping centre, or outside a building is to identify the location of the relevant organisation.,  One of the criteria I must consider is whether there have been any instances of deception  or confusion. On this point I note Mr. Abbott’s claim that there have been no instances of confusion amongst his clients. Given the above, I find that the marks are not deceptively similar.

Having found that the marks are not deceptively similar, I have no need to judge whether the services in question are the same services or services of  the same description.  However, for the sake of completeness, I will look at this matter.

The services.
Details of the opponent's use of the device marks in respect of banking services are set out in Mr. Kirschenbaum’s declaration.  At paragraphs 11 to 14 of his declaration Mr. Kirschenbaum refers specifically to the use of the device mark in relation to ‘banking and financial services’.

The term "banking services" covers a very wide and disparate range of activities including, cash management, corporate financing, arranging of loans, accepting money on deposits, foreign exchange, leasing, security, trust, accounting, investment services and other finance related activities.  Details of the opponent's trade in these services are given in the “Highlights” report from the 4th quarter 1992, at pages 32 - 44 of Eexhibit B.  It is not clear from the evidence that the opponent actually provides all these services within Australia.

Central to the opponent's objection to registration of the applicant’s marks under this head, therefore, are the claims made at paragraph 16 of the Mr. Kirschenbaum’s declaration.  For the sake of clarity I shall reproduce these claims :-

‘16. I believe that the services covered by each of the trade mark applications identified in paragraph 15 of this Statutory Declaration are services related to ancillary or similar to the Opponent’s Services, or that they are services of the same kind as the Opponent’s Services.  For example, and by way of non-limiting example only:-

16.1
Under application No 527505, Piper Alderman has sought the registration of its trade mark in relation (i) real estate transactions (ii) business transfer services and (iii) trustees of estates.  Banking and financial institutions invariably provide financial services in connection with the sale of leasing of land, and the sale or transfer of businesses.  Banking and financial institutions can also act as trustees for estates.

16.2
Under application No. A527504, Piper Alderman has sought the registration of its trade mark in relation (i) corporate, personal and taxation advice; (ii) business consultants, and (iii) administration of trusts. Once again, these are all services of the kind which might not inconceivably be provided by a banking or financial institution, or which might be encroached upon, in the provision of banking or financial services, by such an institution.

16.3.
Under application No. A527503, Piper Alderman has sought the registration of its trade mark in relation to ‘taxation advice’. In corporate finance transactions, taxation considerations are often of great importance to the parties, and therefore, some of the advice or services provided by a banking or financial institution will inevitably impinge on taxation matters. Moreover, estate planning and administration services could well be (and occasionally are) provided by banking and/or financial institutions.’

There are few precedents to guide me on what does constitute a service of the same description.  However, it is possible to take analogies and extrapolate from the well-known and well-established guidelines that have been set down in relation to goods, and goods of the same description.  In K Mart Corporation v A-Mart Allsports Pty Ltd (1992) 23 IPR 161, the tests regarding goods of the same description, as set out in Jellinek’s application (1946) 63 RPC 59, were adapted and when the test was applied to the question of services, the following considerations applied:-

·     the nature and characteristics of the services

·     whether they are usually performed by the same person or organisation

·     whether the class of customer is usually the same

·     does the person performing the service belong to the same trade or trade union or are they regarded as so belonging.

In that case, it was found that ‘retailing services being the retailing of furniture’ were services of the same description as ‘wholesaling and retailing of gymnastic and sporting, games and playthings, and sportswear’ and that they were also a service of the same description as ‘wholesaling and retailing sales services associated with the selling of gymnastic and sporting articles, games and playthings, and sportswear’.

Services of the same description were also considered in the American Express Co v NV Amev (1985) AIPC 90-258 decision where the tests applied were:-

·   the nature of the respective services

·   the purpose of the respective services

·   the trade channels through which the services were bought and sold.

In that decision, the services under consideration were ‘travel services’ and ‘insurance services’, and it was found that ‘travel and insurance services have nothing of any real substance in common as regards their nature or their purpose.’

Given the guidelines established in this ose case,s, I must now look at the present sets of competing services.

The points laid out in the K-Mart and American Expresscase, supracases, supra, are not in any particular order of priority and it is not necessary that all the criteria should be satisfied.  Each of the factors must be considered in turn and a decision made as to whether, on balance, the respective services are such as to be taken as being services originating from the same trader.

Assuming notional use of the opponent’s  marks for all the services registered, the statement of services for, ‘banking services, being services included in class 36’ could include a wide range of services, including but not limited to :-

bill paying services, account management, currency investment advice, cheque verification, redemption of traveller’s cheques, financing of all types, raising of mortgages, safe deposit facilities, electronic funds transfer and trusteeship.

These subject applications however  were made in the last decade of the twentieth century. The scope envisaged by the term ‘banking services’ is somewhat wider than that imagined when the opponent’s marks were registered in 1983.  A bank can no longer be seen as an institution that only accepts deposits and makes loans. The utilisation of computer-generated information has also led to advances in other areas such as foreign exchange dealings  - particularly in relation to currency and interest rate exchanges.  The changing demands by consumers have also generated a range of new services such as bill paying, investment advice, electronic funds transfer - to name a few examples.  Overall it seems to me therefore that the nature of banking services has become closer to the services offered under legal, commercial and real estate services of the applicant’s trade mark applications.

Another factor to be considered here is which trade union the persons providing the services would belong to.  In this respect, it seems that the employees of the bank would probably be members of the relevant bank officers’ union, or the relevant professional banking associations,  On the other hand, legal practitioners, taxation agents, real estate agents and insurance personnel are more likely to be  members of individual professional associations which may require completion of some type of training or formal study requirement. 

Customers using banking services would vary enormously. With the growing trend towards a cashless society, the majority of persons are compelled by necessity to have at least one account with a bank or similar financial institution into which their income or other payments are deposited.  Consequently it would be fair to assume that most members of the public use a bank as part of their every day personal financial transactions.

However, despite the growth in the scope of services offered, there would still appear to be a clear demarcation as to which services are offered by banks and those that are offered by other parties such as legal practitioners, taxation agents, real estate agents and insurance brokers.  It would appear to me that the separation may be made on the basis of the primary service being sought.  Therefore, if the person required, say, a bank loan, then any other services provided - such as legal advice - are ancillary only.  Conversely, if legal advice was being sought, which involved the provision of a bank cheque, then that person would go to a legal practitioner for the primary service of legal advice.    I am of the opinion that, despite extensive changes to banking services offered, members of the public would not, for example, expect to go to a bank to seek legal advice, prepare their tax return, buy or sell real estate, or arrange insurance for their car.

Given the foregoing, I therefore agree with Mr. Thomas and find that the applicant's services are not the same services or services of the same description as the opponent's.

I find that the services of the opponent, ‘banking services in class 36’ are not services of the same description as any of the services of the applicant as shown in accepted applications 527503, 527504, 527505.

I would note, however, that in application 527503 the services ‘taxation advice in class 42’ has been incorrectly classified and should be deleted from the statement of services of this application.  The applicant has already sought protection for  ‘taxation advice’ in its co-pending  class 35 applications.  I allow two months from the date of this decision for the applicant to seek an appropriate amendment to the statement of services for application 527503.
Decision
In summary, I find that the opposition fails on all the grounds relied upon.  Sand that, subject to any appeal from this decision, application numbers 527503, 527504, and 527505, for the  device mark, mayshould proceed to registration.

However,  I note that in application 527503 the services ‘taxation advice in class 42’ has been incorrectly classified and should be deleted from the statement of services of this application.  The applicant has already sought protection for  ‘taxation advice’ in its co-pending  class 35 applications.  I allow two months from the date of this decision for the applicant to seek an appropriate amendment to the statement of services for application 527503.  This application, subject to appeal, may then also proceed to registration.

I therefore dismiss the opposition. I can see no reason why costs should not follow the result and I accordingly award costs in the matter to the applicant.

Sandra Jarvis
Senior Examiner

17 June1996