Piper Alderman v Chase Manhattan Bank, National Association

This decision concerns an opposition by The Chase Manhattan Bank, National Association (the opponent) to the registration of three trade mark applications (numbers 527503, 527504, and 527505) by Piper Alderman (the applicant). The applications sought registration of a device mark for legal services (class 42), taxation advice and business consultancy services (class 35), and real estate and trustee services (class 36). The opposition was brought under section 33 of the *Trade Marks Act 1955* (Cth), which governs oppositions based on identity or deceptive similarity to an existing registered mark, or marks registered for services of the same description. The opposition was decided by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applicant's proposed trade marks were substantially identical with or deceptively similar to the opponent's registered trade marks, and whether the services for which registration was sought were of the same description as the opponent's registered services, namely "banking services". The opponent relied on its registered marks, a striped octagonal mark and a solid octagonal mark, both registered for banking services in class 36. The applicant argued that the marks were dissimilar and that the services offered by a law firm were distinct from those offered by a bank.

The delegate found that the applicant's marks were not substantially identical to the opponent's registered marks, noting differences in the angles of the segments and the shape of the central space. Furthermore, after considering the overall impression of the marks and the likelihood of deception or confusion, the delegate concluded that the marks were not deceptively similar, particularly given that they are device-only marks relying on visual recognition and that the applicant's solicitor noted no instances of confusion. For completeness, the delegate also considered whether the services were of the same description, applying tests from cases concerning goods and services. Despite acknowledging the broadening scope of banking services, the delegate ultimately found that banking services and legal, taxation, and real estate services are not services of the same description, as there remains a clear demarcation based on the primary service sought by the public.

Consequently, the opposition was dismissed on all grounds. The delegate ordered that the trade mark applications proceed to registration, subject to an amendment to application number 527503 to delete the incorrectly classified "taxation advice in class 42" service. Costs were awarded to the applicant.