Anheuser-Busch Inc v Darren Nicholson

This matter concerned an application for registration of the trade mark "Budman" by Anheuser-Busch Inc. The application was opposed by Darren Nicholson. The hearing was conducted by Rachel Dunn, as the Registrar's delegate, in Sydney on 16 October 2006. The applicant did not attend the hearing, and the opponent was represented by legal counsel.

The opponent raised several grounds of opposition under the *Trade Marks Act*. The primary grounds argued were that the applicant was not the owner of the trade mark under section 58, that the applicant did not intend to use the trade mark under section 59, that the application was amended contrary to law under section 62, that the trade mark was similar to a trade mark that had acquired a reputation in Australia under section 60, that the trade mark was deceptively similar to a prior registered trade mark under section 44, that the trade mark was not capable of distinguishing the applicant's goods under section 41, and that the use of the trade mark would be contrary to law under section 42.

The delegate focused on the ground of opposition under section 58 of the *Trade Marks Act*, which allows opposition on the basis that the applicant is not the owner of the trade mark. This ground is established if the opponent can demonstrate that they first used a trade mark in Australia that was the same or substantially identical to the opposed trade mark, and that this use was on the "same kind of thing". While the applicant was the first to apply for registration, case law establishes that the first user of a trade mark in Australia will prevail over the first applicant for registration if that use occurred before the application's priority date. The delegate was satisfied that the opponent had established this ground.

Consequently, the delegate refused to register the trade mark application. The opponent was awarded costs against the applicant in accordance with the official scale. The refusal was to be stayed pending any appeal to the Court.