Australian Broadcasting Corporation v Commercial Radio Australia Ltd

The Australian Broadcasting Corporation (the opponent) opposed the application by Commercial Radio Australia Ltd (the applicant) for registration of the trade mark "Radio Australia". The matter was heard by Heath Wilson, a Delegate of the Registrar of Trade Marks.

The primary legal issues before the Delegate were whether the applicant's proposed trade mark was likely to deceive or cause confusion under section 43 of the *Trade Marks Act 1995* (Cth), whether the applicant had used the trade mark in a manner that would be likely to deceive or cause confusion under section 58A, and whether the opponent's trade mark had a reputation in Australia such that the use of the applicant's mark would be likely to deceive or cause confusion under section 60.

The Delegate found that the opponent had not established grounds of opposition under sections 43 or 58A. However, the Delegate determined that a ground of opposition under section 60 had been established, noting that the opponent bore the onus of proving this on the balance of probabilities. The Delegate applied the principle that for a section 43 ground to succeed, there must be an inherent connotation within the trade mark itself, distinguishing this from a case where deception or confusion arises from the similarity of marks.

As a ground of opposition under section 60 was established, the Delegate refused to register the trade mark application. The opponent was successful in these proceedings and was awarded costs against the applicant.