Opposition by TTT Moneycorp Limited to extension of protection of International Registration Designating Australia 1265797 (36, 38, 41) (Australian trade mark application 1723825) - MONECOR - held in the name of...

This matter concerned an opposition by TTT Moneycorp Limited to the extension of protection of International Registration Designating Australia 1265797, which designated the trade mark MONECOR for goods and services in classes 36, 38, and 41. The opposition was heard by Jock McDonagh, a delegate of the Registrar of Trade Marks, based on written submissions. The applicant, the holder of the international registration, did not file submissions or attend the hearing.

The legal issues before the delegate were whether the opposition should succeed on grounds relating to sections 44, 58, and 60 of the relevant legislation. Section 44 concerns the registration of trade marks that are identical or deceptively similar to earlier trade marks, section 58 relates to the applicant not being the owner of the trade mark, and section 60 addresses the registration of trade marks that are likely to deceive or cause confusion due to their similarity to trade marks that have acquired a reputation in Australia.

The delegate found that the opponent had established the ground of opposition under section 60. The opponent presented evidence demonstrating its long-standing use of the MONEYCORP trade mark since 1993, its significant international and Australian operations in foreign exchange, substantial revenue generated in Australia, and the establishment of an Australian subsidiary. The delegate was satisfied that this evidence supported the claim that the opponent's mark had acquired a significant reputation in Australia through extensive use over many years, leading to a likelihood of deception or confusion if the MONECOR mark were registered.

Consequently, the delegate refused to extend the protection of the international registration to Australia. The delegate also awarded costs to the opponent, following the general rule that costs follow the event, as the opponent had successfully established a ground of opposition.