The Crown in the Right of the Commonwealth of Australia v Grant Stafford

This matter concerned an application for the registration of the trade mark "auscheck" by Grant Stafford, opposed by The Crown in the Right of the Commonwealth of Australia. The hearing was conducted before Heath Wilson, acting as a delegate of the Registrar of Trade Marks. The applicant appeared self-represented, while the opponent was represented by counsel.

The court was required to determine several grounds of opposition, including those under sections 42(b), 43, 58, 59, and 60 of the relevant Act. The delegate noted that the grounds under sections 39, 41, 42(b), 43, 44, 58, 59, 60, and Regulation 4.15A were initially cited, but only sections 42(b), 43, 58, 59, and 60 were pressed at the hearing. The delegate found that the grounds not pressed had not been established. The onus was on the opponent to establish any cited ground on the balance of probabilities.

The delegate considered the ground under section 43, which relates to trade marks likely to deceive or cause confusion due to inherent connotations. The opponent argued that the mark "auscheck" had an inherent connotation of association with or endorsement by the Australian government. The delegate noted that to succeed under section 43, there must be an inherent connotation within the mark itself, implying a secondary meaning from which deception or confusion could arise. The delegate also addressed the applicant's submission that the opponent had abandoned its "AUSCHECK" mark, finding no evidence to support this, as abandonment is not inferred from mere non-use. Preparations for use, such as domain name registrations and the establishment of a government division, were considered sufficient to demonstrate an intention to use the trade mark, constituting prior use in certain circumstances.

Ultimately, the delegate determined that the ground of opposition under section 42(b) had not been established. However, the ground of opposition under section 58 was found to have been established in respect of the services specified in the application. Consequently, trade mark application number 1111420 for "auscheck" was refused registration. The opponent, having been successful in its opposition, was awarded costs against the applicant.