Alt League Pty Ltd v Rebecca Tepe

[2024] ATMO 2

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Alt League Pty Ltd to registration of trade mark application number 2262945 (class 35) – [ALT] RECRUITMENT (figurative) - in the name of Rebecca Tepe

Delegate:

Tracey Berger

Representation:

Opponent: By George Legal

Applicant: Aspect Legal Pty Limited

Decision:

2024 ATMO 2

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss42(b), 44, 58 & 58A considered – no ground of opposition established – trade mark to proceed to registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Alt League Pty Ltd (‘Opponent’) to registration of the trade mark detailed below filed by Rebecca Tepe (‘Applicant’):

Number:2262945 (‘Application’)

Trade Mark:                (‘Trade Mark’)

Filing Date:                 20 April 2022 (‘Relevant Date’)

Specification: Class 35:Business recruitment consultancy; Consultancy relating to personnel recruitment; Employment recruiting consultancy; Employment recruitment; Executive recruitment services; Interviewing services (for personnel recruitment); Office support staff recruitment services; Permanent staff recruitment; Personnel recruitment; Personnel recruitment advertising; Personnel recruitment agency services; Personnel recruitment consultancy; Professional recruitment services; Recruiting of office support staff; Recruitment advertising; Recruitment consultancy services; Recruitment of personnel; Staff recruitment consultancy services; Staff recruitment services; Career advisory services (other than education and training advice); Career counselling (employment advice and information); Career information and advisory services (other than educational and training advice); Career planning services   (‘Applicant’s Services’) 

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 21 November 2022 and its Statement of Grounds and Particulars (‘SGP’) on 21 December 2022.  The Applicant filed a Notice of Intention to Defend the opposition on 6 February 2023.

3. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support was filed on 22 May 2023 and the Applicant’s evidence in answer was filed on 26 July 2023. No evidence in reply was filed.

4.     Following the conclusion of the evidence stage, the parties were given the opportunity to a request a hearing.  The Applicant requested a decision without a hearing.  This matter has been allocated to me as a delegate of the Registrar of Trade Marks to decide based on the aforementioned documents.

Grounds, Onus and Relevant Date

5.     In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 58 and 58A. 

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The date at which the rights of the parties are to be determined is the Relevant Date. The Relevant Date is also the priority date for the purposes of s 44.

Opponent’s Evidence

8.     The Opponent’s evidence in support consists of a declaration of Andrew Jonathon Twaits, co-founder and Managing Director of the Opponent, made on 22 May 2023 with Annexures AJT-1 to AJT-18 (‘Twaits Declaration’).  Relevant claims made in the Twaits Declaration are summarised below.

9.     According to the Twaits Declaration, the Opponent was co-founded by Mr Twaits and Grant Thomas, who are also the directors.  The Opponent was incorporated on 19 October 2021 and is a technological recruitment and consultancy business (‘Opponent’s Business’) which is structured as a ‘build-operate-transfer’ (‘BOT’) business model.  Under the BOT model, the Opponent recruits emerging digital talent and connects them with corporate partners encouraging the talent recruited to become employees of the partner at the point of transfer, subject to agreed commercial terms, to run technological projects.

10.     Prior to the incorporation of the Opponent, Mr Twaits was a member of Bendigo Bank Group’s executive and from 2017 he worked with Grant Thomas, a founding director of the fintech company Ferocia Pty Ltd (‘Ferocia’), to finalise a joint venture between Bendigo Bank and Ferocia involving the design and implementation of one of Australia’s first neo banks named ‘ALT’.  In July 2017, Ferocia registered its mark ‘ALT’ under registration number 1854674 as detailed below:

Number	Trade Mark	Filing Date	Specification
1854674	(‘Prior ALT Mark’)	3 July 2017	Class 36:  Banking; Electronic banking; Information services relating to banking; Internet banking; Online banking; Charitable collections; Credit card services; Crowd funding services being the collection of financial donations; Currency exchange services; Debit card services; Direct debit services; Deposit accounts services; Financial analysis; Financial exchange services; Financial information services; Financial research; Financial services; Loan services; Mortgage services; Personal loan services; Savings account services; Insurance; Investment management; Monetary affairs; Monetary exchange; Money lending; Stockbroking (‘Registered Services’)

11.     The ‘ALT’ neo bank was rebranded UP in October 2018.  In October 2021, Bendigo Bank and Adelaide Bank acquired Ferocia.  At the time of the acquisition of Ferocia, Mr Thomas was the sole director of GDT Solutions Pty Ltd (‘GDT’) and in October 2021, GDT acquired the Prior Alt Mark from Ferocia.

12.     Mr Twaits declares that when he refers to use of the trade mark ALT for the Registered Services, he is referring to use by the Opponent, Ferocia, Bendigo Bank and/or GDT.

13.     The Opponent claims to have used the trade mark ALT since its incorporation in relation to the Opponent’s Business, software design/delivery and user-experience design.  Mr Twaits attests that the Prior ALT Mark was also used by the Opponent’s Business from its incorporation until September 2022.  The Twaits Declaration includes undated photos of the Prior ALT Mark on bank cards, including debit and credit cards, which Mr Twaits claims illustrate the manner of use of the Prior ALT Mark from 2017.

14.     In October 2022, the Opponent adopted a new logo (‘New ALT Logo’) and subsequently applied to register this mark on 21 November 2022 under application number 2316322 for:

Class 9:  Application software; Computer software; Computer software applications (downloadable); Computer software for business purposes; Downloadable software applications (apps)

Class 35:  Business recruitment consultancy; Executive recruitment services; Personnel recruitment; Personnel recruitment agency services; Professional recruitment services; Recruitment advertising; Talent as a service (TaaS) being the recruitment and placement of temporary staff; Talent management services; Human resource management

Class 42:  Computer software design; Computer software consultancy; Computer software development; Computer software engineering; Design and development of computer software; Hosting of software as a service (SaaS); Online provision of web-based software (non-downloadable); Provision of online non-downloadable software (application service provider); Software as a service (SaaS); Temporary use of online non-downloadable software.

15.     The Opponent claims to have worked with high profile corporations including Wesfarmers and National Australia Bank.  A copy of the Opponent’s pitch dated October 2022 to Wesfarmers offering its BOT services and branded with the New ALT Logo is provided.  Mr Twaits claims that versions of this pitch have been used to promote the Opponent’s Business under the mark ALT since 2021.

16.     The Twaits Declaration includes various examples purporting to demonstrate use of the Prior ALT Mark or New ALT Logo including a redacted email exchange, printouts of the website at in October 2017 obtained using the Wayback Machine, printouts from the Opponent’s website at (some of which were obtained using the Wayback Machine) dating from December 2021 to February 2023 and examples from the Alt League LinkedIn account.  The redacted emails are undated and have no information about the Opponent’s business or services.  Similarly, the website extracts show only the Prior ALT Mark or New ALT Logo but there is no menu of contents, information about the Opponent’s Business or other information in these extracts.

Applicant’s Evidence

17.     The Applicant’s evidence comprises a declaration of the Applicant made on 25 July 2023 with Annexures RT-1 to RT-38 (‘Tepe Declaration’).  The pertinent information contained in the Tepe Declaration is set out below.

18.     The Applicant claims that she has been trading as ALT Recruitment since March 2022 before incorporating and trading as ALT Recruitment Pty Ltd from April 2022.

19.     The Tepe Declaration outlines the development and reasons for adopting the Trade Mark.

20.     Since the Relevant Date, the Applicant attests that she has continuously used the Trade Mark in connection with her recruitment business including on all legal documents, correspondence, marketing, advertising, operating and administrative systems, website at and social media accounts of the Applicant’s business.  The Applicant also details the advertising, promotion and collaborations/partnerships undertaken to promote the Applicant’s Services under the Trade Mark since the Relevant Date.

Discussion

Section 44

21.     Section 44 relevantly provides:

44  Identical etc. trade marks

…

(2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)  it is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

22.     To successfully oppose the application pursuant to s 44 the Opponent must establish that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

·     has a priority date which is earlier than that of the Trade Mark (‘first requirement’);

·     is substantially identical with or deceptively similar to the Trade Mark (‘second requirement’); and

·     is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘third requirement’).

23.     In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.  As the Applicant only adopted the Trade Mark a month before the Relevant Date, the provisions of ss 44(3) or 44(4) do not apply.  

24.     In the SGP, the Opponent relies on the Prior ALT Mark in support of this ground of opposition which satisfies the first requirement in that it has an earlier priority date to the Trade Mark and is in the name of a person other than the Applicant.  Accordingly, I must decide if the Trade Mark is substantially identical or deceptively similar to the Prior ALT Mark and if so, whether the Applicant’s Services are similar to the Registered Services.

Substantially Identical or Deceptively Similar?

25.     The test for determining ‘substantial identity’ was articulated by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

[4] [1963] HCA 66, [12].

26.     The relevant trade marks are reproduced below:

Prior ALT Mark Trade Mark

27.     The essential element of both the Prior ALT Mark and the Trade Mark is ‘ALT’.  However, the different punctuation and inclusion of the word RECRUITMENT in the Trade Mark create stark visual and aural dissimilarities.  Although RECRUITMENT is descriptive of the Applicant’s Services, it forms a significant and dominant part of the Trade Mark.  In my view, despite the common element ‘ALT’, there is not a total impression of similarity and the Trade Mark is not substantially identical to the Prior ALT Mark.

28.     I now turn to the question of whether the Trade Mark is deceptively similar to the Prior ALT Mark.  Deceptive similarity is defined by s 10  which states ‘[f]or the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the Prior ALT Mark, to the impression they would get from the Trade Mark.[5] 

[5] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1961) 109 CLR 407, 415 (Windeyer J).

29.     As noted above at [25], the trade marks both contain the essential element ‘ALT’. The only other feature of the Prior ALT Mark is a full stop whereas the Trade Mark has ALT in brackets and contains the descriptive word RECRUITMENT.  In Australian Ezy Tax Systems Pty Ltd v Ezy Tax Solutions Pty Ltd,[6] it was noted that:

A descriptive element within a trade mark may be to some extent discounted in a comparison (or to paraphrase Hornsby, a certain risk of confusion due to the presence of that element may be accepted), but those descriptive elements cannot be entirely ignored in the overall comparison.

[6] [2016] ATMO 62, [22] (Hearing Officer H. Wilson).

30.      I find that the trade marks are deceptively similar.  The distinctive and memorable element of each of the marks is ‘ALT’ which has no meaning in relation to the Registered Services or the Applicant’s Services.  The other elements in each mark do not significantly distinguish the marks to prevent consumers from being caused to wonder whether the trade source of the Registered Services and that of the Applicant’s Services is one and the same.  The second requirement is satisfied.

31.     In relation to the third requirement, s 14(2) provides:

14 Definition of similar goods and  similar services 

....

(2) For the purposes of this Act, services are similar to other services:

(a) if they are the same as the other services; or

(b) if they are of the same description as that of the other services.

32.     The determination of whether two sets of services are similar involves a consideration of intrinsic nature of the services and the trade channels through which they are delivered. It is immaterial that the services of the parties might have some features in common which are incidental to their essential nature.[7]

[7] Australian Tourism Company Ltd and Others v Mid Sydney Pty Ltd 42 IPR 561, 567 (Burchett, Sackville and Lehane JJ).

33.     The Applicant’s Services are essentially recruitment services whereas the Registered Services are financial services.  The two sets of services are different in their nature and purpose and provided through different trade channels.  Consumers or businesses would not approach a financial institution for recruitment services or vice versa.  Recruitment services and financial services are distinct industries offering services with different characteristics.  The Applicant’s Services are not similar to the Registered Services and hence the s 44 ground of opposition is unsuccessful.

Section 58

34.     Section 58 provides that a trade mark may be opposed on the basis that the applicant is not the owner of the mark.

35.     Ownership of a trade mark is established either by authorship and prior use, or by the combination of authorship, the filing of the application and an intention to use or authorise use.[8]

[8] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

36.     The trade mark for which an opponent claims prior use must be at least substantially identical to the opposed mark[9] and used for the ‘same kind of thing’.[10]

[9] Carnival Cruise Lines v Sitmar Cruises Ltd [1994] FCA 68 (Gummow J).

[10] Re Hicks's Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

37.     In its SGP, the Opponent relies on use of ‘its original ALT mark since at least July 2017, and its updated ALT mark since at least October 2021 in connection with recruitment services, which is before the priority date of the opposed mark (20 April 2022)’.  Neither the ‘original ALT mark’ nor the ‘updated ALT mark’ are defined.  I assume that the ‘updated ALT mark’ is the New ALT Logo which is the subject of application 2136322 and the ‘original ALT mark’ is a reference to the Prior ALT Mark.   

38.     I have already found at [27] that the Trade Mark is not substantially identical to the Prior ALT Mark and therefore, this mark does not assist the Opponent.  In any event, whilst the Opponent claims to have used the Prior ALT Mark in  relation to recruitment services from October 2021 to September 2022, there is no evidence to substantiate this claim.  Moreover, two sets of services are regarded as being the same kind of thing if they are ‘true equivalents’.[11]  The Prior ALT Mark was initially used in relation to banking services and ancillary goods such as debit and credit cards.  These goods and services are not the ‘same kind of thing’ as recruitment services.

[11] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [198] (Greenwood, Besanko and Katzmann JJ).

39.     The Opponent’s evidence also includes a copy of its pitch to Wesfarmers to provide services under the New ALT Logo but this is dated October 2022, after the Relevant Date.  The other annexures to the Twaits Declaration are either undated, dated after the Relevant Date and/or do not show use of the marks in relation to recruitment services.

40.     The Opponent bears the onus of establishing it is the first to use the trade mark or a substantially identical mark for the relevant services or the same kind of thing.  The Opponent has not discharged this onus and this ground of opposition is unsuccessful.

Section 58A

41.     The opponent has nominated s 58A as a ground of opposition.  Section 58A is only enlivened if the Trade Mark has been accepted for registration under the provisions of ss 44(4).  The Trade Mark was not accepted under the provisions of ss 44(4), nor is there evidence which would make it appropriate to apply that provision now, so the Opponent is also unable to establish this ground of opposition.

Section 42

42.     Section 42 relevantly provides that that an application for a trade mark must be rejected if its use would be contrary to law.

43. The Opponent claims in its SGP that use of the Trade Mark would constitute misleading and/or deceptive conduct in breach of Sections 18 and 29 of the Australian Consumer Law (‘ACL’) given the Opponent’s use of the Prior ALT Mark and New ALT Logo.

44.     The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[12]  The relevant time for assessing whether the use of the Applicant’s Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[13]

[12] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

[13] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502, [47] (Wilcox J).

45.     The concept of ‘misleading’ someone is broad and may include lying to them, leading them to a wrong conclusion, creating a false impression, leaving out or concealing important information and making false or inaccurate claims. 

46.     In the absence of any submissions from the Opponent, it appears from the SGP that the Opponent is claiming a reputation in the Prior ALT Mark and New ALT Logo such that use of the Trade Mark would be likely to mislead or deceive consumers into thinking that the Applicant’s Services offered under the Trade Mark are those of or related to the Opponent.

47.     The Opponent’s evidence provides no basis for asserting a reputation in the Prior ALT Mark and New ALT Logo.  There are no metrics in terms of the value of services offered under these marks or details of any advertising undertaken.  The only evidence of use of the marks before the Relevant Date is in relation to banking services for a short period of time before those services were rebranded in October 2018.  On the Opponent’s own evidence, it can be inferred that the mark ALT was not used between October 2018 until after the Opponent was incorporated in October 2021, six months before the Relevant Date.  Any evidence of use of the New ALT Logo is after the Relevant Date.

48. I am not satisfied that that Opponent has established a reputation in the Prior ALT Mark and/or the New ALT Logo such that use of the Trade Mark would be likely to mislead or deceive in breach of the ACL. Accordingly, this ground of opposition fails.

Decision

49.     Section 55 relevantly provides:

55  Decision

(1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)  to refuse to register the trade mark; or

(b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

50.     The Opponent has not established a ground of opposition.  Accordingly, trade mark application 2262945 may proceed to registration one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.  The disposition of the Application should otherwise be in accordance with the Court’s order or direction.

51. The Applicant sought an award of costs in its Notice of Intention to Defend. As costs generally follow the event, I award costs against the Opponent in accordance with s 221 in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

4 January 2024