Employme.com Pty Ltd v MECORP Group Pty Ltd

[2017] ATMO 100

TRADE MARKS ACT 1995

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

Re:Opposition by Employme.com Pty Ltd to registration of trade mark application 1652830 (35) - EMPLOYME (and Device) - filed in the name of MECORP Group Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2017 ATMO 100

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b) and 60 considered – neither established – trade mark to proceed to registration

Background

1.  This is an opposition brought by Employme.com Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of MECORP Group Pty Ltd (‘Applicant’): 

Application Number:

1652830

Filing Date:

16 October 2014

Services:

Class 35: Personnel recruitment; recruitment services; employment services; resume services

(collectively ‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

2.  Following the advertisement on 8 October 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 9 November 2015.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 3 December 2015. The SGP was assessed by this office as adequate. The Applicant filed a Notice of Intention to Defend on 23 December 2015. The SGP raised grounds of opposition under ss 42(b) and 60 of the Act.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 11 April 2016.  This evidence consists of a declaration made on 11 April 2016 by Gerald O’Neil, CEO of the Opponent, with Exhibits GO-1 to GO-28 (‘O’Neil Declaration’). 

4.  The Applicant filed Evidence in Answer to the opposition (‘EIA’) on 19 August 2016.  This evidence was filed after the deadline for filing the EIA however the Applicant sought and obtained an extension of time.  This evidence consists of a declaration made on 18 August 2016 by Arthur Graham Spencer, Group Manager of the Applicant, with Exhibits AGS-1 to AGS-33 (‘Spencer Declaration’).  The Opponent chose not to file any evidence in reply.

5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities.  By letter issuing from IP Australia on 6 February 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 6 March 2017, the Opponent filed its submissions prepared by DCS Lawyers (‘Opponent’s Submissions’).  On 6 March 2017, the Applicant filed its submissions prepared by Pipers Patent Attorneys (‘Applicant’s Submissions’).

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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.

The Opponent

7.  The Opponent was established in August 2011 and provides a means for job seekers to create profiles and promote themselves to potential employers.

8.  Much of the evidence of the Opponent consists of evidence and statements relating to the Opponent’s reputation after 16 October 2014, the filing date of the application in Australia (‘relevant date’). As discussed below with respect to the s 60 ground of opposition, it is necessary for the Opponent to establish reputation at the relevant date and unless evidence of subsequent reputation and use can cast light on the Opponent’s reputation at the relevant date it is of limited relevance. While I have reviewed the whole of the Opponent’s evidence, in summarising the Opponent’s evidence below, I limit myself to evidence relevant to the Opponent’s reputation at the relevant date.

9.  The O’Neil Declaration contains the following claims/statements:

·     The Opponent first established an online presence in January 2012 and purchased the employme.com domain name in August 2014. 

·     The Opponent has spent over $980,000 in development and branding.  It has run various social media campaigns to boost popularity including giving away 30 laptops in October 2012 and a Kia Rio valued at $16,000 in February 2013.

·     The Opponent has been featured on several television and video promotions including appearing on ‘A Current Affair’ in January 2013.

·     The Opponent contacted over 30 Federal and State Ministers to raise awareness of the Opponent’s services.

·     The Opponent sent out over 400,000 flyers to Centrelink offices, TAFEs and universities in September 2012 advertising its services.  These flyers included a mark consisting of the word ‘Employme’ with an Australian flag.

·     In the 2012-13 financial year the Opponent engaged in expenditure and investment of $670,000 of which $58,108 was for marketing purposes.

·     In April 2014 the Opponent launched a new logo and design featuring the word ‘Employme’, new branding being very similar to the Trade Mark, being the word ‘employ’ in black with the word ‘me’ in white surrounded by a red circular background (‘Opponent’s Logo’).  The Opponent’s Logo is depicted below.

·     Between January 2012 and July 2014 the Opponent had over 159,000 members of the public visit its website for 241,980 separate sessions.

The Applicant

1. The Applicant is an Australian company that was established in 2008 and has been promoting its services at its website since at least 2009.

2. The Spencer Declaration contains the claims/statements set out below.

   ·     The Applicant’s services include the provision of recruitment services under the brand names ‘Recruitme’, ‘employme’, the Trade Mark and the recruitme logo, which consists of the words ‘recruitme’ in an identical format to the Trade Mark, with ‘me’ in white on a blue circular background.

   ·     The Applicant has continuously used the word ‘Employme’ in relation to recruitment services since 2008, including the registration (by one of the affiliates of the Applicant) of the domain name employme.net.au on 20 July 2008.

   ·     The Applicant has been using the Trade Mark since 2012.  The creation of the Trade Mark predates by over a year the creation of the Opponent’s Logo.

   ·     The Applicant has received significant visitors to its website, receiving between 5000 and 1000 unique visitors to its site every year between 2009 and 2014 inclusive.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b) and 60. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 16 October 2014, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 60

1. Section 60 of the Act is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[4]

   [4] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[5]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[6]

   [5] [2000] FCA 1335, [81].

   [6] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[7]

   [7] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[8] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[9]

   [8] (2000) 50 IPR 1.

   [9] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

6. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[10]

   [10] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

7. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The Opponent’s “Employ Me” trade mark has acquired a significant reputation in Australia for the same or similar services since at least August 2011.  The use & registration of the applicant’s trade mark, which is substantially identical, would cause deception & confusion in the marketplace.  The Opponent’s services include employment agency services, recruitment & training and promotional publications.  The Opponent seeks to assist job seekers & employers by growing a database of job seekers who have a profile that can be viewed by potential employers.

8. It is unclear in the SGP whether the Opponent is talking about reputation arising in a trade mark consisting of the word ‘Employme’, the word ‘Employme’ and the Australian flag as was used by the Opponent prior to 2014 or by the Opponent’s Logo.  However the Opponent’s Submissions, in particular paragraphs 12-26, appear to suggest that the reputation held by the Opponent is in the Opponent’s Logo, which the Opponent has sought to have registered as a trade mark (application number 1658258).

9. The Applicant’s Submissions clearly identify the difficulty the Opponent has in establishing reputation in the Opponent’s Logo. The evidence in the O’Neil Declaration is that the Opponent’s Logo was created in April 2014, less than 6 months before the relevant date. There is no dated documentary evidence of any use of the Opponent’s Logo as a trade mark between April 2014 and the relevant date, and even assuming the Opponent had immediately used the Opponent’s Logo on its webpage and social media pages, its use of the Opponent’s Logo in this manner for less than 6 months is insufficient to establish reputation in the Opponent’s Logo for the purposes of the s 60 ground of opposition at the relevant date.

10. Even if I were to consider the Applicant’s use of the word ‘Employme’, or a mark consisting of the word ‘Employme’ and the Australian flag, the Applicant’s Submissions submit that (other than the sending out of the 400,000 flyers to Centrelink Offices, TAFES and Universities in September 2012) the material provided by the Applicant showing use:

• relates to private presentations given to investors (not relevant in itself to establishing reputation in respect of s 60);

• is not properly dated, and/or

• with respect to the evidence of the visitors to the Applicant’s website, difficult to assess given the lack of information as to the content of the Applicant’s website prior to the relevant date.

1. The Opponent does provide evidence of it sending out flyers containing a mark consisting of the word ‘Employme’ and the Australia flag in September 2012.  However the Applicant submits that this evidence contains significant deficiencies in that it fails to indicate how (if at all) the flyers were distributed by the various institutions, how long they were displayed, and whether they were picked up and viewed by potential consumers.  I accept the Applicant’s submissions on this point.

2. Finally I note that the EIA shows that the Applicant commenced use of the word ‘Employme’ in relation to recruitment services in 2008 and had been using it for almost 4 years at the time the Opponent commenced using as a mark the word ‘Employme’, or a mark consisting of the word ‘Employme’ and the Australian flag.

3. In summary the Opponent’s Logo, on which the Opponent relies upon, was created 6 months before the relevant date, and there is no dated documentary evidence of use of the Opponent’s Logo before the relevant date.  I am not satisfied that, at the relevant date, the Opponent’s Logo (or any other mark containing the word ‘Employme’ used by the Opponent) had acquired a reputation in relation to employment agency services, recruitment & training and promotional publications.

4. As the Opponent has failed to demonstrate that the Opponent’s Logo (or any other mark containing the word ‘Employme’ used by the Opponent) had acquired a reputation before the relevant date I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

Section 42

1. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

2. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[11]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[12]

   [11] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [12] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004]  59 IPR 343, 353.

3. The Opponent has particularised the ground of opposition in the SGP as follows: 

   The Opponent has used its “Employ Me” trade mark in Australia since at least August 2011 and has acquired a reputation in that trade mark. By virtue of the Opponent’s reputation, the registration and use of the opposed trade mark would be likely to mislead or deceive in breach of sections 18 and/or of the Australian Consumer Law or would constitute passing off at common law.

4. I repeat my comments set out in [21] above about the lack of specificity of the Opponent’s use of the ‘Employ Me’ trade mark and again note that it appears that the Opponent’s Submissions relate to reputation in the Opponent’s Logo and not to any earlier iteration featuring the word ‘Employme’.  

5. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60,[13] and I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL. 

   [13] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

6. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[14], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off.  In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[15] Section 53 of the TPA is the equivalent provision to s 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[16]

   [14] [2014] ATMO 65, [50].

   [15] [2003] FCA 104, [107].

   [16] [1989] FCA 506, [40] (citations omitted).

1. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1652830 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  I accordingly award costs against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

12 September 2017