Kelly Services, Inc. v Ford Kelly Executive Connection Pty Ltd

[2010] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Kelly Services, Inc. to registration of trade mark application 1105252(35) - FORD KELLY EXECUTIVE CONNECTION - filed in the name of Ford Kelly Executive Connection Pty Ltd.

Delegate:	Claudia Murray
Representation:	Opponent: Mr David Shavin QC, instructed by Davies Collison Cave, Melbourne. Applicant: Mr Ian Horak of Counsel, instructed by Horsfield & Associates, Bentleigh East, Victoria.
Decision:	2010 ATMO 72 Section 52 opposition – section 44 ground established – registration refused – costs awarded against applicant.

Background

1. Ford Kelly Executive Connection Pty Ltd (‘the applicant’) filed trade mark application number 1105252 on 24 March 2006, for the plain words trade mark:

Ford Kelly Executive Connection

1. The application was filed in class 35 of the International (Nice) Classification of Goods and Services in respect of ‘Personnel recruitment’.

2. No grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination. It was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 July 2006.

3. On 19 October 2006, Kelly Services Inc. (‘the opponent’) filed notice of opposition to registration of the trade mark. Sixteen grounds of opposition were listed in the notice.

4. Evidence in support, answer and reply was duly served and filed, followed by a round of further evidence and response to further evidence. I heard the matter, as a delegate of the Registrar of Trade Marks, on 12 April 2010. Mr David Shavin QC, assisted by Ms Carolyn Welsh of Counsel, and instructed by Davies Collison Cave, Melbourne, represented the opponent. Mr Ian Horak of Counsel, instructed by Horsfield & Associates, Bentleigh East, Victoria, represented the applicant.

   Evidence

5. The evidence in relation to this opposition comprises:

   Evidence in Support

   ØStatutory declaration of James Joseph Bowmer, with Exhibits JJB1 to JJB6, dated 4 December 2007. (‘First Bowmer declaration’)

   Evidence in Answer

   ØStatutory declaration of Jeffrey Norman Kelly, with Exhibit JNK1, dated 10 July 2008. (‘First Kelly declaration’)

   Evidence in Reply

   ØStatutory declaration of James Joseph Bowmer, with Exhibits JJB1 and JJB2, dated 13 May 2009. (‘Second Bowmer declaration’)

   Further Evidence (Applicant)

   ØStatutory declaration of Jeffrey Norman Kelly, with Exhibits JNK1 to JNK8, dated 28 August 2009. (‘Second Kelly declaration’)

   Response to Further Evidence (Opponent)

   ØStatutory declaration of James Joseph Bowmer, with Exhibits JJB1 to JJB13, dated 17 December 2009. (‘Third Bowmer declaration’)

6. Mr Bowmer is the Managing Director – Australia for Kelly Services (Australia), of Sydney. The opponent is its parent company. His declarations paint a picture of a world-wide recruitment agency with an annual revenue of many US$ billions. The opponent has operated throughout Australia under a family of KELLY trade marks including KELLY SERVICES and KELLY PROFESSIONAL SERVICES since 1988, and specifically in Canberra since 1999. Mr Bowmer estimates that the retail value of services provided under the trade marks represents 3% of the Australian recruitment market.[1] He describes the extent of the company’s business in the following manner:

   My Company's Australian reputation is further buoyed by its overseas operations. Kelly Services was founded in 1946 and has provided a full range of personnel services including staffing and recruitment to customers in a variety of industries throughout its 60+ year history. My Company has evolved from a United States focused company concentrating primarily on traditional office services into a global staffing leader with a breadth of speciality businesses. My Company is the world's largest scientific staffing and recruitment provider and it ranks among the leaders in IT, engineering and financial staffing and recruitment.

   My Company operates in 35 countries and territories including, Australia, Belgium, Canada, China, Czech Republic, Denmark, Finland, France, Germany, Hong Kong, Hungary, India, Indonesia, Ireland, Italy, Japan, Luxemburg, Malaysia, Netherlands, New Zealand, Norway, Philippines, Poland, Portugal, Puerto Rico, Russia, Singapore, Spain, Sweden, Switzerland, Thailand, Turkey, Ukraine, United Kingdom and United States of America. My Company provides employment to more than 750,000 employees annually, with skills including office services, accounting, engineering, information technology, law, science, marketing, creative services, light industrial, education and healthcare…

   My Company's overseas activities and reputation were so significant in 1988 that prior to commencing its business in Australia, my Company was able to successfully negotiate for the withdrawal of three Australian trade mark applications in the name of Drake Personnel Limited which included the term KELLY on the basis of its International reputation.

   The related judgement of Jenkins J dated 29 September 1988 handed down in the Federal Court of Australia Victorian District Registry General Division notes in paragraph 6 on page 5 that "a not insignificant proportion would be led by Drake's use of the name "Kelly" in newspaper advertisements of employment opportunities under the name "Kelly Personnel” into the mistaken belief that the employment agency using the name was associated with the foreign employment agency which used the name “Kelly." [Attached thereto and marked Exhibit "JJB-2" was a copy of the Judgement No. VG316 of 1988.]

   Accordingly, it is submitted that the opponent, from as early as 1988 has been considered, with reference to Australian Trade Mark Practice, to have a significant international reputation and interest in the word KELLY in respect of personnel staffing and recruitment services.[2]

   [1] First Bowmer declaration, para 8.

   [2] Second Bowmer declaration, paras 8-12

7. Mr Kelly’s declarations shed light on the nature of the currently Canberra-based recruitment organization, which he co-owns and co-directs with Ms Moiya Ford. The business was incorporated in February 2006, and specialises in the recruitment of senior executives in the Australian public services. Its primary client is the Australian Government, but it also provides services to the ACT Government. In his first declaration, Mr Kelly describes his business in the following manner:

   Ford Kelly Executive Connection Pty Ltd is a boutique, specialised, privately-owned executive search, selection and consulting business with a strong focus on client service. Its Executive Directors are Moiya Ford and Jeff Kelly.

   Ford Kelly Executive Connection Pty Ltd offers our valued clients the combined expertise of two people who not only have succeeded over many years in challenging government senior executive roles, but also have an outstanding record of achievement in the private sector. Unlike large, publicly-owned transactional recruitment organisations, our boutique operation allows us complete flexibility in service delivery, enhancing our capacity to respond immediately and innovatively to the needs of our clients.

   Ms Ford and Mr Kelly have combined experience of more than 40 years in the public sector, including over 20 years in senior and chief executive roles. This combination of public sector senior leadership experience complemented by private sector success makes Ford Kelly Executive Connection Pty Ltd unique in the Canberra market. Moiya Ford and Jeff Kelly bring to every consulting assignment intimate knowledge and understanding of the challenges facing senior government decision-makers and those in more commercially-based organisations.[3]

   [3] First Kelly declaration, paras 3-4.

   Grounds of opposition

8. Just prior to the hearing, the opponent indicated that, of the many grounds of opposition listed in its notice, it now intended to rely only upon grounds under section 42(b), section 43, section 44 and section 60. At this point, for completeness, I find that none of the other grounds listed have been made out. I will now deal with the grounds of opposition relied upon by the opponent in the order in which Mr Shavin argued them at the hearing.

   Section 44 - Identical etc. trade marks

9. Subsection 44(2), applied to the present circumstances, provides that an application for registration must be rejected if it is substantially identical, or deceptively similar, to another person’s trade mark application or registration that has an earlier priority date, and covers services that are similar to the applicant’s services. The definition of ‘deceptively similar’ in section 10 is that ‘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’. Section 14 defines ‘similar services’ as services which are ‘the same’, or ‘of the same description’.

10. At the hearing, Mr Shavin indicated that the opponent wished to rely on the following prior trade mark registrations. The registrations are all in respect of services such as ‘personnel employment’, ‘personnel recruitment’ and similarly described services in class 35, and all are owned by Kelly Properties, Inc, a wholly owned subsidiary of the opponent:

TM No.	Mark	Priority date
329802	KELLY GIRL	7 March 1979
484068	KELLY SERVICES	24 March 1988
488674	KELLY TEMPORARY SERVICES	9 June 1988
526920	KELLY RECRUITMENT CONSULTANTS	11 January 1990
566154	KELLY PROFESSIONAL SERVICES	30 October 1991
719279	KELLY MANAGEMENT SERVICES	9 October 1996
719280	KELLY SCIENTIFIC RESOURCES	9 October 1996
781802	KELLY ENGINEERING RESOURCES	23 December 1998
809238	KELLYCONNECT	5 October 1999
852786	KELLY FINANCIAL RESOURCES	9 October 2000
852787	KELLY LAW REGISTRY	9 October 2000
852788	KELLY HEALTHCARE RESOURCES	9 October 2000
889306	KELLY IT RESOURCES	13 September 2001

1. Mr Shavin also drew to my attention that the opponent previously had a further six KELLY-based registrations in class 35 that it had chosen not to renew.

2. The priority dates of all the listed registrations are earlier than that of the applied-for trade mark, and there was no dispute between the parties over the similarity between their respective services of interest. Clearly, they are the same. Mr Shavin did not press the argument that any of the opponent’s trade marks were substantially identical to the applied-for trade mark, according to the accepted test.[4] The remaining matter to be determined here is whether the applicant’s trade mark FORD KELLY EXECUTIVE CONNECTION is deceptively similar to any of the opponent’s listed trade marks in terms of section 10.

   [4] The Shell Co of Australia Limited v Esso Standard Oil Australia Limited (1961) 109 CLR 407 at 414.

3. Both Mr Shavin and Mr Horak cited the familiar tests for deceptive similarity in support of their respective cases. These included the words of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd[5], who said of deceptive similarity:

   In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

   [5] (1937) 58 CLR 641, at 658

4. Mr Horak emphasized in his submissions that section 44 does not provide for the ‘bundling up’ of trade marks as part of an assessment of deceptive similarity. Arguing that the applicant’s trade mark was not deceptively similar to any of the opponent’s trade marks, he made the following points:

   (a) [FORD KELLY EXECUTIVE CONNECTION] is a four word mark;

   (b) the word “FORD” appears as the first word;

   (c) the word “KELLY” appears in the centre – and is a common surname; and

   (d) the words “EXECUTIVE CONNECTION” are unique;

   The impression of the trade mark as viewed by the consumer gives significant weight to the FORD and EXECUTIVE CONNECTION elements with the word “KELLY” being less prominent. Both because it is within the mark and known to be a common surname.

   The comparison for deceptive similarity requires comparison of each of the Opponent’s trade mark individually. The words of Section 44 do not allow comparison of previously registered marks taken together…

   Take the Opponent’s trade mark for “KELLY SERVICES” (simpliciter). The word “KELLY” is one element but it is weak trade mark material because of the high number of persons having that surname. The presence of the two words “KELLY” and “SERVICES” would therefore both be taken away by a consumer as a combination of words.

   The fact that the Opponent did not have any registration for the word “KELLY” at the filing date of the Application is a significant matter. Its later filing of that word makes it clear that at the time of the opposed Application being filed the Opponent did not have an interest in marks for the word “KELLY” alone.

   The trade mark under opposition includes “KELLY” as only one element which is given no significant prominence because of its placement in the centre of the opposed mark.

   The two trade marks therefore have an entirely different:

   (a) visual impact; and

   (b) spoken sound.

   The imagery produced by both is also different with the emphasis of the Opponent’s marks being on two words “Kelly Services”. With all the Opponent’s marks the word “KELLY” (if it is present) appears first. In none of the marks does it appear with any other surname.

5. I agree with Mr Horak on a number of these points. It is true that section 44 does not envisage treating a bundle of potentially conflicting trade marks as if they were a single trade mark. It is also true that the opponent does not have a single prior registration for the word KELLY alone, and that, in any event, KELLY is a common surname. (There are currently 25,014 listings for KELLY on the Australian Electoral Roll, according to the Trade Marks Office Search for Australian Surnames.) Of course, the very reason for the inclusion of the word KELLY in the applicant’s trade mark is because it is the surname of one of its two principals.

6. Burchett J considered what Mr Horak described as a similar situation in finding the trade marks VOGUE and EUROVOGUE with device not deceptively similar, in relation to similar goods. He commented:

   [I]t should be borne in mind that “vogue” is neither a made-up word nor a word wholly without any direct application … to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant’s registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.[6]

   [6] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505, 511-12

7. As Mr Shavin pointed out, the courts have stated and restated that there are a number of factors which must be individually weighed into any finding of deceptive similarity[7]. In C A Henschke & Co v Rosemount Estates Pty Ltd[8], the Full Federal Court said of the findings of notoriety and deceptive similarity in the Woolworths Metro case (supra):

   [The Woolworths Metro case suggests a proposition] that, in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration.

   [7] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 428 per French J

   [8] [2000] FCA 1539 (31 October 2000), para 52

8. Having carefully reviewed the evidence, I have come to the conclusion that, in this particular case, the opponent’s very significant presence in the recruitment marketplace at the time the opposed application was filed must be an important consideration. This, I believe, has given the word KELLY in the opponent’s trade marks a significance well beyond that of a common surname, in relation to recruitment services. This, in turn, must seriously increase the likelihood of ordinary persons being deceived or confused by encountering the same familiar name used in a similar trade mark in relation to the same services. And it must be remembered that it is the notional use that the applicant may make of its trade mark if registered which is the standard, not the actual ‘boutique’ use which Mr Kelly has attributed to it.

9. For convenience, I will focus upon the same examples used by Mr Horak, and compare the opponent’s trade mark number 484068 for KELLY SERVICES, with the applied-for trade mark. It is clear to me that, in the context of recruitment services, the words SERVICES and EXECUTIVE CONNECTION add nothing to the impression of either trade mark which might be ‘carried away and retained’ by the ordinary person. They are simple descriptors only. The respective impressions generated by the trade marks are KELLY versus FORD KELLY, in the context of a very specific market where the name KELLY has been a ubiquitous presence in this country for more than two decades. Under those circumstances, it is more than likely that ordinary prospective customers will be left in doubt as to whether the recruitment services being offered to the market under those trade marks in fact originate from the same source. I find the trade marks to be deceptively similar.

10. Mr Horak argued at the hearing that, in the event of my finding the applicant’s trade mark to be deceptively similar to any of the opponent’s marks, in terms of section 44, then I should also find the exception under paragraph 44(3)(b), ‘other circumstances’ available to the applicant. Material which usually assists an applicant in this regard is in the nature of a ‘letter of consent’ provided by the owner of the cited trade mark, clearly not an option here. As Mr Horak observed, the other exceptions of honest concurrent use or prior use available under subsections 44(3) and (4) are in any event unavailable to the applicant, as the length of its use of the applied-for trade mark has not been sufficient. I have not been persuaded by either the applicant’s evidence, or by Mr Horak’s submissions, that the provisions of paragraph 44(3)(b) may be applied in this case. I find the ground of opposition in terms of section 44 to be established.

    Other grounds of opposition

11. Mr Shavin also pressed grounds of opposition under sections 60, 42(b) and 43 at the hearing. I have considered his submissions and the opponent’s evidence in relation to these grounds to a limited degree. However, there is no need to explore them further here. The opponent has succeeded in its ground of opposition under section 44 in relation to all the services covered by the subject application. The additional grounds would, of course, be again available to the opponent in the event of an appeal from this decision.

    Decision

12. Subsection 55(1) of the Act provides:

    (1)     Unless the proceedings are discontinued or dismissed, 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.

    Note:For limitations see section 6.

1. The onus is upon an opponent to establish one or more of its grounds of opposition. Gyles J has referred to the appropriate standard of proof required in terms of a ‘balance of probabilities’.[9] His findings upon that issue, arrived at after an exhaustive consideration of the relevant authorities, have recently been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[10]

   [9] Pfizer Products Inc v Karam [2006] FCA 1663 (1 December 2006); (2006) 70 IPR 599

   [10] [2009] FCA 891 (18 August 2009), paragraphs 22-27.

2. I find here that the opponent has met the onus upon it, in terms of the ground of opposition argued under section 44. I therefore refuse to register trade mark application number 1105252.

   Costs

3. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant.

   Claudia Murray
   Hearing Officer
   Trade Marks Hearings
   4 August 2010