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

This matter concerned an opposition to a trade mark application brought by Kelly Services (Australia) Pty Ltd (the opponent) against Ford Kelly Executive Connection Pty Ltd (the applicant). The opposition was heard by Claudia Murray, a Hearing Officer of the Trade Marks Hearings. The dispute centred on the applicant's attempt to register a trade mark, with the opponent arguing that registration should be refused.

The primary legal issue before the Hearing Officer was whether the opponent had established grounds for opposing the trade mark application under section 44 of the relevant Act. This section typically deals with the issue of whether a trade mark is identical or deceptively similar to an earlier trade mark. The opponent also raised grounds under sections 60, 42(b), and 43, but these were not explored in detail as the opponent succeeded on the section 44 ground. The standard of proof required for the opponent to succeed was the balance of probabilities.

The Hearing Officer found that the opponent had met the onus of proof in relation to the opposition ground argued under section 44. Evidence was presented demonstrating that the opponent, a global recruitment agency, had operated in Australia since 1988 under a family of KELLY trade marks, including KELLY SERVICES. This evidence included declarations from the opponent's Managing Director, detailing the company's extensive international operations and its significant reputation in the personnel staffing and recruitment services sector. The Hearing Officer noted that the opponent's international reputation had been recognised as early as 1988 in relation to Australian trade mark practice.

Consequently, the Hearing Officer refused to register the applicant's trade mark application, number 1105252, in respect of all the services covered by the application. As is usual, costs were awarded against the unsuccessful applicant according to the official scale.