Medirecruit Australia Pty Ltd v Medenterprises Services Limited

[2025] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by Medirecruit Australia Pty Ltd to registration of trade mark application number 2162862 (classes 9 and 35) – MEDRECRUIT - in the name of MEDENTERPRISES SERVICES LIMITED

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Melissa McGrath of Counsel instructed by By George Legal

Applicant: Ed Heerey of Senior Counsel instructed by AJ Park

Decision:

2025 ATMO 88

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 58 and 58A considered – s 44 partially established – honest concurrent use – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Medirecruit Australia Pty Ltd (‘Opponent’) to registration of the following trade mark:

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

   Trade mark number:  2162862 (‘Application’)

   Trade mark:  MEDRECRUIT (‘Trade Mark’)

   Applicant:  MEDENTERPRISES SERVICES LIMITED (‘Applicant’)

   Filing Date:  12 March 2021 (‘Relevant Date’)

   Specification:               Class 9: Computer software designed to facilitate employment agency services; computer software relating to: job searching, job applications, submission of curriculum vitae, requesting more information relating to a particular job, creation and processing of invoices, creation and processing of timesheets, searching for job candidates, advertising jobs, personnel management, human resource management, career guidance advice, candidate assessment, curriculum vitae preparation; none of the aforesaid goods being goods provided in relation to Allied Health.

   Class 35: Employment agency services including personnel recruitment, provision of staff assessments to ascertain the suitability of candidates for recruitment, career counselling, seeking job candidates, seeking jobs in which to place candidates, facilitating job applications, job reference checks and resume preparation; none of the aforesaid services being services provided in relation to Allied Health.[2]

   Endorsement:              Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

   [2] On 13 June 2024, the Applicant requested an amendment to the Applicant’s Goods and Services to add the qualifying terms ‘none of the aforesaid goods being goods provided in relation to Allied Health’ to class 9 and ‘none of the aforesaid goods being services provided in relation to Allied Health’ to class 35. The amendment was actioned on 14 June 2024.

2. The Trade Mark was examined and advertised as accepted for possible registration on 7 November 2022.

3. On 2 January 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 1 February 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 15 March 2023.

4. After a 6 month cooling off period, the parties filed their evidence. The Opponent filed Evidence in Support (‘EIS’) on 6 March 2024. The Applicant filed Evidence in Answer (‘EIA’) on 13 June 2024. The Opponent filed Evidence in Reply (‘EIR’) on 14 August 2024.

5. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. As a delegate of the Registrar of Trade Marks (‘Delegate’), I heard this matter via video conference on 23 April 2025. Prior to the hearing, both parties filed a written summary of their submissions.[3] At the hearing, Melissa McGrath of Counsel instructed by Natalia Blecher of By George Legal (observed by Danielle Weedon and Clare Jones) appeared on behalf of the Opponent and Ed Heerey of Senior Counsel instructed by Thomas Huthwaite of AJ Park (observed by Jennifer Goddard and Richard Clark) appeared on the Applicant’s behalf.

   [3] The Applicant’s submissions were prepared by both Ed Heerey of Senior Counsel and T K Burn-Francis of Counsel.

6. On 23 April 2025, after the matter was heard, the Applicant requested an amendment to the specification to add the further qualifying term ‘all of the aforesaid goods being goods provided in relation to medical doctors’ to class 9 and ‘all of the aforesaid services being services provided in relation to medical doctors’ to class 35.[4] The amendment was actioned on 1 May 2025 and the specification now reads:

   Class 9: Computer software designed to facilitate employment agency services; computer software relating to: job searching, job applications, submission of curriculum vitae, requesting more information relating to a particular job, creation and processing of invoices, creation and processing of timesheets, searching for job candidates, advertising jobs, personnel management, human resource management, career guidance advice, candidate assessment, curriculum vitae preparation; all of the aforesaid goods being goods provided in relation to medical doctors; none of the aforesaid goods being goods provided in relation to Allied Health.

   Class 35: Employment agency services including personnel recruitment, provision of staff assessments to ascertain the suitability of candidates for recruitment, career counselling, seeking job candidates, seeking jobs in which to place candidates, facilitating job applications, job reference checks and resume preparation; all of the aforesaid services being services provided in relation to medical doctors; none of the aforesaid services being services provided in relation to Allied Health (‘Applicant’s Goods and/or Services’).

   [4] At the hearing the Applicant flagged that it was prepared to change the wording ‘none of the aforesaid goods being goods provided in relation to Allied Health’ and ‘none of the aforesaid services being services provided in relation to Allied Health’ to read ‘all of the aforesaid goods being goods provided in relation to medical doctors’ and ‘all of the aforesaid services being services provided in relation to medical doctors’ respectively.

7. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties and the written and oral submissions of the parties.

   Grounds and onus

8. The SGP nominates grounds of opposition under ss 42(b), 44, 58, 58A, and 60. However by letter dated 6 March 2024 which was copied to the Applicant, the Opponent indicated that it was not pursuing the ss 42(b) and 60 grounds of opposition. I therefore treat these grounds as abandoned.

9. The Opponent carries the burden of establishing at least one ground of opposition[5] on the balance of probabilities.[6] The date at which the rights of the parties are to be determined is the Relevant Date.[7]

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

   [6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

   [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

   Evidence

10. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
EIS
Clare Jones, Founder and Director of the Opponent (‘Jones 1’)	5 March 2024	1 to 13 including Confidential 4 to 6 and 9 to 10
EIA
Richard Alexander Francis Clark, Managing Director of the Applicant (‘Clark’)	10 June 2024	RC-01 to RC-16 including Confidential RC-04 to RC-09 and RC-11
Dr Sam Hazeldine, Founder and Chairman of the Applicant (‘Hazeldine’)	10 June 2024	SH-01 to SH-15 including Confidential SH-01 to SH-02 and SH-09 to SH-10
Narelle Poole, Medical, JMO Administration- Rosters and Payroll, NSW Health (‘Poole’)	4 April 2024
Matthew Marshall, Principal Contract Manager, Department of Health and Wellbeing (‘Marshall’)	2 April 2024
Sharon Benson, Category Specialist Medical Services System Procurement, Corporate Services Division, Queensland Health (‘Benson’)	2 April 2024
EIR
Clare Jones (‘Jones 2’)	14 August 2024	14 to 27 including Confidential 21 and 22

The Parties

Opponent

1. The Opponent is a specialist healthcare recruitment and career advisory service for allied health professionals in Australia, New Zealand, and the United Kingdom.

   Applicant

2. The Applicant is a staffing and recruitment agency solely for medical doctors across Australia and New Zealand.

   Summary of the evidence

   EIS

   Jones 1

3. Jones 1 provides details of the Opponent’s Australian registration number 2159024 (‘Opponent’s Registration’) which appear below:

Trade Mark	Classes and services	Priority Date
MEDIRECRUIT (‘Opponent’s Mark’)	Class 35: Business recruitment consultancy; Employment recruitment; Professional recruitment services; Recruitment of personnel; Staff recruitment services; Business negotiation of contracts (for others); Career advisory services (other than education and training advice); Career planning services; Personnel management; Personnel resources management; Resume compilation for personnel seeking employment; Temporary personnel employment services; Temporary personnel placement services; Procurement of contracts (for others); Human resource management; Writing of curriculum vitae for others; Writing of resumes for others Class 41: Life coaching services (training or education services); Career counselling (education or training advice) Class 45: Life coaching (personal mentoring and support services); Provision of background check services (‘Opponent’s Registered Services’)	25 February 2021

The Opponent’s Mark was registered with the following endorsement: ‘Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.’

1. Jones states that during prosecution/examination of the Opponent’s Mark, two registrations in the name of the Applicant (‘Cited Marks’) were raised as a ground for rejection under s 44 (‘s 44 Objection’) namely:

   ·registration number 1409545 for the trade mark MEDRECRUIT GO FURTHER

   ·registration number 1589240 for the trade mark  

   and that the Opponent overcame the s 44 Objection by filing evidence of prior continuous use being a declaration of Clare Jones dated 3 August 2021 with Annexures CJ-1 to CJ-5 (‘Annexed Jones’). Jones 1 annexes a copy of Annexed Jones[8] and states that it provides an accurate representation of the Opponent’s use of the Opponent’s Mark between February 2006 and August 2021.

   [8] Jones [11], Annexure 1.

2. Jones 1 provides evidence claimed to establish that the Opponent has continued to use and promote the Opponent’s Mark throughout Australia from the 3 August 2021 to 5 March 2024.[9]

   [9] Being the date of Jones 1.

3. Jones 1 provides:

   ·     screenshots of the Opponent’s website at (‘Opponent’s Website’) dated 28 February 2024 together with Wayback Machine screenshots dated 15 October 2021, 9 March 2022 and 5 April 2023;  

   ·     screenshots from the Opponent’s social media accounts of Facebook, Instagram and LinkedIn captured in February 2024;

   ·     copies of nine confidential invoices to customers dated between 7 September 2021 and 11 December 2023;

   ·     confidential annual advertising and promotional expenditure data for the financial years 2021 – 2023 which I note is low; and

   ·     annual turnover data for the financial years 2021 – 2023 which I note is also low but steady for each year.

4. Jones 1 exhibits a copy of a letter of demand dated 12 November 2014 sent by the Applicant to the Opponent (‘Letter of Demand’) and a copy of the Opponent’s response dated 18 December 2014. In this Letter of Demand I note the Applicant’s attorney stated ‘Medirecruit, is substantially identical to the registered trademarks of our client’ (which registered trade marks at the time included MEDIRECRUIT).

5. Jones 1 attests that there have been many documented instances of confusion between the Opponent’s Mark and the Trade Mark that have come to the Opponent’s attention, most of which have been brought to the Applicant’s attention and have been expressly acknowledged by the Applicant’s founder, Sam Hazeldine. Jones 1 annexes seven confidential emails (some in a chain of emails) between 13 September 2016 to 29 October 2019 which demonstrate confusion between the Opponent’s Mark and the Trade Mark, the action taken by the Opponent to bring these instances of confusion to the attention of the Applicant and the Applicant’s acknowledgements of these emails. Jones 1 also annexes a confidential transcript of a voicemail message intended for the Applicant but received by the Opponent after the Relevant Date.

   Annexed Jones

6. Annexed Jones claims that the Opponent’s Mark has been used since February 2006 in respect of:

   ·recruitment services including recruiting allied health, nursing and medical professionals from Australia, UK, NZ, Canada and the USA to work in Australia; and[10]

   ·the Opponent’s Registered Services, including various recruitment services, human resource management and life coaching services.[11]

   [10] Annexed Jones [11].

   [11] Annexed Jones [18].

7. Annexed Jones states that the Opponent registered the business name MEDIRECRUIT AUSTRALIA on 7 February 2006 and the Opponent was incorporated on 3 March 2006.

8. Annexed Jones annexes:

   ·screenshots from the Opponent’s Website including Wayback Machine screenshots claimed to be dated in 2006 and screenshots dated in 2010, 2014 and 2021 as follows:

   ·2006: The descriptions of the 2006 screenshots state ‘Screenshot of Applicant’s website (WayBack Machine) dated 8 August 2006’ and ‘Screenshot of Applicant’s website (WayBack Machine) dated 13 August 2006’. However, the screenshots displayed do not display a date and nor are they in the usual format of a Wayback Machine screenshot which shows the date displayed at the top of the page. Annexed Jones also provides links to these undated screenshots but the links are broken and do not resolve to a relevant page.

   ·2010: The screenshots show:

   ·2014: The screenshots show:

   ·2021: The screenshot shows a copyright claim of 2018 and appears to be identical to the 2021 screenshots from Jones 1;[12]

   ·confidential annual revenue figures in Australia for the years 2007 – 2020 which though not substantial, have been relatively steady over these years;

   ·confidential annual advertising and promotional expenditure data for the years 2007 – 2020 which I note is low;

   ·copies of confidential invoices to customers dated between 10 May 2006 (‘First Invoice’) to 17 September 2018 which are headed with the trade mark (‘MediRecruit Logo’) and dated between 12 November 2018 to 2 February 2021 which are headed with the trade mark ;

   ·screenshots dated between February 2019 to November 2020 from the Opponent’s Instagram advertising vacancies;

   ·undated Instagram screenshots claimed to be from 2021 with links to the screenshots but the links are broken and resolve to unavailable pages;

   ·Jora and Indeed online employment search services annexing undated screenshots from these search services; and

   ·website printouts referencing two of the Opponent’s sponsorship in 2019 and 2020.

   [12] Jones 1 [15].

9. Annexed Jones declares that advertising and promotion of the Opponent’s Mark is targeted towards medical and healthcare professionals.

10. Annexed Jones claims that the Opponent adopted the Opponent’s Mark honestly and in good faith having no knowledge of the Cited Marks at the time of adoption in 2006. Ms Jones also claims that she was not aware of any instances of confusion between the Opponent’s Marks and the Cited Marks.

    EIA

    Clark

11. Clark states that the Applicant is part of the Medenterprises Group (‘Group’) which also includes the ultimate holding company Medenterprises International Limited and its wholly owned subsidiaries Medrecruit Limited and MedIP NZ Limited Partnership, who were previous owners of the Group’s trade marks.

12. Clark claims that in June 2006, Dr Sam Hazeldine created the Applicant’s business and the Trade Mark. Clark provides examples of the differing stylisations of the Trade Mark used by the Applicant over the period 2006 to 2024.

13. Clark states that the Trade Mark was first used in New Zealand in July 2006 and in Australia in October 2006 to provide services relating to medical doctor recruitment (‘MD Recruitment Services’). Clark also claims that the business name MEDRECRUIT was registered in Australia on 1 August 2007.

14. Clark claims that the Applicant has 186 employees and supplies medical doctors, primarily on a locum basis under panel supplier/supply of service agreements to State and Territory public health providers in Australia and private healthcare providers in Australia and New Zealand.

15. Clark claims there are 92,139 medical doctors on the Applicant’s 2024 global medical doctor database and 49,228 on the Applicant’s Australian and New Zealand database exhibiting an annual placement report for each Australian State and Territory from 2017 to 2023 and a summary of Australian doctors entering the Applicant’s database each year from 2007 to 2024.

16. Clark exhibits:

    ·     dated examples from 2014 to 2024 of use of the Trade Mark in advertising and promotion such as conferences and workshops from the Applicant’s website at (‘Applicant’s Website’) and from Facebook;

    ·     a 2024 Instagram advertisement;

    ·     Wayback Machine screenshots from the Applicant’s Website from June 2007 to January 2021 where I note that all the screenshots only refer to recruitment for doctors;

    ·     examples of the Applicant’s newsletter/magazine dated 2008 to 2011 claimed to be distributed by email since 2006;

    ·     examples of Google ads dated 2012, 2019, 2021 and 2023; and

    ·     examples of a business award in 2012 and three online media mentions, one undated, one dated after the Relevant Date and one dated in 2020.

    I note multiple examples of use of the Trade Mark in the form of MedRecruit as well as differing stylisations of the Trade Mark[13] in these annexed materials.

    [13] Shown in Clark [10].

17. Clark provides:

    ·     annual Australian sales revenue from 2011 to 2023 for the MD Recruitment Services which are significant and have, with a few exceptions, grown year on year. Clark states that pre 2011 financial records were unavailable as they had not been archived;

    ·     annual Australian sales revenue from 2012 to 2023 for each Australian state and territory;

    ·     annual Australian online advertising spend such as on Google and social media from 2007 to 2024 which is reasonable and has, with a few exceptions, grown year on year;

    ·     example statistics from the Applicant’s Google ads spend from 2008 to 2021 and 2021 to 2024 and a document showing the overview of conversion of Google ads between March 2022 to March 2024; and

    ·     examples of twenty two invoices and timesheets in Australia from September 2011 to 2024.

18. Clark provides confidential tables comparing the 2021 to 2023 annual revenue and 2023 advertising spend of the Applicant and Opponent. Clark also provides a table comparing the parties April 2024 digital footprint and a graph of Google search trends for the number of users searching ‘MEDRECRUIT’ compared to ‘Medirecruit’ from 2006 to 2024. I note that the graph shows a peak for ‘MEDRECRUIT’ as a search term in 2006.

19. Clark claims that the Opponent positions itself firmly in the allied health industry exhibiting a copy of the Opponent’s March 2024 monthly newsletter and an undated website extract. Clark goes on to claim that:

    ·     allied health is a distinct profession from the medical professional;

    ·     allied health practitioners are specifically defined as non-nurse, non-physician health care providers, i.e. excluding doctors, nurses, midwives and dentists; and

    ·     allied health covers diagnostic, technical, therapeutic, and support services such as physical therapists, occupational therapists, medical laboratory scientists, imaging specialists, nutritionists and dietitians and counselors.

1. Clark states that as the Applicant’s clients are medical doctors, they are knowledgeable of the industry and discerning and know the difference between an allied health professional and a medical doctor.

2. Clark provides details of the Applicant’s Australian trade marks which are registered, pending and removed including, relevantly, the following live registration and removed registration:

Number	Mark	Classes	Priority Date	Status
1589240	35	1 November 2013	Registered
1373441 (‘Removed Registration’)	MEDRECRUIT	9, 35	15 July 2010	Removed for non renewal in 2021

1. Clark exhibits a list of ninety two MED and MEDI prefixed trade marks on the Register of Trade Marks (‘Register’) in classes 9, 35 and 41.

2. Mr Clark declares that he is aware of a very small number of instances of misdirected correspondence from the Opponent over the years and that given the large volume of medical doctors, hospitals and healthcare providers the Applicant transacts with, it is reasonable that the odd one may direct their query to the wrong place.

   Hazeldine

3. Hazeldine states that Dr Hazeldine is the founder and chairman of the Applicant and begins with a history of the Applicant’s adoption of the Trade Mark. Dr Hazeldine claims to have invented the Trade Mark in June 2006 and on 28 August 2006, instructing his Australian attorneys to file a trade mark application in New Zealand. Hazeldine exhibits copies of confidential emails between Dr Hazeldine and his attorneys. Dr Hazeldine recalls performing his own internet searches of, inter alia, the Australian and New Zealand trade mark registers, Google including searches for MEDRECRUIT and similar variations, and asking around the industry in August 2006 and the searches did not reveal the Opponent.

4. Hazeldine claims first use of the Trade Mark in July 2006 in New Zealand and states that the intention was to be a medical recruitment agency to supply doctors to hospitals within both New Zealand and Australia.

5. Hazeldine attests that in August 2006 Dr Hazeldine was already in discussion with Coffs Harbour, Port Macquarie, and Rockhampton Hospitals which had listed roles to be filled and that after completing the full cycle of advertisement, doctor selection, credentialing, and then presentation of shortlisted doctors to these hospitals, placements were confirmed in October 2006.

6. Hazeldine declares that in October and November 2006, Dr Hazeldine began organising visits to a number of Australian hospitals, to meet with hospitals so as to develop a personal relationship with staffing providers who had been contacted by phone in July 2006. Dr Hazeldine introduced the Applicant’s business as MEDRECRUIT. Hazeldine exhibiting copies of redacted emails to and from Australian doctors and hospitals dated from 8 November 2006 to 24 October 2007. I note the majority of these emails contained the email sign off  and a number have the word MedRecruit or MEDRECRUIT (with or without other wording) in their subject line or a reference to a required service such as Locums, Shift and Doctor Vacancy.

7. Hazeldine states that the company Medrecuit Limited was incorporated in Australia on 1 August 2007 and the business name MEDRECRUIT was registered in Australia on the same date, exhibiting details from the Australian Securities and Investments Commission register (‘ASIC’) and details of the incorporation of Medrecruit Pty Ltd on 14 October 2010. Hazeldine also states that Dr Hazeldine registered the Australian domain name medrecruit.com.au on 22 August 2006 exhibiting a copy of the certificate of registration and registered the Australian 1800 MEDRECRUIT phone number in the name of Medrecruit Limited in October 2006.

8. Hazeldine discusses the design and adoption of the Applicant’s first device mark (‘First Device’) in October 2006, exhibiting email correspondence with a design agency with the subject line ‘The Brand’. This First Device is claimed to be used on the Applicant’s business cards and advertising posters from October 2006. Hazeldine exhibits undated copies of these business cards and advertising posters. The business cards relevantly display the First Device, the website (‘Website’), the @MEDRECRUIT.com email address, and the 1800 MEDRECRUIT Australian phone number.

9. Hazeldine exhibits an undated copy of a business plan and pitch deck, both headed with the Trade Mark, claimed to be dated August 2006 which I note states, inter alia:

   ·     we are building a medical recruitment agency, which supplies doctors to hospitals within New Zealand and Australia;

   ·     we will provide an efficient, friendly and superior service to both hospitals and doctors that will lead us to become a leading agency in Australasia; and

   ·     initially we will focus on placing junior doctors from New Zealand and Australia in hospitals within Australasia.

   While the business plan does not display a date, there are a number of dates referred to in the documents as follows:

10. Hazeldine exhibits examples of the Applicant’s email newsletters from 14 December 2006 and various dates in 2007 which show Australian job advertisements or job availability in Port Macquarie, Cairns, Rockhampton, Coffs Harbour and Sydney.

11. Hazeldine states that the Applicant registered to provide Queensland Health State Providers with recruitment services in November 2006 and the Applicant was presenting doctors for Australian roles by late 2006 and throughout 2007. Hazeldine further states that by the end of 2006, the Applicant was actively working with Australian hospitals with vacancies and placing doctors with hospital clients in Queensland, Western Australia, Victoria, New South Wales (‘NSW’) and the Australian Capital Territory. In 2007, the Applicant extended to South Australia (‘SA’) and in later years to Tasmania and the Northern Territory.

12. Hazeldine decares that in 2024, Australia accounts for over 85% of the Applicant’s business.

13. Dr Hazeldine claims that one of the Applicant’s New Zealand hospital clients alerted him to the Opponent in August 2014. Dr Hazeldine refers to the claim in Jones 1[14] that there have been instances of confusion between the Opponent’s use of the Opponent’s Mark and the Applicant’s use of the Trade Mark. Hazeldine confirms that from time to time a very small number of people appear to have mistakenly contacted one business instead of the other but claims that the examples provided in Jones 1 are extremely rare and isolated mistakes by third parties, which have been quickly and easily corrected. Dr Hazeldine does not consider that there has ever been actual confusion about which company was which or whose services were whose. The mistakes identified have been innocent and never problematic. Hazeldine also references Annexed Jones where Ms Jones stated ‘I am not aware of any instances of confusion’ which Hazeldine claims indicates there was no issue as the Applicant and the Opponent appear to have existed in their different respective areas for around 18 years.

    Marshall

    [14] Jones 1 [24] to [28].

14. Marshall attests that the Applicant was appointed as a provider on the SA Heath Local Health Networks Locum Medical Services panel on 6 January 2020 and that since at least July 2016, the SA Health Local Health Networks have used the Applicant’s recruitment services provided under the Trade Mark. Marshall further attests that Mr Marshall is very familiar with the Trade Mark.

15. Marshall declares that a review of historical records reveals that the Opponent was used once by a Local Health Network between July 2015 and April 2017, but since April 2017, the Opponent has not been used by any of the SA Health Local Health Networks.

    Poole

16. Ms Poole processes the rosters and payroll for the junior medical staff at Lismore Base Hospital and Ballina District Hospital (‘Hospitals’) which includes hiring locums to fill any vacancies on the Hospitals’ rosters.

17. Poole declares that the Applicant is an appointed provider to Northern NSW Local Health District and that since 2006, the Hospitals have used the Applicant’s recruitment services under the Trade Mark. Ms Poole states that she has procured locums from the Applicant since 2012 and is very familiar with the Trade Mark.

    Benson

18. Benson states that Ms Benson established the statewide panel of locum recruitment agencies for use by Queensland Health, which provides public healthcare services for the state of Queensland, in 2017, which was subsequently renewed in 2022 and the Applicant is on the panel as a main supplier of medical doctor locum recruitment services under the Trade Mark.

19. Benson attests that the Opponent was included on the new preferred supplier panel for clinical contingent workforce for Queensland Health in 2023.

20. Benson declares that the services provided by the Opponent and the Applicant are for two different types of clinical professionals under the Queensland Health panel and Ms Benson does not expect that anyone will be confused. Benson also states that there are many other companies that include the prefix Medi in their names.

    EIR

21. Jones 2 annexes a copy of the Opponent’s business name registration for MEDIRECRUIT AUSTRALIA and incorporation details of the Opponent (dated 1 March 2006) obtained from ASIC. Jones 2 states that a search of the ASIC register undertaken after 1 March 2006 for MEDRECRUIT or MED RECRUIT would have revealed the existence of the MEDIRECRUIT business name and the Opponent. No supporting evidence is provided that a search of the ASIC register in 2006 for MEDRECRUIT would result in the appearance of the different word MEDIRECRUIT.

22. Jones 2 annexes examples of confusion between the Opponent’s Mark and the Trade Mark dating from 2016 to 2024 including:

    ·the Applicant’s emails, invoices and timesheets incorrectly sent to the Opponent by email on ten occasions dated before the Relevant Date between 2016 to 2020;

    ·the Applicant’s invoices and timesheets incorrectly sent to the Opponent on eight occasions dated after the Relevant Date between 2021 to 2024; and

    ·transcripts of five voicemail messages intended for the Applicant which are all dated after the Relevant Date.

23. Jones 2 provides examples of the Opponent’s sponsorships of awards in 2013 and 2018 together with further examples of promotion of the Opponent’s Mark including webinars, interviews, advertorials and paid advertising, exhibiting examples of these promotions which are mainly undated or dated after the Relevant Date.

24. Jones 2 states it is common for the same recruitment company to recruit both doctors and allied health professionals and provides ten such companies together with website extracts for these companies dated after the Relevant Date.

25. Jones 2 claims that the Opponent has, itself and through its related company MediRecruit Doctor Pty Ltd recruited in both the medical and allied health markets since 2010 exhibiting an extract from ASIC that MediRecruit Doctor Pty Ltd registered MediRecruit Doctor as a business name in 2010 before transferring it to the Opponent on 23 April 2021.

26. Jones 2 exhibits the results of a search for ‘doctor’ jobs listed on the Opponent’s Website as at 5 August 2024 where I note five jobs for locum doctors.

    Discussion and reasons

    Section 58

27. Section 58 states:

    Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:For applicant see section 6.

28. The right to registration under the Act depends upon ownership of the trade mark and not ownership by registration[15] and this requirement must be satisfied at the filing date of the application.[16]. Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[17] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[18]

    [15] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ) (‘Accor’). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).

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

    [17] Ibid [14].

    [18] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).

29. The prior use refers to use as a trade mark. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. Therefore, use as a trade mark is use of the sign as a badge of origin.[19]

    [19] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

30. The principles concerning trade mark use are well settled. The Full Court in Nature’s Blend Pty Ltd v Nestlé Australia Ltd summarised these principles as follows:

    (1) Use as a trade mark is use of the mark as a ‘badge of origin’, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

    (2) A mark may contain descriptive elements but still be a ‘badge of origin’.

    (3) The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand.

    (4) The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use ‘as a trade mark’.

    (5) Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or ‘context’) of the impugned words.

    (6) In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it.[20]

    [20] [2010] FCAFC 117, [19] (Stone, Gordon and McKerracher JJ) (citations omitted).

31. The default position under the Act is that the Applicant is prima facie considered to be the owner of the Trade Mark. Consequently, it is the Opponent who bears the evidential onus of establishing otherwise. To succeed under this ground, the Opponent must establish:

    a.the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark;[21]

    b.the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent have been used;[22] and

    c.a person other than the Applicant has the earlier claim to ownership based on use of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Trade Mark.[23]

    [21] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

    [22] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

    [23] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

32. The SGP claims that the Applicant is not the owner of the Trade Mark as since at least as early as 2006, the Opponent has made substantial and continuous use of the Opponent’s Mark in relation to the Opponent’s Registered Services and as a result of this use, the Opponent is the owner of the Opponent’s Mark in relation to the Opponent’s Registered Services. The Trade Mark is substantially identical to the Opponent’s Mark and is sought to be registered in respect of the same or similar goods and services as the Opponent’s Registered Services.

33. The Opponent submits that the Applicant is not the owner of the Trade Mark and it is the Opponent who is the owner based on use by the Opponent of the Opponent’s Mark on two alternative dates occurring before the Trade Mark was even conceived by the Applicant namely: 7 February 2006 when the Opponent authored and first used the Opponent’s Mark for the ‘brand launch’ and 10 May 2006 when the Opponent issued the First Invoice.

34. The Applicant submits that the Opponent cannot establish use before the Applicant’s first documented use of 8 November 2006 as the use of MediRecruit on the First Invoice would not appear to customers as the character of a brand and the use of the MediRecruit Logo is not use of a trade mark substantially identical to the Trade Mark.

    7 February 2006

35. While the Opponent’s evidence does not refer to a ‘brand launch’ in February 2006, it does refer to the Opponent rebranding its services to MEDIRECRUIT and as part of this rebrand, the Opponent registered the business name ‘Medirecruit Australia’ on 7 February 2006.[24] The Opponent’s evidence also states that the Opponent was incorporated on 3 March 2006, after the date of registration of the business name, which indicates that the Opponent could not be the owner of the business name as it was not yet in existence.

    [24] Annexed Jones [10].

36. In my view, the registration of the business name ‘Medirecruit Australia’, without more is not use as a trade mark. In commenting on the registration of business names, Lander J stated in Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation:

    There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person. Because it has established that it intended to use the name to brand its businesses, that does not mean, however, it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.[25]

    [25] [2005] FCA 1278, [73]. See also Lone Star Steakhouse & Saloon Inc v Zurcas [2000] FCA 29 (Lindgren J).

37. Therefore, I am not satisfied that the mere registration of the business name ‘Medirecruit Australia’ is use as a trade mark and therefore I am equally not satisfied that based on the Opponent’s claimed 7 February 2006 use, a person other than the Applicant has the earlier claim to ownership.

    10 May 2006

38. The Applicant submits that it is impossible to determine whether the First Invoice relates to services provided in Australia because the client’s name and address is redacted. I note however that the First Invoice does show a reference to ‘.com.au’ and whilst what appears before ‘.com.au’ has been redacted, I am satisfied that this First Invoice was for services provided in Australia.

39. To rely on the First Invoice in support of the s 58 ground, the First Invoice must show use of the Opponent’s Mark as a trade mark.

40. There are five appearances of the word MEDIRECRUIT on the First Invoice as follows:

    ·Header:             

    ·Fees and Charges:    

    ·Remittance Advice:

    ·Email and website addresses:          

    Email and website addresses

41. The mere registration of a domain name does not give rise to trade mark rights. In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2), Reeves J observed:

    It has been doubted whether the mere registration of a domain name containing the words of a trade mark constitutes the use of those words as a trade mark for the purposes of s 120 of the Trade Marks Act: see CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279; (2003) 128 FCR 408 (“CSR Ltd”) at [42] per Hill J and the cases referred to. However, if the registered domain name is linked to a website that contains advertising material that promotes goods or services in relation to which the trade mark is registered, this combination of use could constitute use as a trade mark under s 120 of the Trade Marks Act. This is all the more so if the advertising material on the website also uses the words of the trade mark to promote the goods or services concerned. In considering whether these situations constitute trade mark use, it will be necessary to apply the general principles set out above to the particular circumstances: see the discussion in Shanahan at [115.1050].[26]

    [26] [2010] FCA 291, [50]. See also Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700, [50]; Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, [315]; Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664, [141] to [153].

1. Further, the Opponent has not provided any evidence that the website at that domain was active and operating as at 10 May 2006 and if so, the content of the website.

2. Additionally, the Opponent has not provided any evidence of emails sent to the email address and I consider the mere reference to an email address, objectively viewed, is not functioning as a badge of origin, namely to distinguish the services provided by the Opponent from the goods or services of other persons. There is nothing before me to suggest that this use does anything more than simply identify a means of contact for the Opponent. It is not use as a trade mark.

   Fees and Charges/Remittance Advice

3. The key question is whether the use of the MediRecruit following the headings Fees and Charges and Remittance Advice, would have appeared to the average consumer as possessing the character of a brand, to indicate a connection in the course of trade between the Opponent and the Opponent’s Services. In Anheuser-Busch Inc v Budejovický Budvar, Národní Podnik, Allsop J said:

   The notion of trade mark use is now given content by ss 7 and 17 of the [Trade Marks Act 1995 (Cth)]. ...

   The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others: The Shell Co; Mark Foys Ltd; Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd; Pepsico Australia; Musidor BV v Tansing (t/as Apple Music House); Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd; and Aldi Stores.

   The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use: The Shell Co; Wrigley’s (Australasia) Ltd v Life Savers (Australasia) Ltd; Aldi Stores.[27]

   [27] [2002] FCA 390, [184]-[186] (citations omitted).

4. In my view, the nature and purpose of the word MediRecruit in the context of Fees and Charges and Remittance Advice is likely to be viewed by the average consumer as a shortened reference to the business entity Medirecruit Australia Pty Ltd, which is the entity that deals with and sets the fees, charges and advice regarding remittance, rather than as a badge of origin. This view is reinforced by the MediRecruit Logo appearing prominently as the trade mark on the First Invoice.

5. This leaves the use of the MediRecruit Logo and the question whether the MediRecruit Logo is at least substantially identical to the Trade Mark?

6. The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, where his Honour stated:

   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.[28]

   [28] [1963] HCA 66, [12].

7. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.

8. In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[29] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.

   [29] Pham Global (n 16).

9. Whether there is substantial identity is a question of fact.[30]

   [30] Ibid [53].

10. The Opponent does not provide written submissions as to the substantial identity of the MediRecruit Logo and the Trade Mark. The Opponent’s written submissions are limited to the issue of substantial identity of the Opponent’s Mark and the Trade Mark and on this issue, I agree that the Opponent’s Mark and the Trade Mark are substantially identical. I also take note of the Applicant’s attorney’s statement in the letter of Demand that ‘Medirecruit, is substantially identical to the registered trademarks of our client’, which included MEDIRECRUIT.

11. On a side by side comparison, with only a single difference between the marks being the letter i, buried left of center, which has little effect on the visual similarity of the respective marks, I am satisfied that a total impression of similarity emerges.

12. At the oral hearing, I invited the Opponent to address the substantial identity of the MediRecruit Logo and the Trade Mark. The Opponent submitted that no weight would be given to the word Australia because it is descriptive and the nature of the image in the MediRecruit Logo does not change the nature of the MediRecruit Logo itself. In addition, the Opponent submitted that oral use of the Medrecruit Logo would be Medrecruit.

13. The Applicant submits that the MediRecruit Logo is not substantially identical to the Trade Mark and I agree. The MediRecruit Logo is not simply the word MEDIRECRUIT. It is a composite mark of two words in stylistic rendering and a device, all in a particular arrangement. The elements of the MediRecruit Logo are:

    ·     the prominent blue and turquoise cross shape graphic;

    ·     the thicker font of the blue first word Med followed by the turquoise letter I;

    ·      the blue last word Recruit after the letter I in thinner font; and

    ·     the word AUSTRALIA beneath, of the same length as the word MediRecruit.

14. The arrangement and elements of the MediRecruit Logo are all absent from the Trade Mark, with the consequence that an overall impression of identity between the two does not emerge and the two marks cannot be substantially identical.

15. Therefore, I am not satisfied that a person other than the Applicant has the earlier claim to ownership based on the claimed 10 May 2006 use.

    Lack of title

16. The Opponent submits that the Applicant is not the owner of the Trade Mark because it has not demonstrated to have taken title from Dr Hazeldine or the MedRecruit company who initially adopted and used the Trade Mark. In particular the Opponent submits:

    ·there have been several users/applicants of the MEDRECRUIT trade mark over time and the relationships between these entities, nor the chain of title to the MEDRECRUIT trade mark, have been adequately explained by the Applicant;

    ·in around 2015, the Applicant’s predecessor in title, MedIP NZ Limited Partnership, began filing trade mark applications for MEDRECRUIT;

    ·it is not clear how MedIP NZ Limited Partnership claimed title to the MEDRECRUIT trade mark which had until then been registered to Medrecruit NZ Limited (formerly Medrecruit Limited); and

    ·there is no evidence of any assignment of the Trade Mark from Hazeldine or Medrecruit NZ Limited.

17. While s 58 was raised as a ground of opposition, I note that the SGP did not particularise lack of title as raised by the Applicant and nor was lack of title addressed in the Opponent’s EIS or EIR.

18. The Applicant submits that Medrecruit Limited, the New Zealand company, was incorporated in September 2006 and conducted the Applicant’s recruitment business in 2006 and where Dr Hazeldine referred to ‘my company’ and signed off as a Managing Director in the email evidence in Hazeldine,[31] he was referring to Medrecruit Limited, which in 2015, changed its name to Medrecruit NZ Limited. Further the Removed Mark was filed in the name of Medrecruit Limited in 2010 and in 2015 assigned to MedIP NZ Limited Partnership, the same name as the Application.

    [31] Hazeldine, Exhibit SH-10.

19. The Applicant further submits that MedIP NZ Limited Partnership claimed title to the Removed Mark by assignment in 2015.

20. The Register is an official record open to inspection by members of the public (s 209) and the Register is prima facie evidence of any particular matter entered in it (s 210). A review of the Register confirms the following:

    ·Medrecruit Limited was the entity that filed for the Removed Mark.

    ·MedIP NZ Limited Partnership claimed title to the Removed Mark by assignment from Medirecruit Limited.

    ·MedIP NZ Limited Partnership is the entity that filed for the Application.

    ·The Applicant claimed title to the Application by assignment from MedIP NZ Limited Partnership.

21. Given MedIP NZ Limited Partnership claimed title to the Removed Mark by assignment in 2015, in my view it is understandable that the Applicant filed the Application in the same name, as it was a refiling of the Removed Mark.

22. The Opponent’s claim that in around 2015, the Applicant’s predecessor in title, MedIP NZ Limited Partnership, began filing trade mark applications for MEDRECRUIT is not supported by the Register or any other evidence.

23. The onus is on the Opponent to provide evidence to satisfy me that the Applicant is not the owner of the Trade Mark and the Opponent has not done so. Consequently, having failed to discharge the onus, the Opponent has not established the s 58 ground.

    Section 44

24. Section 44 relevantly provides (several notes omitted):

    Identical etc. trade marks

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

    (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

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

    (ii)a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    (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.

    (3)If the Registrar in either case is satisfied:

    (a)that there has been honest concurrent use of the 2 trade marks; or

    (b)that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

    (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

    (a)beginning before the priority date for the registration of the other trade mark in respect of:

    (i)the similar goods or closely related services; or

    (ii)the similar services or closely related goods; and

    (b)ending on the priority date for the registration of the applicant’s trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

    Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

25. While the SGP nominates two registrations, the Opponent’s Mark and trade mark registration 2159026 for the trade mark , the Opponent’s submissions state that the Opponent only relies on the Opponent’s Mark.

26. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

    ·the Opponent’s Mark has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

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

    ·the Applicant’s Goods are closely related to the Opponent’s Registered Services or the Applicant’s Services are similar to the Opponent’s Registered Services that also satisfies the first and second requirements (‘the third requirement’).

102.I am satisfied that the priority date of the Opponent’s Mark is earlier than the Relevant Date and that the Opponent’s Mark is in a name other than the Applicant. Therefore, the first requirement is satisfied.

103.I have already concluded at [85] of this decision that the Trade Mark is substantially identical with the Opponent’s Mark. Therefore, the second consideration is satisfied.

104.This leaves the third consideration, namely whether the Applicant’s Goods are closely related to the Opponent’s Registered Services or the Applicant’s Services are similar to the Opponent’s Registered Services.

Similar services

105.Services are ‘similar to other services’ if they are the same or of the same description as the other services.[32] In MID Sydney v Australian TourismCo Ltd,[33] the Full Court held that the factors established for determining whether goods are of the same description also apply, ‘subject to any necessary modification’, to determining whether services are of the same description.

[32] Section 14(1).

[33] [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).

106.Determining whether services are services of the same description as the registered services involves examining the essential characteristics of each. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court said:

As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:

1.   The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does ‘an hotelier’ actually do? What precisely is involved in providing ‘property management services’?

2.   To whom are the services offered?

3.   How are they provided?

4.   How are they used?

5.   What is their purpose?

6.   Are they bundled together with other services?

7.   Are they differentiated by the functional level at which they are provided: wholesale or retail?

8.   Where do they originate?

9.   What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

10.  How closely contestable are the services in substance: are they in the same market or trade?

11.  How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd.[34]

[34] Accor (n 15), [339] (citations omitted).

107.In my view, employment agency services and recruitment services are not the same but they both share similar functions and involve connecting job seekers with employers for example, both involve sourcing, placing and screening employee candidates for employers, and often offer additional support such as resume writing and career coaching. While I am cognisant that the Applicant’s Services are limited to medical doctors, the Opponent’s Registered Services have no limitation to any field or discipline. With this in mind, I am satisfied that the Applicant’s Services are similar to the Opponent’s Registered Services.

Closely related goods

108.The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths Ltd, French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[35] The nature, function and circumstances of the trade, such as trade channels, are also relevant. The likelihood of consumer association of the services with the goods, because they are generally offered by the same people also may be a relevant factor.[36] It can also be relevant as to whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[37]

[35] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [38].

[36] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J) (‘Enagic’).

[37] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).

109.In Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3), Charlesworth J noted:

Section 44(2) is plainly intended to address the mischief that may be created where two marks are the same or deceptively similar. It recognises the potential for confusion in the minds of consumers as to the origin of goods in respect of which a mark is registered or sought to be registered and the origin of services in which an identical or a deceptively similar mark is registered, or sought to be registered as the case may be.[38]

[38] Enagic (n 36).

110.In considering the Applicant’s Goods and the Opponent’s Registered Services, I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Applicant actually trade. I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[39] and judge the goods and services on the basis of business realities and common sense - and not on the basis of abstract reasoning.[40]

[39] Southern Cross (n 7), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ).

[40] Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 265, 240 (Burchett J).

111.The Applicant’s Goods are computer software relating to employment and recruitment for medical doctors. The Opponent’s Registered Services include all types of recruitment services.

112.The Opponent submits that the Applicant’s Goods are closely related to the Opponent’s Registered Services as the delivery of healthcare recruitment services is supported by related computer software. The Opponent’s oral submissions add that the computer software is a way to conduct some of the tasks provided by a recruiting business.

113.The Applicant disagrees but provides no submission as to why the Applicant’s Goods are not closely related to the Opponent’s Registered Services.

114.Neither the Applicant nor the Opponent have provided evidence on the subject of whether the Applicant’s Goods are closely related to the Opponent’s Registered Services. Notwithstanding that computer software today is a necessary part of the provision of a vast array of services including recruitment and employment agency services, there is no evidence before me that the public would see the Applicant’s Goods as closely related to the Opponent’s Registered Services. While I can imagine that the Applicant would enlist the services of others to write software which enables the Applicant to provide its recruitment services to doctors more efficiently, I cannot imagine that the Applicant would itself be in the business of writing such software for third parties. In any event, absent any evidence to assist me, the onus remains on the Opponent to establish its opposition and I am not satisfied that the Applicant’s Goods as closely related to the Opponent’s Registered Services.

115.Therefore, I am not satisfied that, other than the Applicant’s Services, any of the Applicant’s Goods are similar or closely related to the Opponent’s Registered Services and therefore the third requirement is only satisfied for the Applicant’s Services.

116.In conclusion, the s 44 ground is satisfied in respect of the Applicant’s Services but is not satisfied in respect of the Applicant’s Goods. Given this, I must now turn to consider whether, due to evidence of use or other circumstances (that is, the provisions of ss 44(3)-(4)), the s 44 ground of opposition is nevertheless not established.

117.While the Application was accepted under the prior use provisions of s 44(4), the Applicant no longer argues prior use under s 44(4), rather, the Applicant now argues for acceptance under the provisions of s 44(3)(a) or (b). As such, the s 58A ground raised by the Opponent no longer requires consideration.

Honest concurrent use – s 44(3)(a)

118.The date at which honest concurrent use is assessed is at Relevant Date and only circumstances from before the Relevant Date are relevant to the enquiry.[41] The onus for establishing this is on the Applicant.[42] There are several factors to be considered here, including:

[41] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J).

[42] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [85] (Reeves, Jagot and Rangiah JJ).

·     the honesty of the concurrent use;

·     the extent of the use in terms of time, geographical area, and volume of sales;

·     the degree of confusion likely to ensue between the marks in question;

·     whether any instances of confusion have been proved; and

·     the relevant inconvenience that would ensue to the parties if registration were to be permitted.[43]

[43] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 111 [30] (Kenny J).

119.The list of criteria, above, is not exhaustive and ‘any relevant circumstance may, and indeed ought, to be considered’.[44]

[44] Re Electrix Ltd’s Application [1957] RPC 369, 379 (Wynn-Parry J).

120.The first of the criteria, the honesty of the concurrent use, is critical ‘for if it is not honest it is nothing’.[45] The honesty required to be established is not merely an absence of dishonesty, but the presence, objectively ascertained, of honesty.[46]

[45] Re Granada Trade Mark [1979] RPC 303, 313 (Myall J).

[46] Firstmac Limited v Zip Co Limited [2025] FCAFC 30, [63] per Katzmann and Bromwich JJ.

121.In Firstmac Limited v Zip Co Limited (‘Firstmac’), Perram J stated:

Whilst the concept of honest use is in terms of a subjective inquiry, this Court has accepted that it has an objective element.  In particular, it has been accepted by this Court that use will not be honest use within the meaning of the provision if the allegedly infringing party does not take steps that an honest and reasonable person would take to ascertain its ability to use the trade mark and has in effect taken a risk.  So much was explained by Beach J in Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239 (‘Flexopack’) at [111] in relation to s 122(1)(a) (honest use of a person’s name) of the Act and there is no reason to think that this reasoning does not apply to ss 122(1)(f) or (fa) (honest use where registration would be granted).[47]

[47] Firstmac (n 46), [12].

122.The honesty of concurrent use refers to ‘commercial honesty, which differs not from common honesty’.[48]

[48] Re Parkington & Co Ltd's Application (1946) 63 RPC 171, 182 (Romer J).

123.In Tivo Inc v Vivo International Corporation Pty Ltd (‘Tivo’), Dodds-Streeton J observed:

Honesty in this context has been held to mean “commercial honesty”. Relevant authorities have taken into account a number of factors in determining whether the applicant adopted the trade mark without knowing of the earlier mark or in the honest belief that no confusion would arise or business be diverted by use of the name. They include:

(a) whether the words which make up the trade mark are common, everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are “invented” or are not such as to be obviously attractive to other traders;

(b) the subsequent conduct of the applicant;

(c) the likelihood of confusion;

(d) the applicant’s knowledge of the opponent’s mark; and

(e) whether the adoption of the mark, and the continued use of it, was surreptitious.[49]

[49] [2012] FCA 252, [246].

124.Therefore, an absence of sufficient care and diligence can be sufficient to find the evidence relied upon is inadequate to establish either honesty or good faith.[50]

[50] Pham Global (n 16), [103].

125.Important attributes of honesty include independent adoption without any intent to appropriate the reputation or goodwill of a third party and an honestly held belief that there would be no confusion as a result of adopting the same mark.[51] Further, some decisions have noted that a basic part of commercial honesty has involved the conducting or commissioning basic enquiries as to the earlier rights of other traders.[52] Some decisions also go further discussing the quality of enquiries such as the adequacy of a search[53] that have been made by relevant persons before the adoption of a trade mark.

[51] FanFirm Pty Limited v Fanatics, LLC [2024] FCA 764, [330] – [331] (Rofe J).

[52] Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369 (Anderson J); Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406, [124]-[125] (Davies J).

[53] Tivo (n 49), [293].

126.I note the comments of O’Callaghan J in The Practice Pty Ltd v The Practice Business Advisers & Tax Practitioners Pty Ltd where the extent of the searches conducted was at issue:

In my view, a person in the respondent’s position acting honestly and reasonably would have conducted far more extensive and thorough searches than [the witness] says he did to ensure that his chosen name did not conflict with a registered trade mark.[54]

[54] [2024] FCA 1299, [71].

Honesty of adoption of the Trade Mark

127.Dr Hazeldine provides the following in Hazeldine with respect to the honest adoption of the Trade Mark:

·engaging Acacia Law to discuss the medical doctor staffing business he was building and the names being considered as trade marks and business names;

·selecting a name and trade mark among some twenty names considered;

·conducting specific searches to see whether MEDRECRUIT was available to register as a trade mark, including via the New Zealand and Australian intellectual property offices, and Google searches for MEDRECRUIT and similar variations online. He also asked around the industry, which he was already familiar with, to ensure that MEDRECRUIT was able to be trade marked;

·he completed as much due diligence as he felt he could have at the time. MEDIRECRUIT  did not show up in any of his freedom to operate or register searches. If it had, he would not have invested in a brand which he would have considered potentially problematic for his company in New Zealand or Australia. Thus without finding any indication of a competing mark and based on the online searches he conducted, he was of the view that no one else was using MEDRECRUIT or a confusingly similar trade mark for the same types of services in New Zealand or Australia and he would be free to register and use the MEDRECRUIT name and trade mark in New Zealand and Australia;

·as a start-up business, he did many things himself to be as efficient and cost effective as possible;

·he informed Acacia Law about the choice of, and moving forward with, the MEDRECRUIT name and trade mark; and

·in August 2014, he was alerted to the Opponent by one of the Applicant’s New Zealand hospital clients. This was the first time Dr Hazeldine became aware of the Opponent.

128.The Opponent submits that the Trade Mark was not adopted honestly, rather it was adopted in reckless disregard for the Opponent’s prior rights. There was no honest adoption as:

·Dr Hazeldine made the deliberate and informed decision not to utilise the services of his trade mark advisors to conduct clearance searches (which would in all likelihood have identified the Opponent in 2006);

·Dr Hazeldine had the ability and means to learn of the existence of the Opponent’s Mark but chose not to;

·diligent searching of Google and ASIC would have identified that the Opponent was operating in Australia;

·there is no evidence from Dr Hazeldine as to what the searches disclosed;

·the Full Court in Firstmac stated it is not for the Opponent to show that the Applicant’s internet searches were inadequate but the Applicant to demonstrate that they were adequate. That is not satisfied here; and

·at the Relevant Date, the Applicant was aware of the Opponent, its business and the Opponent’s Mark.

129.The Applicant submits that:

·the steps taken by the Applicant’s predecessors, officers and directors in conducting Google searches, seeking legal advice and searching the Register were all the steps that an honest and reasonable person would take to ascertain the ability to use a trade mark;

·there were no prior rights of the Opponent which the Applicant should have been aware when Dr Hazeldine conducted his searches as the Opponent did not have a registered trade mark which could have been located and the Opponent was nascent in the market, and did not have a reputation; and

·by the Relevant Date, the Applicant has been using the Trade Mark in Australia for more than twelve years.

130.In my view, the evidence does not support a finding that Dr Hazeldine knew about the Opponent or any use of the Opponent’s Mark when the Applicant adopted the Trade Mark and commenced using the Trade Mark in Australia. Rather, the evidence of the searches conducted by Dr Hazeldine together with his enquiries around the industry, satisfy me that the Applicant had taken reasonable precautions in relation to its adoption of a trade mark and took steps that an honest and reasonable person would take to ascertain the ability to use a trade mark.

131.While the Opponent submits that there is no evidence from Dr Hazeldine as to what the searches disclosed, there is Dr Hazeldine’s recollection in Hazeldine that there were no impediments disclosed to the use of the Trade Mark.

132.The authorities referred to at [120] to [125] of this decision do not mandate that basic enquiries must be undertaken by a trade mark advisor. Therefore, I have little regard to the Opponent’s submissions that Dr Hazeldine made the deliberate and informed decision not to utilise the services of his trade mark advisors to conduct clearance searches. Further in my view it is perfectly understandable that in a world where information and data is available online to all at no cost, that a start-up business would make the decision to conduct its own searches of online databases such as Google and the Register.

133.The Opponent submits that diligent searching of ASIC would have identified the Opponent and Jones 2 states that a search of the ASIC register undertaken after 1 March 2006 for MEDRECRUIT or MED RECRUIT would have revealed the existence of the MEDIRECRUIT business name and the Opponent. However, based on my personal knowledge of ASIC searches, it is likely that entering MEDRECRUIT or MED RECRUIT would only find these exact names and no similar name and even if the name MEDIRECRUIT was disclosed, ASIC provides no information as to the nature of the business or company that is registered or whether that company or business name is operating in Australia.

134.While the Applicant knew of the Opponent when filing the present Application, this Application is a refiling of the Removed Mark and there is no dishonesty or lack of honesty in seeking to again protect a trade mark which has been used for many years and had inadvertently lapsed.

135.In the end, I am satisfied that the Applicant adopted the Trade Mark honestly.

Extent of the use in terms of time, geographical area, and volume of sales

136.The extent of use in terms of time and volume of sales is significant, showing the Applicant having traded for more than twelve years by the Relevant Date, with significant revenue shown in its evidence covering ten years prior to the Relevant Date and level of advertising expenditure covering fourteen years prior to the Relevant Date The extent of use in terms of geographical area is throughout Australia.

The degree of confusion likely to ensue and instances of confusion

137.The Opponent submits that:

·at the Relevant Date, there were some 65 documented instances of actual confusion spanning seven years which on many occasions were bought to the Applicant’s attention;

·there is a high likelihood of confusion between MEDRECRUIT and MEDIRECRUIT which has materialised many times; and

·rampant confusion is occurring both amongst the Applicant’s customers (predominantly hospital staff) and the medical professionals placed by it.

138.The Applicant submits that:

·     the Applicant is the party with the reputation in the market. Any instances of confusion (which are denied), are a result of the Applicant’s significant reputation, and not the Opponent’s; and

·     there is evidence of market participants (Poole, Marshall and Benson) that there is no risk of confusion.

139.On reviewing the evidence of misdirected emails, time sheets and messages intended for the Applicant but sent to the Opponent, there were significantly less than ‘some 65 documented instances of actual confusion spanning 7 years’ as submitted by the Opponent. On average, before and after the Relevant Date, there were less than four misdirected emails or phone calls per annum between 2016 and 2024. Further, in Annexed Jones, which was filed to obtain acceptance of the Opponent’s Mark under s 44(4) which is dated 3 August 2021, Ms Jones did not refer to any evidence of misdirected emails and messages.

140.The High Court in Campomar Sociedad, Limitada v Nike International Ltd said at [50]:

The 1955 Act established a system which, in various respects, involved a prospect of deception and confusion.  Those provisions dealing with licensing and assignment "in gross" and honest concurrent user are examples.[55]

[55] [2000] HCA 12 (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

and at [52]:

Provisions respecting honest concurrent use, whereby identical or nearly identical trade marks for the same goods or description of goods might be registered by more than one proprietor, subject to possible imposition of conditions, had first been made in Australia by s 28 of the 1905 Act.[56] Of the concurrent use provision in s 34 of the 1955 Act, Bowen CJ observed in Riv­Oland:[57]

[56] See Bedggood & Co v Graham [1909] HCA 9 (Griffith C.J., O'Connor and Isaacs JJ); James F McKenzie & Co v Leslie [1909] HCA 387 (Griffith C.J., Isaacs and Higgins JJ).

[57] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569, 574-575.

No doubt this provision had its origin in the situation that traders in different parts of the country might be circulating goods within their particular region under marks which were similar and doing so quite honestly.  In such circumstances expansion of the respective markets might tend to bring the likelihood of deception or confusion.  Notwithstanding this the policy of the legislation was to enable honest concurrent users to register their marks.

141.It is accepted that the very existence of an honest concurrent use exception implies a toleration of a degree of confusion.[58] Registration has proceeded where the likelihood of confusion has been low or extremely high.[59] In In Re ‘Buler’ Trade Mark, Graham J observed:

[58] Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195, 206; 49 RPC 207, 213-4 and In Re ‘Buler’ Trade Mark [1975] RPC 275, 289 (‘Buler’).

[59] No Name Restaurants Pty Ltd v No Name Restaurants (Cesare) Pty Ltd (1996) 36 IPR 488, 497 (Hearing Officer Zars).

[T]he degree of likely confusion is relatively unimportant … provided the honesty of the applicant [for registration] is established and it is otherwise just in all the circumstances that his mark should be registered.[60]

[60] Buler (n 58).

142.In my view the evidence of misdirected emails, time sheets and messages are not great in number and are not of the kind that would impact negatively on either the Opponent’s or the Applicant’s businesses or reputations. In addition, none of these instances are such that the Applicant has diverted trade from the Opponent, or vice versa.

143.The honest concurrent use defence implies a toleration of a degree of confusion and given I have concluded that the Applicant adopted the Trade Mark honestly, I find the comments of Graham J in In Re ‘Buler’ Trade Mark above at [141] of this decision apposite.

The relevant inconvenience to the parties

144.The Applicant submits that inconvenience would be caused to the Applicant if it had to rebrand now after more than nineteen years of use and refers to Pharmaceutical Plant Co Pty Ltd v TP Health where the Registrar took note of five years of concurrent use and said:

If I was to refuse to register the applicant’s trade mark, its years of presence within the market would be unrecognised.[61]

[61] [2006] ATMO 49, (Hearing Officer Windsor).

145.Orally, the Opponent submitted that the Applicant has other trade marks which it could use as an alternative to the Trade Mark so there would be no need to fully rebrand.

146.In my view the inconvenience to the Applicant would be great and while it has other trade marks, its flagship trade mark which it has used for many years is the Trade Mark and undoubtedly, the Applicant would have to rebrand.

147.I do not consider that registration of the Application would cause significant or indeed any disruption to the Opponent or its business. This is particularly so because the Opponent’s business was operating for many years while the Applicant had a registration for the Trade Mark, namely the Removed Mark.

148.The Opponent, as owner of the Opponent’s Registration is unlikely to be more inconvenienced by the registration of the Trade Mark than it already has been by the existing and ongoing presence in the hospital and health provider market of the Trade Mark.

149.Both parties have used their trade marks in the trade for a number of years. It seems to me appropriate that this use be reflected on the Register in order to demonstrate that the Applicant has rights in the Trade Mark, and allow the Applicant to use the provisions of the Act to protect its Trade Mark.

150.As stated at [119] of this decision, the list of criteria is not exhaustive and any relevant circumstance may, and indeed ought, to be considered.

151.The evidence shows that the use by the Applicant of the Trade Mark is far more extensive than the use by the Opponent of the Opponent’s Mark. It also shows that the length of time the parties have been operating in Australia concurrently under their respective trade marks is at least fourteen years before the Relevant Date and a further four years after the Relevant Date.

152.The evidence of misdirected emails, time sheets and messages that were brought to the Applicant attention by the Opponent are amicable and do not contain any concerns or objections that the Opponent was receiving emails and phone calls intended for the Applicant.

153.The parties appear to have acquiesced to the use of their respective trade marks for many years.

154.In the exercise of my discretion under section 44(3), having weighed all the factors noted above, I find the Applicant has demonstrated honest concurrent use of the Trade Mark with that of the Opponent’s Registration in respect of the Applicant’s Services.

Decision

155.Section 55 relevantly provides:

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.

Note:          For limitations see section 6.

156.As to the Applicant’s Goods, as no ground of opposition the Opponent nominated in the SGP was successful, the Trade Mark can be registered for the Applicant’s Goods.

157.As to the Applicant’s Services, I am satisfied that the Trade Mark can be registered under the provisions of s 44(3)(a).  The endorsement ‘Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.’ shall be replaced with the endorsement ‘Provisions of subsection 44(3) and/or Reg 4.15A(3)(a) applied.’.

158.If the Registrar is served with a notice of appeal, 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

159.The Applicant has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

21 May 2025