Recruitcorp Pty. Ltd. v QBuild Construction Group Pty Ltd (

[2023] ATMO 208

TRADEMARKSACT1995

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

Re:Opposition by Recruitcorp Pty. Ltd. to registration of trade mark application number 2133361 (classes 37 and 42) - QBUILD - in the name of QBuild Construction Group Pty Ltd.

Delegate:

Nicole Worth

Decision:

2023 ATMO 208

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 41, 44, 58A, 58 and 43 – none established – application may proceed to registration

Background

1. This decision is in respect of an opposition by Recruitcorp Pty. Ltd. (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)1 to registration of the trade mark detailed below, filed in the name of QBuild Construction Group Pty Ltd (‘Applicant’).

   Trade mark:  QBUILD (‘Trade Mark’)

   Filing date:  4 November 2020

   Services:Class 37: Building (construction) supervision; Building construction; Construction consultation; Building project management; Renovation of buildings.

   Class 42: Building design services; Design consultancy; Design services; House design; Architectural consultation; Architectural project management; Construction drafting.

¹ In this decision all references to sections and regulations are references to sections and regulations of the

Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) respectively, unless otherwise stated.

1. The application to register the Trade Mark was examined as required by s 31 of the Act and accepted for possible registration under the provision of s 44(4) (that is, that the Applicant had established use of its trade mark prior to a conflicting trade mark with an earlier priority date). The acceptance was advertised on 13 August 2021.

2. Within the time allowed for doing so the Opponent filed a Notice of Intention to Oppose the application and a Statement of Grounds and Particulars (‘SGP’), and the Applicant filed a Notice of Intention to Defend. Thereafter the Opponent filed evidence in support of its opposition and the Applicant filed evidence in answer. No evidence in reply was filed.

3. No hearing was requested, although some months later the Applicant’s attorney requested that the matter be decided without hearing. It has therefore been allocated to me to decide, as a delegate of the Registrar of Trade Marks, on the basis of the application and the documents identified in paragraph 3 above.

Evidence

1. The evidence filed in this matter consists of declarations by the following people:

Evidence in support

Patrick Sefton, legal practitioner, with Exhibit PS-1, dated 31 May 2022. Exhibit PS-1 consists of a declaration by Michael Korsinczky, director of the Opponent, with Exhibits MK-1 to MK- 8, dated 28 February 2022 (‘Korsinczky’).

Evidence in answer

Quinton Bloxham, director of the Applicant, with Exhibits A to Y including Confidential Exhibits C, D and G to K-1, dated 2 September 2022 (‘Bloxham’).

Opponent’s evidence

1. The declaration of Mr Sefton is made only to introduce Korsinczky and it clarifies that while Korsinczky refers to another matter, it is intended to be relied upon by the Opponent in the subject opposition. The other matter was a removal action in relation to the Opponent’s own registered trade mark. Korsinczky is therefore framed around proving use of the Opponent’s trade mark during the period relevant to the removal action (which was a three year period from 2018 to 2021). As will be seen, it consequently has limited utility because that period of time is later than that required to establish prior or first use.

1. The Opponent is a building and construction business in Queensland. Korsinczky states that it has used the trade mark below since approximately August 2013.

(‘Opponent’s trade mark’)

1. The Opponent’s trade mark is registered in Australia under registration number 1762706 in respect of the services ‘Construction; Construction of buildings; Development of land (construction)’ in class 37. It has a priority date of 5 April 2016.

2. The Opponent’s business has been registered with the Queensland Building and Construction Commission since the 2008/2009 financial year. Records of the registration are in evidence, which demonstrate that the business has the trading names QKITCHENS AND BATHROOMS and QBUILT AUSTRALIA, and has completed varying numbers of jobs in each year from 2008/2009 to 2021/2022 (the year the declaration was made).2

3. The Opponent exhibits three quotes it has provided to customers.3 The quotes are dated 9 March 2019, 5 February 2021 and 26 April 2021 and relate to construction and renovation work at three residential properties in Queensland. The Trade Mark appears at the top of each of the pages, as well as QBUILT in plain text which is given as the trading name of the Removal Opponent and as part of the email address ‘…@qbuilt.com.au’. The email address

² Korsinczky, MK-1.

³ Korsinczky, Exhibits MK-2, MK-3 and MK-4.

‘…@qbuilt.com.au’ also appears in an email from Mr Korsinczky to his legal advisor dated 7 April 2021.4

1. Undated photographs of a vehicle registration plate consisting of the letters QBUILT; signage displaying the Trade Mark in what appears to be an indoor workshop; and, allegedly, the Trade Mark upon a shirt (although the image is obscured), are also in evidence.

Applicant’s evidence

1. The Applicant is a building design and construction business based in Victoria. Bloxham states that the Trade Mark was first used on 30 July 2014 and that it derives from the combination of the first letter of the Director’s first name (Quinton) with ‘build’, to represent the services.

2. Records from the Australian Securities and Investments Commission show that the business, previously existing under two different names, changed its name to QBUILD CONTSTRUCTION GROUP PTY LTD on 30 July 2014.5 A confidential list of receipts issued by the Applicant between 2014 and 2016 demonstrates that a substantial number of receipts were issued.6 A copy of one of those receipts, dated 8 July 2014, displays the trade mark shown below at the top of the page:7

1. This trade mark is likewise shown upon a photograph of signage at a building site (undated, but declared to be from 2015)8 and upon the Applicant’s website ‘qbuildgroup.com.au’.9

⁴ Korsinczky, Exhibit MK-5.

⁵ Bloxham, Exhibit B.

⁶ Bloxham, Confidential Exhibit C.

⁷ Bloxham, Confidential Exhibit D.

⁸ Bloxham, Exhibit A.

⁹ Bloxham, Exhibit E.

1. Exhibited to Bloxham are confidential emails and design plans for the Applicant’s logo, business cards, letterhead and web page, as well as a ‘Brand Guide’ which gives guidance on fonts, size and colours for presenting the trade mark shown above. These exhibits date from February to April 2014.10

2. Records in relation to QBuild Construction Group Pty Ltd are exhibited under the heading ‘PRIOR AND CONTINUOUS USE’. These include records from the Australian Taxation Office from 2008,11 sales records from 2014 to 2021,12 invoices from a supplier from 2016 to 2021,13 and tax invoices from Telstra from 2016 to 2021.14 Each of these records displays the name QBuild Construction Group Pty Ltd.

Grounds, onus and standard of proof

1. The SGP nominated grounds of opposition under ss 41, 44, 58A, 58 and 43 of the Act.

1. In order to succeed in its opposition, the Opponent bears the onus of establishing at least one of the grounds of opposition.15 If it does so, there is no requirement for the Registrar to consider the remaining grounds.

2. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.16 The date at which the rights of the parties are to be determined is 4 November 2020 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.17

¹⁰ Bloxham, Confidential Exhibits G to K-1.

¹¹ Bloxham, Confidential Exhibits L and M.

¹² Bloxham, Confidential Exhibits N and O.

¹³ Bloxham, Confidential Exhibits P to U.

¹⁴ Bloxham, Confidential Exhibits V to Y.

¹⁵ Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

¹⁶ Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Section 41

1. It is convenient to begin with a discussion of s 41. Section 41 provides that the Trade Mark must be rejected if it is not capable of distinguishing the Applicant’s services from the services of other persons. In order to establish the ground of opposition the Opponent must satisfy the Registrar that the Trade Mark is not inherently adapted to distinguish the Applicant’s services, and that any use or intended use of the Trade Mark or any other circumstances does not and will not render the Trade Mark capable of distinguishing the Applicant’s services.

2. In the SGP the Opponent submits that ‘build’ is directly descriptive of the services in respect of which the application is made, and ‘Q’ is a commonly used abbreviation for Queensland. As such:

   Other traders providing services in relation to building and construction and associated services would, without improper purpose, wish to use ‘Build’ to describe those services, and ‘Q’ to indicate their businesses are located in or provide services in or to Queensland.

3. In support of its contention the Opponent asserts that the Queensland Government has a commercialized business unit known as ‘QBuild’ which provides building and construction services on behalf of the State. Otherwise, there is no further evidence supporting the submission.

4. I think it obvious that ‘build’ is directly descriptive of the relevant services, and therefore likely to be desired for use by other providers of similar services. However, I am not persuaded that ‘Q’ has the meaning asserted by the Opponent or, at least, I am not persuaded that the meaning is widely understood. The Opponent has not provided any information supporting its contention. My own investigation of the Macquarie Dictionary18 indicates that it may be an abbreviation for Queen; Queensland; question; quotient; physics heat; Q-value and quarto. ‘Q’ may therefore be an abbreviation for a number of things, and there is nothing in the context of the specified

¹⁷ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2], wherein Kitto J stated that the rights of the parties are determined as at the date of the application (‘Southern Cross’).

¹⁸ Online edition, © Macmillan Publishers Australia 2023, accessed 11 December 2023. Given the Macquarie Dictionary is a publicly available resource which would reasonably be expected to be consulted, I consider it fair to rely upon the information found within it.

services which would necessarily bring to mind ‘Queensland’. This is particularly so given the abbreviation ‘QLD’ is more commonly understood to designate Queensland. For these reasons I am not satisfied that ‘QBuild’ forms part of the ‘common heritage’19 of words that should be available for use by other providers of similar services.

1. The ground of opposition under s 41 is therefore not established.

Sections 44 and 58A

1. Section 44 provides that the Trade Mark must be rejected if it deceptively similar or substantially identical to another trade mark which has an earlier priority date and is in respect of similar services or closely related goods, unless the Applicant can establish prior continuous use or honest concurrent use of the Trade Mark, or establishes other circumstances which would make registration proper. In the event that the Applicant does establish prior continuous use, s 58A provides that the Opponent may oppose registration on the basis that its use of its own registered or pending trade mark predates the Applicant’s use of the Trade Mark.

2. The Opponent nominates its registered logo incorporating Q BUILT (‘Opponent’s trade mark’, shown below) as a basis for the ground of opposition.

1. The registration number of the Opponent’s trade mark is 1762706. It has a priority date of 5 April 2016 and is in respect of ‘Construction; Construction of buildings; Development of land (construction)’ in class 37.

2. 
   I consider it straightforward that the priority date of the Opponent’s trade mark is prior to the priority date of the Trade Mark, and that the services are similar. The parties’ trade marks are not

¹⁹ Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

substantially identical20 owing to the prominent stylised letter ‘Q’ in the Opponent’s trade mark, which is absent in the Trade Mark, and the difference between ‘build’ and ‘built’. I do however consider that the parties’ trade marks are deceptively similar.

1. Deceptive similarity relies upon a comparison of the impression of the Opponent’s trade mark (which may be imperfectly recalled) that persons of ordinary intelligence and memory would have, with the impression those people would get of the Trade Mark.21 Both trade marks contain the letter ‘Q’ as the first element, and the Opponent’s trade mark contains the past-tense version (‘built’) of the same word that the Trade Mark contains (‘build’). The presence of the prominent stylised letter ‘Q’ in the Opponent’s trade mark does offer a degree of differentiation, however not to the extent that it sufficiently removes the risk that Q BUILT in logo form will be imperfectly recalled or confused with QBUILD.

2. Given the Trade Mark is deceptively similar to the Opponent’s trade mark, it remains to be determined whether the Applicant can establish prior continuous or honest concurrent use, or any other circumstances that would make registration proper.

3. The Applicant claims use from 2014. Not all use shown in the Applicant’s evidence is use as a trade mark. The records dating from 2014 to 2021 from the Australian Securities and Investments Commission, the Australian Taxation Office, a building supplier and Telstra relate to QBuild Construction Group Pty Ltd. They identify a business, but do not demonstrate use of that name as a trade mark in the course of trade. Nonetheless, they do support an inference of prior continuous use when considered in the context of the totality of evidence. The trade mark shown below appears upon an invoice dated in 2014,22 which is provided as an example of one of the approximately 100 receipts issued during 2014 to 2016.23 It also appears in an undated photograph of signage claimed to be from 2015, the 2014 design of the Applicant’s logo,

²⁰ According to the test for substantial identity set out at [12] of Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, (Windeyer J).

²¹ Ibid [13].

²² Bloxham, Exhibit D.

²³ Bloxham, Exhibit C.

business cards, letterhead, web page, and ‘Brand Guide’,24 and an apparently current copy of the Applicant’s web page.25

1. I consider use of this trade mark to be use of the Trade Mark with additions or alterations not substantially affecting identity. The font is unremarkable, the Trade Mark is not limited to any specific colours so may be used in any colours, and ‘construction group’ in the context of the services is non-distinctive material. In this respect I refer to Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein their Honours considered that ANCHORAGE CAPITAL and ANCHORAGE CAPITAL PARTNERS were substantially identical because PARTNERS ‘makes a relatively unimportant contribution to the overall impression conveyed in a side by side comparison of the two marks’.26 Similarly, ‘construction’ merely describes the services and ‘group’ merely refers to a corporate structure, as did ‘partners’ in the case cited. ‘Construction group’ likewise make a relatively unimportant contribution to the overall impression conveyed in a side-by-side comparison of the two marks.

2. I am therefore satisfied that the Applicant has been using the Trade Mark since 2014. The Opponent declares to have been using its trade mark since 2013, however the only exhibit dating from that time is the registration record with the Queensland Building and Construction Commission which shows that Recruitcorp Pty Ltd, with the trading names QKITCHENS AND BATHROOMS and QBUILT AUSTRALIA, has been registered since the 2008/9 year and has completed a number of ‘jobs’ in each year since then. Of itself, the existence of a trading name does not amount to use of a trade mark in the course of trade. The remainder of the Opponent’s exhibits are dated from 2019 onwards, or are undated. I am not satisfied that it is appropriate to

²⁴ Bloxham, Confidential Exhibits G to K-1.

²⁵ Bloxham, Exhibit E, which is described as ‘a printout of the Applicant’s website that prominently displays the Applicant’s QBUILD mark on the top left corner of the page’.

²⁶ Ltd [2018] FCAFC 6, [130], (Nicholas, Yates and Beach JJ).

infer use for an entire six year period (between claimed first use and a dated exhibit showing use) sufficient to disrupt the Applicant’s claim to prior use.

1. Accordingly, I find that there exists a prior deceptively similar trade mark such that s 44(2) is established, but the ground of opposition does not apply by reason of the Applicant’s prior continuous use. That is, s 44(4) is established, which is reflected in the endorsement already appearing in the details of the Trade Mark upon the Register of Trade Marks.

2. Given that s 44(4) applies, the ground under s 58A is enlivened but as the evidence does not establish the Opponent’s use of its trade mark prior to the Applicant’s use of the Trade Mark, the ground is not established.

3. Accordingly, both of the grounds of opposition under ss 44 or 58A fail.

Section 58

1. Section 58 provides that the registration of the Trade Mark may be opposed on the basis that the Applicant is not the owner of the Trade Mark. The SGP asserts that ‘QBuild’ is the name of the Queensland Government commercialised business unit which provides building and construction services on behalf of the State. On this basis it is claimed that the State of Queensland was the first user of ‘QBuild’ in relation to building and construction services.

2. In order for the Registrar to be ‘satisfied’ that another person is the owner of the Trade Mark, evidence pertaining to another’s adoption and use of it is required. The SGP states:

   Further evidence is being sought by the Opponent of the specific date of first use of “QBuild” by the State of Queensland. However the opponent has been advised by the State that the first use of “QBuild” by the State in relation to building and construction and related services was in the 1990s.

3. No further evidence of use by the State of Queensland was forthcoming, and the statement above is insufficient to displace the Applicant’s claim to ownership arising from the filing of the application to register.

4. Accordingly, the ground of opposition under s 58 fails.

Section 43

1. Section 43 provides that the Trade Mark must be rejected if, because of some connotation it has, its use would be deceiving or confusing. The connotation must be inherent in the trade mark itself, and not arise by virtue of confusion with another trade mark.

2. In the SGP the Opponent particularises the ground as follows:

“Q” is a commonly used abbreviation for “Queensland”.

The mark is likely to cause the relevant trade and public to believe (incorrectly) that the applicant is based in Queensland, or has a connection to Queensland, or provides services predominantly in Queensland, or has a connection to the Queensland government.

The concern is magnified by the existence of the State government’s building services entity, also called “QBuild”…

1. As discussed in respect of s 41, I am not persuaded that the letter ‘Q’ necessarily suggests ‘Queensland’ to the public. There are multiple other meanings associated with the letter ‘Q’, and in the face of the more common abbreviation ‘QLD’ and the fact that the Applicant operates out of Victoria, I am not satisfied that the Trade Mark has the connotation asserted or that its use would be deceiving or confusing.

2. Accordingly, the ground of opposition under s 43 fails.

Decision

1. Section 55 of the Act provides that the Registrar must decide to either refuse to register the Trade Mark, or to register it (with or without limitations) in respect of the specified services, having regard to the extent (if any) to which any ground of opposition has been established.

2. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 2133361 may proceed to registration after one month from the date of this decision. An endorsement reflecting that the provisions of s 44(4) apply has already been entered at the acceptance stage.

3. If the Registrar is served with a notice of appeal before one month from the date of this decision, I direct that the disposition of the application be in accordance with the court’s orders.

Nicole Worth Hearing Officer

Delegate of the Registrar of Trade Marks 13 December 2023