Recruitment Hive Pty Ltd v Apache Group Holdings Pty Limited - [2024] ATMO 78

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The Recruitment Hive Pty Ltd to registration of trade mark application number 2200641 (class 9, 35 and 42) – Flexhive and device - in the name of Apache Group Holdings Pty Limited

Delegate:

Anne Makrigiorgos

Representation:

Opponent: K&L Gates

Applicant: Allens Patent & Trade Mark Attorneys

Decision:

2024 ATMO 78

Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pressed ss 42, 44, 59 and 60 – s 44 ground partially successful – no other grounds established – applicant requested amendment to services – application may proceed to registration for amended services

Background

This is a decision in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by The Recruitment Hive 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) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
Trade mark number:   2200641 (‘Application’)
Trade mark:                 (‘Trade Mark’)
Applicant:                   Apache Group Holdings Pty Limited (‘Applicant’)
Filing Date:                 10 August 2021 (‘Relevant Date’)
Specification:              Class 9: Computer software designed to estimate costs; Computer software designed to estimate resource requirements
Class 35: Business recruitment consultancy; Consultancy relating to personnel recruitment; Employment recruiting consultancy; Employment recruitment; Executive recruitment services; Interviewing services (for personnel recruitment); Office support staff recruitment services; Permanent staff recruitment; Personnel recruitment; Personnel recruitment advertising; Personnel recruitment agency services; Personnel recruitment consultancy; Professional recruitment services; Recruiting of office support staff; Recruitment advertising; Recruitment consultancy services; Recruitment of personnel; Staff recruitment consultancy services; Staff recruitment services
Class 42: Design of computer software; Provision of online non-downloadable software (application service provider); Online provision of web-based software (non-downloadable); Online provision of web-based applications (non-downloadable); Hosting of software as a service (SaaS); Software as a service (SaaS); Temporary use of online non-downloadable software
(‘Applicant’s Goods and Services’).
The Trade Mark was examined and advertised as accepted for possible registration on 11 January 2022.
On 10 March 2022, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 8 April 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 6 June 2022.
The Opponent filed Evidence in Support (‘EIS’) on 7 September 2022. The Applicant filed Evidence in Answer (‘EIA’) on 9 December 2022.
On 24 January 2023, the Opponent requested an amendment to the SGP to add s 59 as a ground. This request was not objected to by the Applicant and was granted by this office. As a consequence, the Opponent and Applicant were granted further time to file EIS (‘Further EIS’) and EIA (‘Further EIA’) in respect of the s 59 ground.
The Opponent filed Further EIS on 26 July 2023. The Applicant filed Further EIA on 20 September 2023.
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. I heard the opposition in my capacity as a delegate of the Registrar of Trade Marks on 19 February 2023. Providing submissions for the Applicant was Lena Balakrishnan of Allens Patent & Trade Mark Attorneys. The Opponent’s submissions were made by Chris Round of K & L Gates. The parties’ oral submissions were supplemented by written submissions filed prior to the hearing. I have decided this matter based on the particulars set out in the SGP, the evidence, and the written and oral submissions of the parties.
Grounds and Onus
The SGP nominates grounds of opposition under ss 42, 44, 59, 60 and 62A. However, the Opponent’s written submissions state that the Opponent does not press s 62A. For completeness I find the s 62A ground has been abandoned.
The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date.[4]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).
Evidence
The following evidence was filed:
EIS
Declaration of Benjamin Ashman, director of the Opponent, made on 5 September 2022 with Exhibits BA-1 to BA-11, BA-15, BA-17 and BA-19 to BA-24 and Confidential Exhibits BA-12 to BA-14, BA-16 and BA-18 (‘Ashman Declaration’).
Declaration of Eric Fallon, recruitment consultant of the Opponent, made on 31 July 2022 (‘Fallon Declaration’).
Further EIS
Declaration of Peter Knowles, employee of K & L Gates, made on 26 July 2023 with Exhibit PK-1.
EIA
Declaration of Martin Hayden, Chief Executive Officer of the Applicant, made on 9 December 2022 with Exhibit MH-1 and Confidential Exhibit MH-2 (‘Hayden Declaration’).
Further EIA
Second Declaration of Martin Hayden made on 19 September 2023 with Confidential Exhibit MH-3 (‘Second Hayden Declaration’).
Summary of EIS
Ashman states that the Opponent is based in Canberra and has provided specialist human resource management and recruitment services (‘Opponent’s Business’) by reference to the trade mark RECRUITMENT HIVE (‘Opponent’s Mark’) since April 2012. Ashman states that almost all of the Opponent’s work is derived from Commonwealth Government contracts.
Ashman provides details of the Opponent’s Australian trade mark registrations which appear in the table below (‘Opponent’s Registrations’):

Registration number

Mark

Class and goods/services

Priority date

2160878

(‘H logo’)

Class 35: Advertising; marketing; business management; business organisation; business administration; office functions; business recruitment consultancy; personnel management, recruitment and placement; employment and personnel recruitment, including advertising, agency services and consultancy; professional recruitment services, including in relation to information and communication technology services; employment and job agency services; human resource management; payroll preparation and assistance; payroll processing services (for others); business consultancy relating to the administration of information and communication technology; commercial information services provided by access to a computer database; updating and maintaining data in computer databases; online data processing services; preparation and provision of business data; business consultancy in relation to data processing; collection and collation of data, including business data; computer data processing; computerised database management; advisory, consultancy and support services relating to the aforesaid services; providing information, including online, relating to the aforesaid services; all of the aforesaid services also provided via an online communications network

4 March 2021

2160881

RECRUITMENT HIVE

Class 35: Advertising; marketing; business management; business organisation; business administration; office functions; business recruitment consultancy; personnel management, recruitment and placement; employment and personnel recruitment, including advertising, agency services and consultancy; professional recruitment services, including in relation to information and communication technology services; employment and job agency services; human resource management; payroll preparation and assistance; payroll processing services (for others); business consultancy relating to the administration of information and communication technology; commercial information services provided by access to a computer database; updating and maintaining data in computer databases; online data processing services; preparation and provision of business data; business consultancy in relation to data processing; collection and collation of data, including business data; computer data processing; computerised database management; advisory, consultancy and support services relating to the aforesaid services; providing information, including online, relating to the aforesaid services; all of the aforesaid services also provided via an online communications network

(‘Opponent’s Services’)

4 March 2021

Ashman claims the Opponent registered the domain name in 2012 and provides screenshots including archived extracts[5] of screenshots of the website at this address (‘Opponent’s Website’):
[5] Taken from the Wayback Machine, a digital archive of the World Wide Web at 19 July 2022, where I note the description ‘Recruitment Hive is a highly experienced specialist ICT recruitment company that provides ICT Legends to Federal Government and associated industries’.
·dated between 2012 to 2022, where I note the recruitment services that the Opponent provides are in ‘Information Technology, Engineering, Accounting, Legal and Government Industries’. I also note that in 2020 and 5 August 2021, the Opponent is described as a ‘specialist ICT recruitment company’ and the services offered are described as ‘ICT contracting services to the federal government, primarily within the ACT’.
In respect of the screenshots generally, there is no indication provided as to the number of consumers in Australia who engaged with the Opponent’s Website.
Ashman describes the growth of the Opponent’s Business claiming that by 2013, the Opponent had secured its first membership on a Commonwealth Government ICT contractor recruitment panel and by 2015, the Opponent had engaged 20 ICT contractors. Ashman also claims that by 2016 the Opponent had contractors working in all Australian states and territories except South Australia and the Northern Territory.
Ashman provides graphs claimed to show:
· the growth in recruitment jobs from 2013 to the beginning of 2022, which I note show growth in the years 2015, 2017 and 2019 to 2022.
· the growth in the number of contractors engaged by the Opponent each month from 2013 to the beginning of 2022, which I note show steady growth month on month from 20 in 2015 to over 250 in 2022.
Ashman asserts that the Opponent is in the top 10% of recruitment businesses in Australia based on summary business metrics produced by Staffing Industry Metrics 2021 for the years ending February 2021 and February 2022.
Ashman states that the Commonwealth Government advertises contract opportunities to the market through its ‘Digital Marketplace’. Ashman asserts that in February 2022, this ‘Digital Marketplace’ showed 110 open ‘opportunities’ or tenders of which 36 were released to the Opponent, representing 32.7%.
Based on data obtained from the Digital Marketplace, Ashman states that the top 10 service providers engage by the Commonwealth Government are recruitment firms and of those 10, the Opponent is third for contracts awarded.
Ashman provides information and claims regarding the Opponent’s promotion of the Opponent’s Business including:
·articles in the ICT contracting space written by Ashman in 2019 and 2020 and published on the Opponent’s Website. No information as to numbers of consumers who have read these articles have been provided.
·social media accounts, including ‘Flexhive’ Facebook®, LinkedIn® and lnstagram®. Ashman provides screenshots of posts from each account dated after the Relevant Date.
·the Applicant’s website at the website au.hudson.com/flexhive/employers/. Ashman provides screenshots dated after the Relevant Date.
·branding the Opponent’s head office in 2018 with the Opponent’s Registrations. Ashman provides a screenshot from Google Earth dated November 2021, after the Relevant Date.
Ashman claims that the Opponent has spent considerable amounts on promoting and marketing the Opponent’s Business by reference to the Opponent’s Registrations including in or on:
·Canberra newspapers, including ‘City News’.
·third party employment websites such as Seek at including BMA magazine (which I understand is a free entertainment and gig guide for Canberra).
·buses in Canberra, baggage carousels at Canberra Airport and lightboxes in Canberra.
In support, Ashman annexes confidential copies of invoices, promotional materials and strategy documents from the Opponent’s marketing agency Green Flare Ideahaus together with invoices, 2019/2020 marketing spend and promotional materials from the Opponent’s marketing agency Cogency Group. I note that the marketing spend is substantial for both 2019 and 2020. I note there are examples of promotional materials from BMA magazine and City News dated between 2019 and 2021, an example of a Seek advertisement from 2019 and examples of bus and airport advertisements from 2019. All these examples are dated before the Relevant Date.
Ashman claims that the Opponent has purchased sponsored updates through LinkedIn®. Ashman annexes a confidential invoice for such sponsored updates for 2020.
Ashman claims that there has been confusion in the marketplace and supports this claim by annexing:
·a copy of a conversation trail through LinkedIn® sent to the Opponent rather than the Applicant. I note that this conversation is dated after the Relevant Date.
·a screenshot showing the results of a search for ‘Recruitment Hive’ on which is a job advertisement for ‘flexhive by Hudson’. I note that this search was conducted after the Relevant Date.
Fallon refers to an example of alleged marketplace confusion between the Applicant and the Opponent which occurred after the Relevant Date.
Summary of Further EIS
Knowles states that he conducted a number of searches online through search engines and social media for ‘Flexhive’ on 25 July 2023 and 26 July 2023 and claims that the only use of the Trade Mark by the Applicant in respect of the Applicant’s Goods & Services was a single 13 July 2021 post on the Applicant’s ‘Flexhive’ Facebook® page. Knowles annexes the results of these searches.
Knowles claims that since the Applicant began using the ‘flexhive’ trade mark, he has been informed by multiple unnamed staff of the Opponent of potential clients and ICT professionals who have either mistakenly contacted the Opponent in the belief that it was related to, or associated with, the Applicant, or have thought that the ‘flexhive’ trade mark was related to the Opponent’s Services. No supporting evidence is provided.
Summary of EIA
Hayden states that the Applicant is the parent company of Hudson Global Resources (Aust) Pty Ltd (‘Hudson’). Hudson has been providing recruitment services for 30 years including permanent and contract recruitment, candidate profiling and assessments, leadership development and redeployment and outplacement across the Asia Pacific region. A business unit within Hudson is named Flexhive, providing on-demand temporary staffing limited to customer support and administration roles (‘Temp Business’). Hayden asserts that the ‘H’ in the hexagon in the Trade Mark is intended to represent Hudson.
Hayden describes the genesis of the Trade Mark for the Temp Business which was produced by designers CoastalDesign from ‘Hudson Xpress’/’Hive’ on or around 25 March 2020, to be the trade mark which was approved by Hudson’s board on 5 May 2021. Hayden exhibits a number of presentations and branding guidelines dated before and after the Relevant Date where the brands proposed ranged from:
Before the Relevant Date
After the Relevant Date
28.     Hayden declares that following a decision to rebrand on or around 18 March 2022, after the Relevant Date, it was decided that all use of the Trade Mark was to cease and be removed from all external and internal marketing material. Hayden asserts that the Trade Mark was subject to minimal visibility for less than 12 months and was never formally launched.
29.     Hayden declares that on or around 31 May 2022, after the Relevant Date, the trade mark (‘New Trade Mark’) and the tagline ‘work without compromise’ (‘Tagline’) were adopted for the launch of an app on Google Play® and the Apple Store®.
30.     Hayden provides the Applicant’s confidential total annual sales and revenue for the provision of the Applicant’s Goods and Services under the Trade Mark for a three month period in April to July 2021, which are significant. I note that while Hayden claims that these figures are for the use of the Trade Mark, the Hayden Declaration supports a conclusion that in this three month period, other trade marks were likely to be used including one or more of:
, and .
31.     Hayden claims that the Opponent is a specialised recruiter for a specialised group of clients recruiting for very specialised and highly technically skilled roles whereas the Applicant is in the business of recruiting clients with no experience or skill.
32.     Hayden also claims that the Applicant is not aware any complaints of consumer confusion between the Opponent’s Registrations and the Trade Mark.
Summary of Further EIA
33.     Hayden claims confidentiality in three documents which are exhibited to Confidential Exhibit MH-3.[6] I note that these three documents were also exhibited and referred to by Hayden in the Hayden Declaration without any claim to confidentiality.[7]
[6] Second Hayden Declaration Confidential Exhibit MH-3 Tab 1, 2 and 3.
[7] Hayden Declaration Exhibit MH-1 Tab 12, 14 and 17.
34.     In my opinion, Hayden cannot now claim confidentiality of documents for the purpose of the s 59 ground which have already been provided with no claim to confidentiality. It makes no sense for me to decide on s 59 without disclosing information in these three documents when they have already been summarised, disclosed and discussed in respect of the other grounds of opposition.
35.     If in my summary of the evidence, I have disclosed information that is sensitive, then that disclosure has arisen by the Applicant not initially identifying the three documents as sensitive.
36.     Hayden reiterates much of the information regarding the genesis of the Trade Mark and the New Trade Mark and states that Hudson used the Trade Mark consistently for around 6 months before 18 March 2022.
Discussion and Reasons
Section 44
37.     The relevant provisions of s 44 are reproduced below:
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.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:…
(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.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
Note 4:...
(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.
Note:For limitations see section 6.
(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)).
Note 2:For predecessor in title see section 6.
Note 3:     For priority date see section 12.
38.     The SGP nominates the Opponent’s Mark as the basis for this ground of opposition.
39.     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’); and
·the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘the second requirement’); and
·the Applicant’s Goods and Services are similar or closely related to any of the services claimed in the Opponent’s Mark (‘the third requirement’).
40.     I am satisfied that the priority date of the Opponent’s Mark is earlier than the Relevant Date and is in a name other than the Applicant. Therefore, the first requirement is satisfied.
41.     The next consideration is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.
Substantial Identity
42.     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 (‘Shell’),[8] where his Honour stated at 414:
[8] (1963) 109 CLR 407 (‘Shell’).
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.
43.     Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.
44.     In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[9] 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]:
[9] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).
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.
45.     Whether there is substantial identity is a question of fact.[10]
[10] Ibid [53].
46.     The table below shows the comparison of the marks in issue:

Opponent’s Mark

Trade Mark

RECRUITMENT HIVE

47. The Opponent submits that:
·the word ‘RECRUITMENT in the Opponent’s Mark is descriptive of the Opponent’s Services and does not add distinctiveness.
·the ‘flex’ prefix in the Trade Mark merely indicates the flexible nature of the Applicant’s Temp Business and therefore it also does not add distinctiveness.
·the only distinctive element in the Trade Mark and the Opponent’s Mark is the word HIVE.
·the Hexagon device in the Trade Mark is a representation of a hive and therefore it does nothing to distinguish the Trade Mark.
·the relevant comparison is between vs hive.

48. The Applicant submits that:
·the RECRUITMENT element in the Opponent’s Mark cannot be ignored and is an essential element of the mark.
·the word ‘flex’ means to bend and hive has a number of meanings including a place swarming with busy occupants and therefore the meaning of the Trade Mark is a place swarming with busy occupants that can bend and does not call to mind a connection to recruitment.
·the trade marks must be compared in their entirety, and in doing so, they have obvious visual, aural and conceptual differences.

49.     In respect of the Applicant’s submission that the meaning of ‘flex’ is to bend, while this is indeed a meaning of the word ‘flex’, in the context of the Applicant’s and Opponent’s recruitment services, the word ‘flex’ would clearly be seen by consumers as an abbreviation of the word ‘flexible’ for flexible working arrangements e.g. flex workers and flex time. I find it difficult to comprehend that a consumer requiring recruitment services would see the Trade Mark as referring to a place swarming with busy occupants that can bend.
50.     It is clear in light of Shell, that if you are to compare marks side by side, they must be compared in their entirety. You cannot remove parts of marks and pretend they no longer exist and then compare only the parts remaining to achieve the desired outcome that the marks are substantially identical.
51.     In my opinion, compared side by side as a whole, the Trade Mark has obvious visual and aural differences and as a consequence, there is a total impression of dissimilarity and the Trade Mark is not substantially identical with the Opponent’s Mark.
Deceptive Similarity

Section 10 provides a definition of deceptively similar being that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.
Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[11]
[11] Shell (n 8), [13].
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[12] conveniently stated the relevant principles, which may be summarised as follows:
[12] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[13]
[13] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[14]
[14] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
(c)the marks should not be compared side by side;[15]
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[16]
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[17]
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[18]
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[19]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [20]
(i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[21]
(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[22]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[23] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[24]
[15] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).
[16] Ibid.
[17] Ibid.
[18] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
[19] Shell (n 8), 415.
[20] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
[21] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).
[22] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross (n 4), 594-595.
[23] Australian Woollen Mills Ltd (n 15).
[24] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 15), 657.
Justice French (as he then was) expressed the view in Registrar of Trade Marks v Woolworths Ltd[25] (‘Woolworths’) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[26]
[25] Woolworths (n 22), [39].
[26] Ibid. See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
It is also relevant to take into account whether, ‘the different elements of the rival marks have a descriptive character’.[27] Whilst this does not preclude a finding of deceptive similarity,[28] the Full Court noted in Combe International Ltd v Dr August Wolff GmbH & Co. KG Arzneimittel:
It is correct to observe, …, that an element of a trade mark that is descriptive may not tend to cause confusion about the source of a product because it calls to mind the nature of the product, rather than its trade source. However, as we have noted, each case must be considered on the basis of the marks in question and the facts established. The authorities do not say that where there is a common descriptive element in marks that component is to be ignored for the purposes of comparison. In this regard the observation made by Lord Evershed (Asquith and Jenkins LJJ agreeing) in Broadhead’s Application (at 215.1-5), to the effect that even where there is a common denominator one must be careful not to treat words as though the common part was not there at all, is apposite.[29]
[27] The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd [2023] FCA 482, [73] (Jackman J).
[28] Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd [2014] FCAFC 75, [64] (Besanko, Yates and Mortimer JJ).
[29] [2021] FCAFC 8, [78] (McKerracher, Gleeson and Burley JJ).
In relation to the comparison of marks, the Full Court said in Starr Partners Pty Ltd v Dev Prem Pty Ltd:
The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[30]
[30] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).
In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of, on the one hand, the Trade Mark, and on the other, the Opponent’s Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Opponent’s Mark are used and the circumstances in which the goods and services are and will be sold. Here it is clear that both trade marks will be used for at least recruitment services.
The Opponent submits that:
·in the Opponent’s Mark the word ‘hive’ is a reference to bees and the word ‘recruitment’ is descriptive of recruitment services so the idea of the Opponent’s Mark is bees and recruitment. In the Trade Mark, the idea is the same as the Opponent’s Mark particularly when used in respect of recruitment services namely the word ‘flex’ indicates recruitment services for flexible or ‘flex’ workers. Further the Hexagon device in the Trade Mark reinforces a bee and hive connection. The net impression of both marks is the word ‘hive’ and some reference to bees. Thus, a consumer familiar with the Opponent’s Mark who sees the Trade Mark may be caused to wonder whether it is a sub brand focussing on flexible roles.
·a consumer familiar with the Opponent’s Mark and imperfectly recalling the Opponent’s Mark, upon seeing the Trade Mark, may also erroneously assume there is a connection between the Trade Mark and the Opponent.
·the essential and distinguishing feature of the Opponent’s Mark and the Trade Mark is the word ‘hive’ as the words ‘recruitment’ and ‘flex’ are not distinctive and in the Trade Mark the word ‘hive’ is highlighted in comparison to the word ‘flex’.
·the Opponent has shown actual instances of confusion between the marks.
The Applicant submits:
·the Opponent is discounting the stylisation and the word ‘flex’, which is a substantial differentiating and essential feature, and is ignoring the prominence and size of the device element in the Trade Mark and is therefore not considering the marks as a whole.
·the word ‘hive’ is a common element relying on details of a search of the Australian Trade Mark register in Class 35 attached to the submissions. Therefore, consumers attention would be directed to the other elements of the marks namely ‘recruitment’ compared to ‘flex’ and a hexagon device.
·the marks are aurally and visually different and have different meanings. The Trade Mark is an invented word portmanteau of 2 words and 2 syllables and a memorable hexagon device compared to the Opponent’s Mark being 2 known words and 4 syllables. Therefore, a consumer familiar with the Opponent’s Mark who sees the Trade Mark would not be caused to wonder whether it is a sub brand focussing on flexible roles or would not erroneously assume there is a connection between the Trade Mark and the Opponent.
·the Opponent’s evidence of confusion amounts to mishearing someone over a telephone or is unsubstantiated.
Regarding the Applicant’s submission that ‘hive’ is a common element and the evidence of the search results, in Dr August Wolff GmbH & Co KG Arzneimittel v Combe International Ltd, Stewart J stated:
It has been recognised that the state of the register does not establish what is actually happening out in the market and that comparison with other marks on the register is in principle irrelevant when considering a particular mark that has been tendered for registration.[31]
[31] [2020] FCA 39, [73-74]. (citations omitted).
Therefore, the fact that other registered marks may include the word ‘hive’ is largely irrelevant to this inquiry.[32]
[32] Automobile Club De L’Oeust v Gardiakos [2005] ATMO 19, [48] (Hearing Officer McDonagh).
With respect to the Opponent’s evidence of confusion, in determining deceptive similarity “[e]vidence of actual cases of deception, if forthcoming, is of great weight”.[33] The Ashman and Fallon Declarations contain instances of alleged customer confusion which are all dated after the Relevant Date[34] or are unsupported assertions. In my opinion, this evidence does not assist the Opponent.
[33] Australian Woollen Mills (n 15).
[34] Ashman Declaration [42] and [43] Exhibits BA-23 and BA-24 and Fallon Declaration [3] to [7].
I am satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark and find the Opponent’s arguments to be the more persuasive.
The most distinctive and common element in the marks is the word ‘hive’. The differing elements in the marks is the hexagon device and the words ‘recruitment’ and ‘flex’. In respect of these words, in the recruitment space, ‘flex’ has low distinctiveness and ‘recruitment’ is descriptive. Further, the identical element ‘hive’ is shown in bold in the Trade Mark in comparison to the word ‘flex’, thereby visually enhancing the presence of this word as a significant feature of the Trade Mark.
In respect of the hexagon device, I agree with the Opponent that this device reinforces a bee or beehive theme. Further, the hexagon device is very small and has a purpose namely as a tittle. The use of the hexagon device in the Trade Mark does not dilute the prominence of the word ‘hive’ and in my opinion is not sufficient to differentiate the Trade Mark from the Opponent’s Mark so as to prevent consumer confusion.
I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the Opponent’s Mark in respect of recruitment services will be the distinctive word ‘hive’. Even though the word ‘recruitment’ appears first, it has descriptive significance and in my mind is not as important as the word ‘hive’, although of course this does not mean the word ‘recruitment’ can be ignored in any comparison.
In addition, when considering the notional use of the Opponent’s Mark, it would include the words in lower case e.g. recruitment hive, which is the sentence case of the words ‘flex’ and ‘hive’ in the Trade Mark.
In light of the above, I believe there is commonality in idea between the Opponent’s Mark and the Trade Mark. I am satisfied there is a real and tangible risk of traders and consumers of recruitment services, knowing of the Opponent’s Mark, being induced, left in doubt or caused to wonder whether the services offered under the Trade Mark have the same origin or are in the same family. Therefore, the second requirement is satisfied. This leaves the third requirement, namely that the Applicant’s Goods and Services are similar to the Opponent’s Services.
In relation to the third requirement, services are ‘similar to other services’ if they are the same or of the same description as the other services. Here the Applicant, the Opponent and I are in agreement that all of the Applicant’s Class 35 services are the same or of the same description as the Opponent’s Services.
As all three requirements have been satisfied in respect of the Applicant’s Class 35 services, the ground of opposition under s 44 has been established for these services. This leaves consideration of the goods in Class 9 and the services in Class 42 (‘Remaining Goods and Services’) of the Trade Mark.
The Opponent submits that the broad claims of the Remaining Goods and Services are closely related or similar to the Opponent’s Services as they encompass software for data collection, collation and management and services related to data collection, collation and management and software goods and services that relate to business recruitment consultancy and personnel management employment agency services.
The Applicant submits that the fact that some of the Opponent’s Services relate to computers, or are performed using computers, does not render them closely related to computer software or Software as a Service (‘SaaS’). While it is common for companies to provide, for example, data processing services online, this does not necessarily mean that they provide non-downloadable or downloadable software to users of their data processing services.
The Applicant’s services in Class 42 are obviously not ‘the same’ as the Opponent’s Services as they are not identical so I turn to consider whether any of these services are ‘of the same description’. Here I look to the respective natures, uses and trade channels of the services[35] and I compare the totality of the services rather than just individual aspects, ensuring that their respective essences are not ignored.[36] The essential characteristics of each must be examined.[37] Whether consumers would regard or expect the trade origin of the services to be same can also be relevant.[38] The Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd considered particularly relevant the purpose of the services and their inherent character, the persons to who the services are offered, how they are provided and used, method of communication and how they are perceived by the consumers.[39]
[35] Southern Cross (n 4), [5], adopted in Mid Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
[36] Sensis Pty Ltd v Senses Direct Mail and Fulfilment Pty Ltd [2019] FCA 719, [125] (Davies J).
[37] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (‘Accor’) [2017] FCAFC 56, [337] (Greenwood, Besanko and Katzmann).
[38] Corporate Express Inc v Winglide Pty Ltd [1999] ATMO 78 (Hearing Officer Thompson).
[39] Accor (n 36), [339].

On the evidence, I am not satisfied that the Applicant’s Class 42 services are of the same description as the Opponent’s Services. I do not consider that the inherent natures or uses of the respective services are similar and nor do I consider the trade channels to be similar. The respective essences of the services are completely different and the types of services offered by both parties are also completely different. I agree with the Applicant that just because the Opponent’s Services may be performed using computers or software, does not render the Opponent’s Services of the same description to any of the Applicant’s services ‘design of computer software, an application service provider, a provider of non-downloadable web-based software, hosting of SaaS, SaaS or the temporary use of online non-downloadable software’.
I will now determine whether the Applicant’s Goods are closely related to the Opponent’s Services.
The test for whether goods and services are closely related is not defined in the Act. Justice French noted in Woolworths:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[40]
[40] Woolworths (n 22), 424.
78. His Honour went on to observe that “the relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” citing Lockhart J in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co:[41]
[41] [1983] FCA 143, 150.
Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods.
79. A detailed list of questions relevant to whether goods or services are closely related was set out in Re Aussat Pty Ltd[42] namely:
[42] [1993] ATMO 55 (Hearing Officer Thompson).
·are the goods and services of matching technical complexity?
·is the technical training of the people who make the goods or provide the services the same?
·do the people who make the goods or provide the services belong to the same unions or associations?
·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?
·do the goods usually have this service as a related service agreement or package?
·is the nature of the goods or the service such that they would cease to exist without each other, thus creating an expectation of a common source?
·does the service consist of altering, matching and/or installing the goods to a customer's or client's requirements?
·are the goods and services commonly offered by the one company or organisation?
·are the goods a necessary adjunct to a particular service or the only tangible result of it?
The question here is whether the goods ‘Computer software designed to estimate costs; Computer software designed to estimate resource requirements’ are ‘closely related’ to the Opponent’s Services. The question turns on the relationship between these categories of goods and services, not on the specific nature of either the Applicant’s or the Opponent’s business.[43]
[43] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487 [, [36] (Kennett J).
The evidence of either party does not allow any informed conclusion about how commonly software to estimate costs and resource requirements and the Opponent’s Services are provided through the same channels or outlets. Nor does it support any finding of an expectation or understanding among consumers that the goods and services under comparison come from the same sources.
In general, I do not believe that the public would expect the same business to supply both computer software to estimate costs and resource requirements and the Opponent’s Services. The two are unlikely to be considered closely related. I also do not believe that consumers would normally expect a provider of data collection, collation and management services to be a manufacturer and provider of software to estimate costs and resource requirements.
In conclusion, I am satisfied that the Remaining Goods and Services are not similar to or closely related to the Opponent’s Services.
The Applicant did not submit that the application could proceed under the provisions of ss 44(3) and/or 44(4) of the Act which make provision for the Applicant to overcome a s 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances. The evidence before me of use of the Trade Mark in Australia by the Applicant in respect of any of the class 35 services is very limited, such that I cannot be satisfied there is sufficient evidence or other circumstances which would make the application of those provisions appropriate.
I will discuss the remaining grounds of opposition only in respect of the Remaining Goods and Services which are not caught by the opposition under s 44, being the Applicant’s Goods and Services in classes 9 and 42.
Section 60
The provisions of s 60 are reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The SGP states that the Opponent’s Mark has been continuously and extensively used since 2012 in respect of business recruitment services and as a result, the Opponent has acquired a significant reputation such that use of the Trade Mark in respect of services in Class 35 is likely to deceive or cause confusion.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[44]
[44] [2000] FCA 1335, [81].
Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[45]
[45] Ibid [86] (citations omitted).
The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[46] Here given the nature of the parties’ services are recruitment services, the relevant market includes those looking for employment and employers looking to employ. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[47]
[46] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[47] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
In Rodney Jane Racing Pty Ltd v Monster Energy Company (‘Rodney’), it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[48]
[48] [2019] 142 IPR 275, [83] (O’Bryan J).
The Opponent submits that:
·     the EIS establishes a reputation in the Opponent’s Mark in Australia as at the Relevant Date, in connection with business recruitment services including consultancy, personnel management and employment agency services.
·     prior to adopting the Opponent’s Mark in 2012, the Opponent performed online searches for use of the word ‘hive’ in respect of business recruitment services and was unable to identify any businesses operating by reference to a trade mark containing the word ‘hive’.
·     the likelihood of confusion is high as the Trade Mark is deceptively similar to the Opponent’s Mark.
·     there is evidence of actual confusion between the marks.
The Applicant submits that:
·     the Opponent’s reputation is limited to ICT professional recruitment in Canberra.
·     those looking for employment in this area would be familiar with the recruitment agencies that specialise in such placements and their branding and would pay close attention to the roles being advertised.
·     any reputation is limited to the use of the Opponent’s Mark displayed above or next to the H logo.
·     the Trade Mark is not deceptively similar to the Opponent’s Mark or any other uses of the Opponent’s Mark by the Opponent such as the Opponent’s Mark with the H logo.
As with the SGP, I note that the Opponent’s submissions also fail to refer to the Remaining Goods and Services.
Here there is evidence from the Opponent of the growth in recruitment jobs and the number of contractors engaged by the Opponent since 2012, advertising expenditure and evidence of use of the Opponent’s Mark. The Opponent has also shown that its evidence of use is not limited to Canberra.
While the Opponent submits that it has a general reputation in business recruitment services including consultancy, personnel management and employment agency services, the evidence shows that these services are limited to the ICT professional area.
I am satisfied that the Opponent’s Mark has a reputation in respect of business recruitment services including consultancy, personnel management and employment agency services, limited to the ICT professional area. However, the terms of s 60 also require me to take into account the Remaining Goods and Services for which registration is sought, and to then determine whether the reputation in the Opponent’s Mark is such that deception or confusion would arise in relation to the Remaining Goods and Services.
There is no evidence before me of any reputation in the Opponent’s Mark in relation to anything other than business recruitment services including consultancy, personnel management and employment agency services, limited to the ICT professional area. In Woolworths,[49] French J confirmed that there must be a real, tangible danger of deception or confusion occurring before the word ‘likely’ would be made out.
[49] Woolworths (n 22), [43].

100. In the present case, I am not satisfied that a requisite degree of danger of deception or confusion arises. The gap between what the Opponent is known for and the Applicant’s Remaining Goods and Services is simply too broad to be bridged by anything but unreasonable speculations. The Opponent has not demonstrated that because of the reputation in the Opponent’s Mark, the use of the Trade Mark on the Remaining Goods and Services would be likely to deceive or cause confusion.
101. The Opponent has accordingly not established its ground of opposition under s 60 for the Remaining Goods and Services.
Section 42(b)
102. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
103. The SGP asserts that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.
ACL and Passing Off
104. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[50]
[50] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
105. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.
106. For the s 42(b) ground of opposition, the Opponent seeks to rely on the reputation in the Opponent’s Mark which I have already discussed in relation to the s 60 ground of opposition. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 27 of the ACL will also fail, as will claims of passing off.[51]
[51] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).
107. The Opponent has accordingly not established its ground of opposition under s 42(b) in respect of the Remaining Goods and Services.
Section 59
108. Section 59 provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a)to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.
Note:For applicant see section 6.

109. The SGP provides that the Applicant does not intend to use the Trade Mark in light of the Applicant’s evidence that it redesigned the Trade Mark to the New Trade Mark which it now uses and it no longer uses the Trade Mark.
110. Under s 27, an intention to use or authorise use of a trade mark in Australia is a prerequisite to a valid application for registration.
111. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[52] In Aston v Harlee Manufacturing Co, Fullagar J stated:
[52] Aston v Harlee Manufacturing Co (1960) 103 CLR 391.
I do not regard his Honour [Dixon J in Shell] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.[53]
[53] Ibid 401.

112. The presumption arising from filing may be challenged by evidence from the opponent that establishes the contrary, thereby shifting the onus from the opponent onto the applicant and requiring evidence from the applicant which demonstrates the intention to use the trade mark.
113. The intention must be “a resolve or settled purpose” and immediate use is not required.[54] In Ritz Hotel Ltd v Charles of Ritz Ltd and Another, McClelland J said:
[54] Re Ducker's Trade Mark (1928) 45 RPC 397, 402 (Lord Howarth MR).
[i]n my opinion the correct view is that an unused mark is not “proposed to be used” by an applicant for registration unless that applicant has, at the time of the application, a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time.[55]
[55] (1988) 15 NSWLR 158, 203.

114. Actual use after the date of the application will be relevant to the existence of the required intention.[56]
[56] Food Channel (n 2), [74].
115. The first question for my consideration is whether the Opponent has satisfied its burden of establishing a prima facie case of lack of intention to use by the Applicant. In my opinion it has not.
116. The Opponent submits that:
·there is no evidence of use of the Trade Mark in the marketplace at the Relevant Date.
·there is only evidence of development of the Trade Mark.
·the Trade Mark was never formally launched, and because of the various iterations of the Trade Mark, at the Relevant Date, the representation of the Trade Mark was no settled matter.
·the Applicant has admitted to abandoning the Trade Mark which is evidence that there is no intention to use the Trade Mark.

117. The Applicant submits that:
·the act of filing raises a presumption of an intention to use the Trade Mark.
·there has been use of the Trade Mark in preliminary steps prior to the Relevant date and, use for 6 months after the Relevant Date and before the adoption of the New Trade Mark.

118. The Applicant’s evidence shows that the Applicant has used the Trade Mark before the Relevant Date in respect of internal style guides, internal marketing presentations, internal sample decks and an external recruitment proposal. While much of this use is not consumer facing, it supports the Applicant taking preparatory steps to use the Trade Mark and that it had a genuine commitment to use the Trade Mark at the Relevant Date. In the case of the external recruitment proposal, this is consumer facing. There is therefore no absence of an intention to use and there is actual use.
119. Further, in the Opponent’s oral submissions, the Opponent did not deny that the Trade Mark had been used.
120. I am not satisfied the Opponent has provided sufficient cogent evidence to establish a prima facie case that the Applicant lacked the requisite intention at the date of the application and therefore there is no shift of the evidentiary onus to the Applicant. The Opponent has consequently failed to establish the ground of opposition pursuant to s 59.
121. In its oral submissions, the Opponent submitted that as the Applicant had abandoned the Trade Mark, I should use s 59 to deny the Applicant registration of the Trade Mark. Section 59 is not a weapon to be used where an applicant which has shown a legitimate intention to use a trade mark and actual use of a trade mark. The fact that the Applicant has, at a later date, abandoned that mark for another is not a matter that, of itself, triggers the application of s 59.
Amendment of specification
122. I indicated my finding in respect of the Application prior to issuing this decision on 9 April 2024 and offered the Applicant the opportunity to amend the Applicant’s Goods and Services by deleting the services in Class 35. The Applicant requested that the Class 35 services be delete from the specification on 23 April 2024 and the specification was so amended. Consequently, my decision in respect of the Application as amended is that the Trade Mark may proceed to registration in respect of the goods in Class 9 and services in Class 42.
Decision
123. Section 55 of the Act 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.

124. While I found that the Opponent was successful in the Opposition for the services in Class 35, as the Applicant amended the specification to delete these services, the Application may proceed to registration after one month from the date of this decision, with the specification so amended. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to that order.
Costs
125. Both parties have requested costs. Each has had a measure of success. Therefore, I decline to make an award of costs against either party.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
29 April 2024