Recruitment Hive Pty Ltd v Apache Group Holdings Pty Limited

In this matter before the Hearing Officer, Recruitment Hive Pty Ltd (the opponent) opposed the application for registration of a trade mark by Apache Group Holdings Pty Limited (the applicant). The dispute concerned the applicant's proposed trade mark, which the opponent alleged was substantially identical or deceptively similar to its own registered trade mark, "RECRUITMENT HIVE," and that its use would likely deceive or cause confusion. The opposition was brought on several grounds, including those under sections 42, 44, 59, and 60 of the *Trade Marks Act 1995* (Cth).

The primary legal issues before the Hearing Officer were whether the applicant's trade mark was substantially identical with or deceptively similar to the opponent's registered mark, whether the applicant intended to use the trade mark, and whether the use of the applicant's trade mark would be contrary to law or likely to deceive or cause confusion due to the opponent's reputation. Specifically, the Hearing Officer had to determine if the applicant's proposed services and goods were similar or closely related to those offered by the opponent, and if the opponent had established a sufficient reputation in Australia to warrant opposition under section 60. The Hearing Officer also considered whether the applicant had demonstrated an intention to use the trade mark as required by section 59.

The Hearing Officer found that the applicant's trade mark was not substantially identical to the opponent's mark, applying a side-by-side comparison that considered the marks in their entirety. However, the Hearing Officer determined that the applicant's trade mark was deceptively similar to the opponent's mark, particularly because the common and distinctive element "HIVE" was visually enhanced in the applicant's mark, and the differing elements ("recruitment" and "flex") had varying degrees of distinctiveness in the recruitment services market. The Hearing Officer was satisfied that there was a real and tangible risk of confusion for consumers of recruitment services. The opposition was successful under section 44 for services in Class 35, as these were found to be the same or of the same description as the opponent's services. However, the Hearing Officer was not satisfied that the applicant's goods in Class 9 and services in Class 42 were similar or closely related to the opponent's services. The opposition grounds under sections 42(b) and 60 were not established for the remaining goods and services, as the opponent's reputation was found to be limited to the ICT professional recruitment area and did not extend to the applicant's broader offerings. Furthermore, the Hearing Officer found that the opponent had not established a prima facie case that the applicant lacked the requisite intention to use the trade mark under section 59.

Following these findings, the applicant requested and was granted leave to amend its application by deleting the services in Class 35. Consequently, the Hearing Officer decided that the trade mark could proceed to registration for the remaining goods in Class 9 and services in Class 42, as amended. No award of costs was made to either party, reflecting their respective successes and failures in the opposition.