RMC of Illinois, Inc v Entrada Consulting Pty Ltd

[2017] ATMO 28

TRADE MARKS ACT 1995

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

Re:Opposition by RMC of Illinois, Inc to registration of trade mark application 1622522(35) - RIGHT-SOURCE - filed in the name of Entrada Consulting Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: James  Maxwell of Maxwells Patent & Trade Mark Attorney Applicant: Ms AJ Moore of Entrada Consulting Pty Ltd
Decision:	2017 ATMO 28 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42, 44, 58, and 60 pressed – s60 established – trade mark refused registration

Background

1.       This is an opposition brought by RMC of Illinois, Inc (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Entrada Consulting Pty Ltd (‘the Applicant’):

Application Number:

Trade mark:

1622522

RIGHT-SOURCE (‘the Trade Mark’)

Priority Date:

26 May 2014

Services:

Class 35: Business efficiency expert services; Business management advisory services; Business strategy services; Employment agency services; Executive recruitment services; Management advisory services for businesses; Professional business consultancy; Professional recruitment services; Recruitment consultancy services

1. Following the advertisement in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration on 16 October 2014, the Opponent filed a Notice of Intention to Oppose on 16 December 2014.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 13 January 2015. The Applicant filed a Notice of Intention to Defend on 16 February 2015. The SGP raised grounds of opposition under sections 42, 44, 58, and 60 of the Act.

2. The Opponent filed Evidence in Support of its opposition on 14 January 2016.  This evidence consists of a declaration made on 14 January 2016 by the Global Chief Financial Officer of the Opponent, with Exhibits SA-1 to SA-19 (‘the Albinger declaration’).

3. The Applicant elected not to file any Evidence in Answer and subsequently the Opponent requested a hearing to decide the matter.

4. I heard the matter in Canberra on 24 August 2016 as a delegate of the Registrar of Trade Marks. James Maxwell of Maxwells Patent & Trade Mark Attorneys represented the Opponent. Ms AJ Moore of the Applicant appeared by video link. Both parties filed written submissions.

5. As a delegate of the Registrar of Trade Marks I am to decide the opposition as required by section 55 of the Act which provides that, unless the proceedings are discontinued or dismissed, 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.

   Grounds of Opposition, Onus and Standard of Proof

   7. Although the Opponent nominated grounds of opposition under sections 42, 44, 58, and 60 of the Act, at the hearing Mr Maxwell focussed his oral submissions on sections 44 and 60. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

6. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 26 May 2014, being the filing date of the application (‘the Priority Date’).[3]

   Evidence

   9.       The Albinger declaration includes Exhibits SA-1 to SA-19. It states that the Opponent has been recognised as the world’s leading public and private recruitment, career transition and organizational consulting service provider around the world since its incorporation in the United States of America in 1980 and its presence in Australia dates from 1996. It also states that the Opponent through subsidiaries and  affiliated companies operates in over 50 countries with more than 300 service locations and approximately 3,500 employees worldwide.

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32]

   [2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd[ 2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595

7. The Albinger declaration evidences, at [10] and Exhibit SA-3,  a ‘family’ of of Australian trade mark registrations including the word ‘RIGHT’, which is summarized below:

Trade Mark	Number	Date	Class
583451	31.7.92	35: Employment agency services; employment counselling services in relation to outplacement - namely rendering advice in connection with the subjects of career assessment, career development and career transition
RIGHT MANAGEMENT CONSULTANTS	1016531	18.8.04	35: Business consultation services, namely, career management services, career placement services, career recruiting services, employment counseling services, employment outplacement services, human resource consultation services, personnel management consultation services, personnel retention consultation services and career management consultation services; resume listing services; resume matching services; relocation services for people and groups of people who are being transferred by their employers from one geographical area to another, international and domestic, namely, providing information and counseling on finding a new home, providing pre-decision destination information, providing information and counseling for family members' job search, providing destination area information; relocation services for individuals, international and domestic, namely, providing information and counseling on finding a new home, providing pre-decision destination information, providing information and counseling for family members' job search, providing destination area information; counseling, and/or tours to relocating people in order to find a new home to buy or rent 41: Education and training services, namely, providing training in relation to job search, career development, self-marketing, interview skills, research workshops and training of human resource personnel in employment separation issues; conducting classes, workshops and seminars in the fields of business management, human resource management and corporate and organization training; workshops, seminars and training in the field of business and personal improvement
1050600	13.4.05	35: Business consultation services, career management services, career placement services, career recruiting services, employment counselling services, employment outplacement services, human resource consultation services, personnel management consultation services, and personnel retention consultation services
RIGHT MANAGEMENT	1106761	23.3.06	35: as above
RIGHT-FROM-HOME	1109474	11.4.04	35: Career management services, business consultation services, human resource consultation services, career placement consultation services, and personnel management consultation services
RIGHT	1264318	25.9.08	35: Providing outplacement assistance on behalf of employers for departed and/or departing employees
RIGHTEVERYWHERE	1340275	12.1.10	35: Business consultation services; career transition services, including, employment outplacement services, career placement services, career recruiting services in the nature of employment recruiting, employment counselling and recruiting services, human resource consultation services, personnel management consultation services, and personnel management consultation in the nature of personnel retention consultation services; employment agency services; temporary and permanent employment agency services; business consultation in the fields of defining business objectives and managing organisational changes; employee leasing; employment related services, including, providing job placement, career development, employment recruitment, and general employment information to others; business management and consulting services, including, assisting businesses in managing workforce changes, including those resulting from mergers, acquisitions, amalgamations, downsizing, and expansion; personnel management, human resources management; employment outplacement consultation services for personnel affected by workforce changes; job placement, including, supplying to others on a temporary and permanent basis engineers, computer programmers, draftsmen, and skilled technical personnel; personnel management, including, providing and managing contract personnel programs; personnel consultancy, including, analysing and consulting on personnel needs; job placement, including, providing contract, temporary, and permanent personnel staffing services; personnel management, including, arranging for and managing the provision of temporary contract personnel; personnel management and consultancy services; providing information and consultancy services on the procurement of temporary, contract, and permanent personnel; preparing on-line business reports via a global information network, all in the field of personnel procurement; human resources consulting on recruiting and testing of employees; employment agency services, including, filling the contract and permanent staffing needs of businesses featuring staff professionals in finance, information technology, engineering, scientific and technical personnel, as well as office administrative staff, factory staff, industrial staff and call centre staff; serving as a human resource department for others; employment outplacement services; testing to determine employment skills; employment counselling; workforce development services, including, personnel management services; providing career information via a website on a global information network, providing information on employment via a website on a global information network; providing an on-line searchable database featuring employment opportunities in the fields of contract and permanent personnel staffing; career placement services featuring resume listing services and resume matching services; personnel relocation, including, relocation services for people and groups of people who are being transferred by their employers from one geographical area to another, international and domestic, including, providing information and counselling on finding a new home, providing pre-decision destination information, providing information and counselling for family members' job search, providing destination area information; personnel relocation services for individuals, international and domestic, including, providing information and counselling on finding a new home, providing pre-decision destination information, providing information and counselling for family members' job search, providing destination area information; employment recruiting consultation; psychological testing for the selection of personnel
1416221	24.3.11	35: Business management; business administration; office functions; employment agency services; temporary and permanent employment agency services; employment related services, namely, providing job placement, career development, employment recruitment, and general employment information to others; personnel management services; human resources management services; providing and managing contract personnel programs; personnel management and consultancy services; providing employee skills screening and assessment tools via a website on a global information network; employment counseling services; career management consultation services; employment outplacement services; professional business consultancy services; accounting and internal business audit services for others, business investigation services; business advice and information services; business organization consultancy services; tax preparation and consulting services 41: Educational and training services; providing training in business and job skills and office technology; providing training in the field of job searching, career development, self marketing, interview skills and research workshops; training services for personnel; providing on-line courses of study in the fields of information technology, software use, job and business skills; career counseling services; education and training being career management and career transition services

1. Trade mark registrations 1016531 and 1050600 were registered and in force as at the Priority Date; however, they have since been removed from the Register for non-renewal of registration.

   Discussion

   Section 60

   12. Section 60 of the Act is reproduced below:

   Section 60 - 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.

2. To establish a ground of opposition under section 60 an opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

3. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion. Such a finding has not been found in this matter; however, that is not necessarily fatal to the section 60 ground.

4. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102 by Kenny J at paragraph 81:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

5. Further, at 127, Kenny J said:

   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.

6. In the Albinger declaration, at [6], the declarant states that the common essential word element throughout all of its registrations listed above is the word RIGHT in connection with Class 35 services. It declares that the word RIGHT has become associated with and synonymous to the Opponent and its services.

7. Exhibit SA-13 of the Albinger declaration contains copies of media reports referring to the Opponent and its services. It establishes the notoriety of the Opponent’s family of trade marks in Australia and worldwide.

8. Exhibit SA-14 and [24] of the Albinger declaration shows that RIGHT MANAGEMENT was a finalist for the Australian 2014 HR awards.

9. Confidential Exhibit SA-6 lists substantial revenue and annual sales figures in respect of the Opponent’s recruitment, career transition and organizational consulting services provided under its family of RIGHT trade marks in Australia for the years 2009 to 2014.

10. Paragraph 25 of the Albinger declaration and Confidential Exhibit SA-15 list the Opponent’s top 20 clients in Australia that include some of the largest companies in Australia. Paragraph 26 lists a number of Australian Federal, State and local government departments that have used the Opponent’s services under the RIGHT family of marks.

11. The totality of the evidence demonstrates that the Opponent would be mainly identified by its RIGHT MANAGEMENT trade marks, but also by its use of RIGHT as a subordinate mark in both in combination with other elements or by itself.

12. The Applicant has not filed any evidence to contradict that of the Opponent. However, in its submissions, the Applicant has stated that, unlike the Opponent, its business did not involve human resources services, and its business was limited to SAP (Systems, Applications, Products) in enterprise resource planning (ERP) while the Opponent did not.

13. Notwithstanding the Applicant’s submissions regarding the differences in its particular services, I cannot ignore that its applied for services are effectively identical to those of the Opponent. Registration of the Trade Mark would allow it to be used in the same business channels as those of the Opponent. I must take this notional use into account.

14. I am satisfied that the Opponent has established a significant reputation of its services under its RIGHT MANAGEMENT trade marks in business consultancy, recruitment and employment services.

15. I am satisfied that because of this reputation under its RIGHT MANAGEMENT trade marks including the word RIGHT, relevant consumers would associate such services under a trademark incorporating RIGHT would consider it part of the Opponent’s RIGHT MANAGEMENT marks.

16. Accordingly, I am satisfied on the balance of probabilities that there is a reasonable likelihood that the relevant consumers on seeing the Trade Mark would be caused to wonder if there is some connection between Applicant’s services and those offered by the Opponent. Consequently, I am satisfied that this ground of opposition has been established.

    Decision

    28. I have found the Opponent has established the ground of opposition it raised pursuant to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

    Costs

    29.     The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    5 April 2017