Small & Associates Pty Ltd v Robert Half Incorporated

[1991] ATMO 44

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by ROBERT HALF INCORPORATED to Section 23 Application by SMALL & ASSOCIATES PTY LTD.

Trade mark No. 329727 is registered in the name of ROBERT HALF INCORPORATED, a corporation organized under the laws of the State of Florida, of 11 Pine Street, Suite 1500 San Francisco, California, USA ("the opponent") as from 6 March 1979.  The mark consists of the word ACCOUNTEMPS and it is registered in respect of "employment agency services".  On 10 February 1989 an application for the removal of the mark pursuant to s.23 of the Act was lodged in the name of SMALL & ASSOCIATES PTY LTD of 39 York Street, Sydney ("the applicant").  The grounds on which the application was made were those specified in s.23(1), that is:

1. That the Trade Mark was registered without an intention in good faith on the part of the Applicant for registration that it should be used in relation to those goods or services by him, and that there has, in fact, been no use in good faith of the Trade Mark in relation to those goods or services by the Registered Proprietor or any Registered User.

1. Up to one month before the date of this application a continuous period of not less than three years has elapsed  during which the Trade Mark was a registered Trade Mark and during which there was no use in good faith of the Trade Mark in relation to those goods or services by the Registered Proprietor or any Registered User of the Trade Mark.

   On 3 April 1990 the opponent lodged notice of opposition to the application for removal of its registered trade mark.  The grounds set out in the notice were as follows:

(i)The opponent denies that up to one month before the date of the application, a continuous period of not less than three years had elapsed during which there was no use in

good faith of the trade mark in relation to the services in respect of which it is registered by the Registered Proprietor of the trade mark.

1. The opponent denies that the trade mark was registered without an intention in good faith on its part that it should be used in relation to the services for which it is registered by the opponent, and that up to one month before the filing of the application for removal, there had in fact been no use in good faith of the trade mark in relation to those services by the registered proprietor.

1. The applicant is not a person aggrieved by the registration of Registered Trade Mark No. A329727.

1. Any failure to use the trade mark was occasioned by special circumstances in the trade as contemplated by Section 23(4) of the Trade Marks Act 1955.

(v)The Registrar should, in his discretion, refuse to remove the trade mark.

Service of the applicant's evidence in support of the application was completed on 17 July 1990.  It consisted of statutory declarations by GORDON ROSS FISHER, LAWRENCE JUDE JONES, ERIC GEORGE WHATLEY, JAMES MALCOLM RITCHIE and ROGER HILTON WILLIAMS.  The opponent's evidence in answer was served on the applicant on 8 November 1990.  It comprised a declaration by MAX THELEN III together with Exhibits A and B.  The applicant advised that it did not intend to reply and requested a hearing.  The matter came on before me in Sydney on 6 March 1991.  The applicant was represented by Ms Gail Hill of F.B. Rice & Co, patent attorneys, and the opponent by Ms Catherine Chant of Arthur S. Cave & Co, patent attorneys.
          Ms Hill opened by pointing out that the relevant three year period for the purposes of s.23(1)(b) was 10 January 1986 to 10 January 1989.  She then addressed the preliminary question of whether the s.23 applicant was a "person aggrieved" as required by that provision.  She noted that the applicant had applied to register the word ACCOUNTEMPS in respect of "the employment of accounting staff on a temporary basis" under application No. 495685.  The opponent's registered mark now in suit was cited as an objection to registration in the first examiner's report issued 3 November 1988.  Hence, submitted Ms Hill, the applicant was clearly a person aggrieved by the registration : Ritz Hotel Ltd v Charles of The Ritz Ltd (1988) 12 IPR 417 at 454.
          With regard to s.23(1)(a) Ms Hill submitted that the fact that there was no evidence of use of the mark by the opponent in Australia throughout the period 6 March 1979 and 10 January 1989 must cast doubt on the opponent's intention to use the mark as at the date of application 6 March 1979.  She referred me to Ducker's Trade Mark (1928) 45 RPC 397 at 402 where it was said:

"I agree that the goods need not be in being at the moment, and that there is futurity indicated in the definition; but the mark is to be a mark which is to be definitely used or in respect of which there is a resolve to use it in the immediate future upon or in connection with goods.  I think that the words "proposed to be used" mean a real intention to use, not a mere problematical  intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered."

She conceded that the onus lay on the applicant to prove an absence of bona fides but submitted that in view of the subjective nature of intention that burden must be a light one.
          With regard to the evidence lodged in support of the application Ms Hill referred me to the well known passage in Estex Clothing Manufactuers Pty Limited v Ellis and Goldstein (1966) 116 CLR 254 at 258-9 per Windeyer J:

"It is for an applicant who seeks to have a mark removed to prove his case.  The onus is on him to show an absence of use in good faith during the period.  If persons who, by reason of their connexion with the relevant trade, might be expected to have seen or heard of the mark if it were used as a trade mark upon goods for which it is registered, swear that they had not seen or heard of it in use as a trade mark at any time during the relevant period, that is prima facie evidence of the fact which the applicant must prove.  Slight evidence may suffice at this stage, for the applicant has the task of proving a negative and the registered proprietor is probably in a better position to prove user than is the applicant to prove non-user.  But if evidence be given for the respondent to controvert the applicant's prima facie case, then when all the evidence is complete the question is still, has the applicant proved his case?  I do not for a moment accept the proposition of the applicant in these present proceedings that the ultimate burden of proving its case does not rest upon it."

Ms Hill submitted that the evidence lodged by the applicant though it may be liable to criticism because of its questionnaire form nevertheless was of the sort referred to in the Estex case and was sufficient to make out a prima facie case of non-use and that there was nothing in the opponent's evidence to rebut that case.  She further submitted that the opponent had not sought to raise any defence as provided for by s.23 nor shown any circumstances which would justify the exercise of the Registrar's discretion in its favour.
          Ms Chant did not dispute that the applicant was a person aggrieved by the registration of the opponent's mark but contended that the evidence of the applicant was not sufficient to make out a prima facie case of non-use.  She pointed out that there were 13 pages of entries for personnel agencies in the telephone directory Yellow Pages but that the applicant had submitted only five declarations and those not for the whole of Australia.  The experience of the declarants was insufficiently long and the evidence did not show positively that there was no use of the mark during the relevant period.  She argued that the opponent was not obliged to prove use of the mark unless the applicant had made out a prima facie case and this it had not done.
          I turn therefore to consider the evidence.  As I have said the applicant's evidence in support consists of 5 declarations one from each of Victoria, New South Wales, Queensland, Australian Capital Territory and Western Australia.  The declarations are in questionnaire form and are identical, each declarant being asked the following questions:

1. What is the name and address of your firm or company?

1. What is your position in that firm or company?

1. What is the nature of its business?

1. Do you consider the business of your firm or company to be related to the industry of employment agencies, recruitment or placement of personnel services?

1. Have you been personally involved in the industry of employment agencies, recruitment or placement of personnel services since at least 10 January 1986 and continuously during the period 10 January 1986 to 10 January 1989?      

1. Do you consider that you are reasonably well informed in aspects of the industry of employment agencies, recruitment or placement of personnel services and, in particular that you are familiar with the trade marks of persons involved in the provision of such services?

1. Do you know of the use in Australia of the Trade Mark "ACCOUNTEMPS" by Robert Half, Inc. of 111 Pine Street, Suite 1500, San Francisco, California, United States of America at any time during the period of 10 January 1986 to 10 January 1989 in respect of:

"Employment agency services"

1. Do you believe that by virtue of your position and your experience in the industry of emplpoyment agencies, recruitment or placlement of personnel services your are a person who would have seen or heard of the trade mark "ACCOUNTEMPS" if it had been used as a trade mark in connection with "employment agency services" in the period 10 January 1986 to 10 January 1989?

All of the respondents answered as representatives of businesses variously described as "personnel consultancy", "employment agency" or "personnel recruitment".  Four described themselves as "director" or "managing director" of their companies and one as the owner and principal of his firm.  It follows, of course, that all answered question 4 in the affirmative.  All also answered "Yes" to question 5 although as pointed out by Ms Chant the total length of experience of the respondents in the industry was not elicited.  As is to be expected all respondents answered "Yes" to question 6.  All respondents answered "No" to question 7 and "Yes" to question 8.  As I have already said Ms Chant criticized the evidence as being only a small sample not from the whole of Australia which does not establish the length of experience of the respondents.  Nevertheless all the declarations are from persons of standing in the relevant industry during the period in question who would be expected to have known of the use of the mark if it had in fact been used.  That is the sort of evidence, though slight, which windeyer J said in the Estex case (supra) is prima facie evidence of the facts which the applicant must prove.
          The opponent's evidence in answer consists of a declaration by Max Thelen III, vice president of the opponent.  Mr Thelen states that his company caused to be placed in the Melbourne "Age" newspaper in March 1989 advertisements relating to the supply of his company's services in Australia under its trade mark ACCOUNTEMPS.  These advertisements were placed on 18, 23 and 29 March 1989.  Mr Thelen goes on to say that no enquiries were received from the trade or public and no placements were made.  Furthermore, he says that his company has been actively seeking an appropriate franchisee to be recorded as a registered user of the mark so far without success.  It has never been the company's intention to abandon registration No. 329727.  No further evidence of the use of the mark is adduced.
          The use of the mark by the opponent according to its own evidence falls outside the relevant three year period for the purposes of s.23(1)(b).  As I have found that the applicant has made out a prima facie case of non-use which has not therefore been rebutted by the opponent it follows that the applicant succeeds in terms of s.23(1)(b).
          With regard to s.23(1)(a) I find that the applicant has failed to prove a lack of bona fides on the part of the opponent.  I am not prepared to draw such an inference from the mere fact of non-use.
          No submissions were made as to special circumstances in the trade which would account for the failure to use the mark and no reasons were advanced by the opponent why the Registrar's discretion should be exercised in its favour.
          In the result I find that the applicant succeeds and in the absence of any appeal from this decision I direct that registered trade mark No. 329727 be removed from the Register in respect of "employment agency services".
          The applicant having been successful is entitled to its costs and I so award them.

(M.A. HOMANN)
Hearing Officer
20 June 1991