Small & Associates Pty Ltd v Robert Half Incorporated

This matter concerned an application by Small & Associates Pty Ltd for the removal of the registered trade mark "ACCOUNTEMPS" (No. 329727) from the Register, held by Robert Half Incorporated. The application was brought under section 23 of the *Trade Marks Act 1955* (Cth), on the grounds that the trade mark was registered without a good faith intention to use it, and that there had been no good faith use of the mark for a continuous period of at least three years prior to the application for removal. Robert Half Incorporated opposed the removal, asserting that the trade mark had been used in good faith and that any non-use was due to special circumstances. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether Small & Associates Pty Ltd was a "person aggrieved" by the registration of the trade mark, whether the trade mark had been registered without a good faith intention for use, and whether there had been no good faith use of the trade mark for the requisite three-year period. The delegate also considered whether any failure to use the mark was occasioned by special circumstances, and whether the Registrar should exercise discretion to refuse removal.

The delegate found that Small & Associates Pty Ltd was a person aggrieved, as the existence of the registered mark had been cited as an objection to its own application to register a similar mark. Regarding the ground of non-use, the delegate accepted that the evidence provided by Small & Associates Pty Ltd, consisting of declarations from individuals in the employment agency industry across several Australian states, constituted prima facie evidence of non-use. This prima facie case was not rebutted by the evidence from Robert Half Incorporated, which included advertisements placed outside the relevant three-year period and a lack of resulting enquiries or placements. However, the delegate found that Small & Associates Pty Ltd had failed to prove a lack of good faith intention at the time of registration, stating that non-use alone was insufficient to infer a lack of bona fides. No submissions were made regarding special circumstances for non-use or why the Registrar's discretion should favour Robert Half Incorporated.

Ultimately, the delegate found that Small & Associates Pty Ltd had succeeded on the ground of non-use for the statutory period. Consequently, the delegate directed that registered trade mark No. 329727 be removed from the Register in respect of "employment agency services" and awarded costs to the applicant.