Americana Leadership College Pty Ltd v Estate of Francisco Coll Monge, Francisco D. Coll Executor

[2010] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by Americana Leadership College Pty Limited to registration of trade mark application nos. 1214227 (41) - DR FRANCISCO COLL and 1238606 - "STICK FIGURE" Device  (41, 45) filed in the name of the Estate of Francisco Coll Monge, Francisco D. Coll Executor.

Delegate:

Heath Wilson

Representation:

Decision on the Written Record.

Decision:

2010 ATMO 107

Section 52 of the Trade Marks Act 1995 – No. 1214227: sections 41, 42(b), 59 and 62A pressed – s41(5) established. No. 1238606: sections 42(b), 58 and 62A pressed - s58 established – Opposition successful and trade mark applications refused registration – costs awarded against applicant.

Background

1.     In a prior decision of a delegate of the Registrar regarding oppositions to trade mark application nos. 1045722 and 1045725,[1] particular reference was made to the history of intellectual property disputes between the Estate of Francisco Coll Monge, Francisco D. Coll Executor (“the applicant”) and Americana Leadership College Pty Limited (“the opponent”). For the purposes of the current opposition, it will suffice to say that the ownership disputes have arisen following the death of Dr Francisco Coll, the founder of particular religious/spiritual teachings and services originating in the United States. Most of the disputed trade marks between the parties have been applied for in relation to the religious teachings in the U.S. and Australia, including the trade marks that are the subject of this opposition. The issue is predominantly which trader has demonstrated ownership in Australia of those trade marks.

[1] Executor of the Estate of Francisco D Coll Monge v Inner Peace Movement Pty Ltd; Peace Community Church Pty Ltd [2010] ATMO 98 (29 September 2010)

2.     On 7 December 2007, the applicant applied to register the word trade mark “Dr. FRANCISCO COLL” (no. 1214227) for the following services:

Class: 41 Educational services; arranging and conducting of lectures, workshops, conferences, personal development courses, consulting courses, classes, seminars and training programs which include individual and group meditation, energy dynamics techniques, leadership dynamics techniques, discernment and decision techniques in relation to self understanding, personal direction, loyalty to self, life purpose, spiritual health, healing concepts, personal effectiveness, reincarnation, energy dynamics, leadership dynamics, spiritual leadership, motives, glandular energy centers, the four psychic and spiritual types of perception, inner communications and guidance, as well as personal, business and social tendencies in different environments, especially in different zones of energy and consciousness; publication of educational and training materials for use in lectures, workshops, conferences, courses, seminars and training programs relating to self understanding, personal direction, personal loyalties, life purpose, motives, spiritual leadership, healing, directing energy, four zones of energy and consciousness, inner communications and guidance, self confidence, glandular energy centers, the four psychic and spiritual types of perception; consulting services related to education; the production of audio and/or video; dissemination of educational material; correspondence courses; the publishing of educational materials online

3.     Subsequently, on 6 May 2008, the applicant also applied to register trade mark no. 1238606 (“Stick-figure device”), details of which are as follows:

Class: 41 Educational services; practical training (demonstration); mentoring (education and training); arranging and conducting of lectures, workshops, conferences, personal development courses, consulting courses, classes, seminars and training programs which include individual and group meditation, energy expansion techniques, aura reading, spiritual discernment and decision techniques in relation to effective leadership, effective living, practical metaphysics; self understanding, personal direction, personal loyalties, life purpose, spiritual health, healing concepts, personal effectiveness, reincarnation, spiritual leadership, motives, glandular energy centers, the psychic and spiritual gifts, inner communications and guidance, as well as personal, business and social tendencies in different environments, especially in different zones of energy and consciousness; religious and ministerial training; organization of youth training schemes; publication of educational and training materials for use in lectures, workshops, conferences, courses, seminars and training programs relating to effective leadership, effective living, practical metaphysics, self understanding, personal direction, personal loyalties, life purpose, motives, spiritual leadership, healing, directing energy, zones of energy and consciousness, inner communications and guidance, self confidence, glandular energy centers, the psychic and spiritual types of perception; consulting services related to education; consultancy services relating to training; lifestyle counselling and consultancy (training); the production of audio and/or video; dissemination of educational material; distribution of sound recordings and videos (other than transportation services); correspondence courses; the publishing of educational materials online; providing online electronic publications (not downloadable)

Class: 45 Charitable services, namely mentoring (personal or spiritual); counselling relating to spiritual direction; lifestyle counselling (spiritual); meditation services for spiritual purposes; mentoring (spiritual); spiritual advice; spiritual development; spiritual guidance; spiritual or religious counselling; spiritual recovery services; providing information, including online, about personal and social services meeting the needs of individuals; psychic consultancy; consultation relating to astrology, practical metaphysics, spiritual and psychic gifts, spiritual types of perception, inner communication and guidance, personal energy and chakras, effective decision-making, balance of intellect and feeling, spiritual compatibility, life purpose, concepts and energies affecting personal effectiveness; ministerial counselling; ministerial services (religious)

Evidence

Evidence in Support

·Statutory declaration of Stephen Gibbs (Director of the opponent) dated 14 May 2009 in relation to “Dr. FRANCISCO COLL” with attached exhibits SG1 - SG59 (“first Gibbs declaration”).

·Statutory declaration of Stephen Gibbs dated 4 June 2009 in relation to the “Stick-figure device” with attached exhibits SG1 – SG39 (“second Gibbs declaration”).

4.     The applicant has not provided any evidence in answer to the nominated opposition grounds, nor has it provided any written submissions in support of the trade mark applications.  

Onus and Reasons

5. In the respective notices of opposition, the opponent listed all possible grounds, but has only pressed those under sections 41, 42(b), 59 and 62A of the Trade Marks Act 1995 (“the Act”) for the Dr. FRANCISCO COLL trade mark. In addition, sections 42(b), 58 and 62A were the only grounds pressed in relation to the “Stick-figure device” trade mark. I will proceed on the basis that the opponent bears the onus of establishing one of the nominated grounds of opposition, on the balance of probabilities.[2] As they have not been pursued, I find that the remaining grounds of opposition nominated in the respective notices have not been established by the opponent.

[2] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]

6.     Neither party requested a hearing for the above opposition matters. As a delegate of the Registrar of Trade Marks I will therefore determine these matters on the material comprising the written record, details of which have been set out above.    

“Dr Francisco Coll”

Section 41: Trade mark not distinguishing applicant’s goods or services

7.     The well established test for the inherent adaptability of a trade mark to distinguish its goods was set out by Justice Kitto in F.H. Faulding & Son Ltd[3] as follows:

The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

[3] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 [at 555]

8. The opponent declares that the applicant’s trade mark Dr. FRANCISCO COLL is not inherently capable of distinguishing the educational, training and publication services covered in the application from those of other traders. Since the applicant has not provided any evidence in answer that the trade mark can or will distinguish these particular services, if the opponent can establish that the name ‘Dr. Francisco Coll’ is incapable of distinguishing the claimed services, or has only a limited capacity to do so, section 41 will be established on the balance of probabilities.

9. The opponent’s evidence shows that the opponent and the related Australian companies Inner Peace Movement Pty Ltd and Peace Community Church Pty Ltd would all desire to use the trade mark “Dr. Francisco Coll” in relation to providing their own religious and educational services. However, this fact would not be sufficient by itself to satisfy me that sections 41(5) or 41(6) were applicable. The question is a broader one of whether the name of “Dr. Francisco Coll” is one that other traders operating in the same field of business as the applicant would ordinarily need to use.

10.   In 1964, Dr. Coll founded the Inner Peace Movement (and incorporated the associated American company) in the United States. The opponent’s evidence indicates that some years later “Americana Leadership College Pty Ltd was incorporated in Australia in 1977” and provided “people with the tools for conducting educational programs, which are based on Dr. Coll’s methods and teachings.”[4] I also note that Dr. Francisco Coll was one of the previous directors of the opponent until July 1997.[5] Educational and spiritual programs based on Dr. Coll’s teaching methods now operate in Australia, New Zealand, Canada and the United Kingdom.

[4] First Gibbs declaration, paragraphs 16-17.

[5] First Gibbs declaration, Exhibit SG-1.

11.   According to the opponent, 6000 participants and 300 instructors/consultants are now involved with these specific religious education courses in Australia. The courses have taken place across all Australian states and have been advertised via local radio, newspapers, camp brochures and a monthly magazine, all specifically referring to “Dr Francisco Coll.” The consultants who conduct the courses utilise the teaching methods developed by Dr. Coll and refer to him throughout their teachings, with the result that the course participants are clearly made aware of the name. This contributes to the recognition of the name as one that other traders in the relevant industry would need to use in the ordinary course of their trade.

12.   While the opponent specifically relies upon the desire by the opponent and its related companies to use the name “Dr. Francisco Coll” in the ordinary course of trade for the services, the registrability of a person’s name as a trade mark depends on whether the “mark” is capable of distinguishing services from those of other traders. “Dr. Francisco Coll” is unlikely to be a common name in Australia, and the determinative issue is whether he is sufficiently well-known for having an association with educational services.

13.   While I am of the view that the opponent’s evidence is not sufficient to demonstrate a reputation in the name “Dr Francisco Coll” for educational services and arranging lectures or seminars in general, all goods and services within the application’s specification must be considered. The “question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.”[6] Due to the broad nature of the applicant’s claimed educational services, the applicant could provide seminars about Dr. Coll himself rather than his religious teachings. The consideration of all the applicant’s claimed services is therefore relevant for determining the outcome of section 41.

[6] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [50].

14.   The name “Dr Francisco Coll” is not sufficiently famous for the trade mark to lack any inherent capacity to distinguish the applicant’s claimed services, but his name would be known within a group in the Australian community for the specific religious and spiritual educational services claimed (e.g. “spiritual leadership, the four psychic and spiritual types of perceptions” and materials relating to those services). The opponent’s evidence demonstrates that Dr Francisco Coll is well-known for these quite specialised forms of religious education techniques encompassed within the services of class 41 of the opposed application.

15. As I am unable to determine the extent of the trade mark’s inherent adaptation to distinguish its services, the failure of the applicant to file evidence in these proceedings under section 41 becomes a relevant factor. The applicant has not provided any answer to the opponent’s evidence. As a result, I cannot be satisfied that the trade mark does or will have the capacity to distinguish the services of the applicant in the future. Based on the evidence before me, other traders in specific fields of religious education would desire to use the name “Dr. Francisco Coll” in the ordinary course of trade in Australia.

16. On the balance of probabilities, the opponent’s evidence has satisfied me that the trade mark “Dr. Francisco Coll” is only to a limited extent inherently adapted to distinguish specific services in class 41, and I am not satisfied that it is capable of distinguishing under section 41(5) of the Act. Therefore, I find that the ground of opposition under section 41 has been established in respect of application no. 1214227.

Section 59: 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.

17.   An application for the registration of a trade mark creates the prima facie case that the applicant has the intention to use the trade mark as applied for, in relation to the claimed services. This presumption is rebuttable, however, if the opponent can produce evidence sufficient to shift the onus to the applicant who must then establish its intention to use the trade mark. The lack of intention to use a trade mark cannot be inferred solely from a lack of evidence indicating actual use. Neither can the opponent shift the onus by merely questioning the applicant’s intention in written submissions.

18.   With regard only to the “Dr. Francisco Coll” trade mark, the opponent has submitted that the applicant did not intend to use or authorise the use of that trade mark. The opponent has included the evidence from previous disputes in relation to the trade marks ‘Americana Leadership College’, ‘ALC’, ‘Inner Peace Movement’ and ‘Peace Community Church’ and particularly, the statutory declaration of Dwight Fehlmann in opposing the New Zealand application for ‘Inner Peace Movement’.  

19.   Arising from this evidence is the implication that the applicant has filed this trade mark in order simply to frustrate the opponent’s business activities. In addition, I consider it unlikely that the applicant intends to use the name of Dr. Francisco Coll as a trade mark rather than as a description of the founder. Having said that, I still find that the above implications and impressions are insufficient to satisfy me that the onus has shifted to the applicant to establish its intention. 

20. Despite the above allegation of a lack of intention to use the trade mark “Dr Francisco Coll”, I am not satisfied that the opponent has discharged its onus or shifted it to the applicant to outline the intention to use the trade mark. As a result, I find that the ground of opposition under section 59 of the Act has not been established.

“Stick-figure Device”

Section 58: Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

21. Section 58 has been specifically pressed by the opponent only in relation to the “Stick-figure” device (application no. 1238606). The opponent attests that this device was first used in Australia by the opponent in 1977[7] in relation to the services. Some examples of evidence supporting this statement include an identical (or substantially identical) “Stick-figure” device appearing on office letterheads (used since mid 1990s), on order forms for the opponent’s religious/educational courses (from around 2000), and also on course brochures from the years 1984 and 1995.   

[7] Second Gibbs declaration, paragraph 30.

22.   It is well established that the first person to apply to register a trade mark will (in most cases) be entitled to claim to be the owner. The exception to this is if the trade mark has been used before the filing date (namely 6 May 2008). In that case, and in the absence of fraud, the owner of a trade mark in Australia for particular goods or services is taken to be the first person to use it (“first user”) in the course of trade in Australia in relation to those goods or services. The first user need not have invented or first thought of the trade mark,[8] but has been the first to adopt the mark for a trade mark in Australia.

[8] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 [at 399] per Fullagar J.

23.   The Americana Leadership College, Inc was incorporated in the U.S. on 15 October 1977, and the opponent declares that “all US trade marks and copyright relating to the US operations were registered by Dr Coll in the name of Alley Copyrights.”[9] The evidence does indicate some overlap in use by the American company and the Australian company. Some of the Australian examples provided by the opponent are used in conjunction with references to the U.S. company Americana Leadership College, Inc. A letter dated 2 August 1993 featuring the device appears under the letterhead of “Americana Leadership College, Inc., Ltd., Pty” and is signed by Dr. Francisco in his capacity as the President of Americana Leadership College, Inc.[10] However, the examples of use in the United States are of little assistance in determining the earliest use of the trade mark in Australia.

[9] First Gibbs declaration, paragraph 14.

[10] Exhibit SG-19.

24.   The opponent’s handbooks featuring the “Stick-figure” device were published by the U.S. company in 1983, but it is not clear when they were actually distributed to Australian consumers. The course brochures from 1984 contain contact details for the opponent in Australia, and the camp brochures[11] dated from 1978 also feature use of the device in Australia on similar services before the applicant’s priority date. There is no indication that the trade mark, as used in Australia, was personally owned by Dr. Francisco Coll (or the applicant). In any event, the applicant has not provided any evidence in answer to refute the above examples of prior use of the trade mark, or provide instances of earlier trade mark use.

[11] Exhibit SG-14.

“Same Kind of Thing”

25. To establish section 58, the services in respect of which the opponent’s trade mark has been used must be considered as the “same kind of thing”[12] as those claimed in the specification of the opposed application.

[12] Re Hicks’ Trade Mark (1897) 22 VLR 636.

26.   The opponent demonstrates that it has been offering religious and educational services and training programs for the Australian public. From the course descriptions in the brochures, the nature of the courses encompasses services such as consultations regarding spiritual guidance and lifestyle counselling. The “Stick-figure” appears on those brochures and is usually accompanied by the opponent’s other related trade marks. Additionally, I find that the particular services provided by the opponent are the “same kind of thing” as the religious/spiritual and charitable services claimed in class 45 of the opposed application.

27. Consequently, I am satisfied that a substantially identical trade mark was used in Australia by a trader other than the applicant, before the priority date, on services which constitute the “same kind of thing” as the applicant’s claimed services. The ground of opposition under section 58 has been established in relation to trade mark application no. 1238606.

Section 62A: Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

28.   The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) indicates the purpose of section 62A, and outlines some of the non-exhaustive examples of instances that may constitute an application made in bad faith:

·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

29.   The opponent has alleged that both of these trade mark applications were made in bad faith but the trade mark applicant would only need to provide an answer to the ground of bad faith if the opponent established a prima facie case. To this end, the opponent makes particular reference to the disputes over the ownership of these trade marks in jurisdictions including the United States and Australia. The fact that the opponent has been successful over the applicant in some of these actions does not (in itself) point to bad faith, and neither does it require a response from the applicant.  

30.   The opponent also refers to the exhibited[13] statutory declaration of Dwight Fehlmann, a director of Inner Peace Movement Pty Ltd. This declaration was originally filed for an opposition to a New Zealand trade mark application for the trade mark “Inner Peace Movement” made by the applicant. While there appears to be a link with the executor of the estate, the undertakings made between the opponent and other Australian companies in the declaration did not extend to the trade marks which are the subject of this opposition.  

[13] First Gibbs declaration, Exhibit SG-4.

31. From the evidence supplied, I am not satisfied that the opponent has discharged the onus of establishing bad faith at the time of filing. On the balance of probabilities, I find that an inference of bad faith has not been made out, and the section 62A ground is not established.

Decision

Section 55: Decision

(1) 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.

Note:  For limitations see section 6.

32. As a ground of opposition has been established for each of the trade mark applications, I find it unnecessary to consider the remaining grounds of opposition nominated or pressed by the opponent. The grounds under sections 41 and 58 of the Act have been established in relation to trade mark application nos. 1214227 and 1238606 respectively. I therefore refuse to register these trade mark applications.

Costs

33.   The opponent has been successful in this matter and is therefore entitled to costs. I award costs against the applicant for both applications to the extent allowed under Schedule 8 of the Trade Mark Regulations 1995. 

Heath Wilson

Hearing Officer

Trade Marks Hearings

26 October 2010