Ananda Marga Pracaraka Samgha Ltd v Amurt Inc

[2016] ATMO 72

TRADE MARKS ACT 1995

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

Re:Opposition by Ananda Marga Pracaraka Samgha Ltd to registration of trade mark application 1524272 – AMURT ANANDA MARGA UNIVERSAL RELIEF TEAM with device - in the name of Amurt Inc.

Delegate:	Bianca Irgang
Representation:	Opponent: Melissa Marcus of Counsel instructed by Watermark Patent and Trade Mark Attorneys Applicant: Written submissions
Decision:	2016 ATMO 72 Section 52 opposition: sections 44, 42(b) and 60 pressed – s 60 established – registration refused.

Background

1. Amurt Inc. (‘the applicant’), filed trade mark application number 1524272 on 6 November 2012 in class 35 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (the ‘Trade Mark’)

   Trade mark application no: 1524272

   Filing Date:  6 November 2012

   Specification:  Class 35: Association services being the promotion of the interests of members of the association; arranging exhibitions for business purposes; conducting exhibitions for business purposes; sponsorship search; document preparation; presentation of goods on communication media, for retail purposes

   Endorsements:  The applicant has advised that the English translation of the Sanskrit words ANANDA MARGA appearing in the trade mark is PATH OF BLISS

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks on 29 May 2014. Subsequently Ananda Marga Pracaraka Samgha Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 4 July 2016. The opponent was represented by Ms Melissa Marcus of Counsel instructed by Watermark Patent and Trade Mark Attorneys. The applicant was not present at the hearing but did provide written submissions for consideration.

   Grounds of Opposition

5. The Notice nominated four grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Only those grounds being under ss 42, 44, and 60 were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.[2] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks.[3] Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [3] [2009] FCA 891, [22]-[27] (2009) 82 IPR 13. See also; Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300, [36] - [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011), [16] to [32])

   Evidence

6. The evidence in this matter consists of the following declarations being:

   Evidence in Support

   ·Declaration of Colm Largey ( ‘Largey 1’) dated 24 December 2014 with Appendix 1 to 10

   Evidence in Answer

   ·Declaration of Dieter Dambiec dated 23 May 2015 with Annexure DD-01 to DD-19 (the “Dambiec declaration”)

   Evidence in Reply

   ·Declaration of Colm Largey ( ‘Largey 2’) dated 17 August 2015 with Annexure CL 1 to CL7

7. In this case I believe it is appropriate to provide a brief summary of the information included in the evidence before me. Largey 1 explains that Ananda Marga is a philosophy and an organization established to promote that philosophy. The philosophy and organization were devised and overseen by the Indian philosopher and social activist Prabhat Ranjan Sarkar during his lifetime. According to Mr Largey, the organization was formed in 1955 and registered in 1964 in India as Ananda Marga Pracaraka Samgha (‘AMPS’) under the West Bengal Societies Act, 1961. By 1990 the organization had over 40 departments which were each responsible for a particular area of service. The Ananda Marga Universal Relief Team (‘AMURT’) is one of these departments and it was established in 1965 in India. The Largey 1 declaration states that AMURT is now a world-wide organization focusing on disaster relief, development and education and that the Australian branch of AMURT, AMURT Ltd., was established in 1986[4] and Largey 2 provides additional information to support this.

   [4] Appendix 2.1 accompanying Largey 1 declaration.

8. AMURT Ltd. is subordinate to the opponent as is specified in a letter dated 9 June 1999 from the General Secretary of AMPS to the Registrar of Trade Marks in IP Australia as part of the process of registering its Ananda Marga trade mark no. 769828.  Further, appendix 2.1 accompanying the Largey 1 declaration contains a letter from Peter Sage, the Coordinator of the global AMURT organization/department of AMPS, in which he attests to AMURT Ltd.’s investment in and ownership of the Ananda Marga trade mark in Australia.

9. I note that the applicant’s evidence which consists of the Dambiec declaration is critical of the above information and questions the validity of the claims made in the letters and in the Largey 1 declaration. Mr Dambiec also points to other entities in Australia using the name Ananda Marga and asserts that these entities were using the expression Anada Marga without any connection to the opponent or to the AMPS and that these entities existed well before the opponent. Mr Dambiec’s main concern appears to be in establishing that anyone can use the name Ananda Marga and that the opponent has never exercised or is capable of exercising any authorizations or control of the name Ananda Marga nor does it have any standing to do so in Mr Dambiec’s opinion. Largey 2 directly addresses the criticisms in the Dambiec declaration and provides additional evidence in its accompanying annexures to support its claims.

10. The history between the opponent and the applicant (or rather the members of the committee of the applicant) is long-running and contentious. There have been a number of court proceedings in India and Australia which have addressed some of the issues between the parties. In particular I note the judgment of the Australian Federal Court in the matter Ananda Marga Pracaraka Samgha Ltd v Tomar (No 6) [2013] FCA 284[5] which supports and confirms much of the information provided by Mr Largey and of which Mr Dambiec was an unsuccessful defendant.  

    Discussion

    [5] That judgment refers, inter alia, to:

    Section 60 - Reputation in Australia

11. Section 60 of the Act provides:

    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.

12. To establish the ground of opposition under section 60, the opponent must demonstrate:

    ØThat, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

    ØThat because of the reputation of that other trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

13. The applicant has argued that there is no overlap in the services and that “the opponent could not use its trade mark registration no. 769828 and apply it to charitable services and so could not promote or provide charitable services using that registered trade mark. This means Trade mark No: 769828 could not possibly have acquired a reputation in the field of charitable services in Australia, as the trade mark is not registered for charitable services”. However, section 60 does not require that the services upon which the opponent uses its trade mark be of a specified standard of similarity with the claimed specification of services to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar.

14. It is now for me to determine if the opponent’s trade mark has acquired a reputation in Australia which is sufficient to establish that use of the opposed trade mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”[6] to such a degree that confusion is likely.

    [6] Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

15. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

    In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

    At 129 Justice Kenny continues:

    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: …

16. To this end the opponent has produced a number of exhibits including a letter from the opponent in response to a charity request from parties in the Solomon Islands in 1992 which shows that the opponent was operating under the name AMURT and using its trade mark the representation of which follows (Appendix 7):

17. However, this letter does not demonstrate exactly in connection with what services or how the opponent was using its trade mark in Australia. Of much more assistance in this matter is an ABHA Memorial Hospital bulletin dated 1994 which establishes that since at least that time the opponent has been operating in Australia under the name AMURT and the above trade mark.

18. The a/n AMURT News article from its first newsletter dated July 1997 provides additional information demonstrating the opponent’s continued fundraising and engagement in charity work in Australia. The opponent included a number of dated documents including letters to ASIC (Appendix 7.2), requests for funds and/or sponsorship to Australian individuals and businesses, updates and news on charitable causes it supported, catalogues for sale of clothing to support its charitable endeavours and articles from The Australian Workers’ Union website reporting on the charitable and fundraising activities the opponent had engaged in which demonstrate that the opponent has used the above trade mark extensively in its fundraising activities in Australia over the course of around 20 years.

19. While the opponent has characterised itself as a ‘grass roots organization’ who maximizes its resources, it is also clear from the evidence provided that the opponent has engaged in significant and continuous activities to raise awareness for their various causes. Indeed, the financial figures provided by the opponent are not particularly large but I note that the opponent accepts donations in the form of labour, time and goods which are not represented in financial statements and bank account statements. However, the broad range of supporters and donations (in their various forms) listed as well as the very broad and eclectic range of publications the opponent has appeared in over the years indicates a pervasive reputation for its charitable and fundraising services within Australia and more broadly, across the world. 

20. I am satisfied that the opponent’s AMURT trade mark had acquired a significant reputation in Australia before the priority date of the opposed Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the applicant’s Trade Mark would be likely to deceive or cause confusion.

21. Overall I consider that, given the reputation acquired by the opponent’s AMURT trade mark, a significant number of consumers would at the very least experience a reasonable doubt[7] as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s Trade Mark if it were used to the extent of all of the services listed in the opposed application. In considering the similarities between opponent’s AMURT trade mark and the applicant’s Trade Mark it becomes clear that the respective trade marks are substantially identical.

    [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Opponent’s trade mark Applicant’s Trade Mark

1. While section 60 does not require a finding of substantial identity between the trade marks, this complete impression of similarity between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia adds to the likelihood of confusion taking place in the marketplace.

2. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

3. Section 55 of the Act provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, 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:          Forlimitationssee section 6.

4. I find that the opponent has met the onus upon it, in terms of the ground of opposition under s 60. Accordingly I refuse to register trade mark application no. 1524272.

   Costs

5. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Trade Marks Hearings

   15 September 2016

   
   

Ananda Marga Pracaraka Samgha (ACN 003 193 897) v Tomar [2010] FCA 565
Ananda Marga Pracaraka Samgha Ltd v Tomar (No 2) [2010] FCA 1342
Ananda Marga Pracaraka Samghad v Tomar (No 4) [2012] FCA 385
Ananda Marga Pracaraka Samgha v Tomar (No 5) [2012] FCA 390

and to one of the Indian judgments cited by the applicant being Ananda Marga Pracaraka Samgha & Ors v Acarya Raghunath Prasad & Ors (Unreported, Court of the Civil Judge (Senior Division) Purulia, West Bengal Title Suit No 305 of 2003, 18 March 2006). It also cites the West Bengal Societies Registration Act 1961 (India).