Ananda Marga Pracaraka Samgha Ltd v Seva Darma Mission (Australia) Ltd - [2015] ATMO 96

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 application under section 92 of the Act by Seva Darma Mission (Australia) Ltd to remove trade mark number 769828(16, 41, 42) - ANANDA MARGA - in the name of Ananda Marga Pracaraka Samgha Ltd

Delegate:	Iain Campbell Thompson
Representation:	Removal Opponent: Melissa Marcus of Counsel instructed by Watermark Intellectual Asset Management Removal Applicant: Dieter Dambiec a director of the Removal Applicant
Decision:	2015 ATMO 96 S92 – Removal Opponent has established use in relation to the majority of Goods and Services; sections 87 and/or 88 ultra vires the Registrar’s power; exercise of Registrar’s discretion in relation to the balance of Goods and Services –exercise of the Registrar’s discretion. Trade Mark to remain on register for Goods and Services for which it is registered

Background

In this matter Seva Darma Mission (Australia) Ltd (‘the Removal Applicant’) applied on 26 September 2013 under paragraphs 92(4)(a) and (b) of the Trade Marks Act 1995 (‘the Act’) for the total removal from the Register of Trade Marks of the trade mark appearing below:

Registration No: 769929
Priority Date: 10 August 1998

Goods/Services: Class 16: Books, brochures, pamphlets, leaflets and other printed publications
Class 41: Religious and spiritual teaching, courses in yoga and meditation; organising of festivals, in particular in relation to religious and spiritual issues; providing health education; delivery of economic development and income generation programs, namely training classes in subjects related to farming, milling of seeds into oil or flour, grain storage, marketing farm products, sewing, handicrafts and small-scale manufacturing; training classes in the operation and management of cooperative enterprises including farms, handicraft manufacturing and small business merchandising; providing educational services in preschool, kindergarten, primary, secondary and tertiary levels
Class 42: Providing, conducting and arranging religious and spiritual services and ceremonies; food catering; disaster relief and community development activities, including emergency relief, administration of medical services; orphanage services; farming and reforestation services
(‘the Goods and Services’)

Trade Mark: ANANDA MARGA
(‘the Trade Mark’)

Endorsements: The applicant has advised that the translation of the SANSKRIT words ANANDA MARGA appearing in the trade mark is PATH OF INFINITE HAPPINESS or PATH OF BLISS.
Provisions of subsection 41(5) applied.

On 5 December 2013, the owner of the Trade Mark, Ananda Marga Pracaraka Samgha Ltd (‘the Removal Opponent’) filed Notice of Intention to Oppose the removal and on 23 December 2013 filed its Statement of Grounds and Particulars (‘the SGP’). The SGP alleges:
That, on the day on which the application for registration of the trade mark was filed, the [Removal Opponent] did have an intention in good faith
(i) to use the trade mark in Australia; or
(ii) to authorise the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods/services to which the non-use application relates.

Particulars

(a) On the day on which the application for registration of the trade mark was filed, the [Removal Opponent] had an intention in good faith to use the trade mark in Australia or to authorise the use of the trade mark in Australia, in relation to the goods in class 16 and the services in classes 4 1 and 42 of Registration No. 769828; and
(b) The trade mark has been used by the [Removal Opponent] or an authorised user in Australia within the period of 3 years ending one month before the day on which the non-use application was filed in relation to the following goods and services of Registration No. 769828:
(i) all of the goods in class 16;

(ii) all of the services in class 41; and
(iii) all of the services in class 42.

That, not withstanding the above, the Registrar should refuse to remove the trade mark from the Register, in exercise of his or her discretion

The Removal Applicant then filed a Notice of Intention to Defend.
Thereafter the parties filed evidence in accordance with the Trade Marks Regulations 1995 (‘the Regulations’) as I further discuss below.
Subsequently, both parties requested to be heard. As a delegate of the Registrar of Trade Marks I heard the submissions of the parties in Canberra on 4 August 2015. The Removal Opponent was represented by Melissa Marcus of Counsel instructed by Watermark Intellectual Asset Management; the Removal Applicant was represented by Dieter Dambiec a director of the Removal Applicant.

Onus

In terms of section 100 of the Act the burden is on the Removal Opponent to establish its opposition to the removal of the Trade Mark; that is, to satisfy me there was use of the Trade Mark in relation to the Goods and Services during the three year period ending on 26 August 2013. If such use is established it may be taken that the Removal Opponent has successfully addressed the ground under paragraph 92(4)(a). The Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc [2015] ATMO 10:
Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].
The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”
The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.

Evidence

The evidence in this matter is comprised of the following declarations:
In Support
Declaration of Colm Largey dated 16 April 2014 and Annexures A to P (including Confidential Annexure F) (‘First Largey Declaration’)
In Answer
Declaration of Clark E. Forden dated 5 June 2014 and Annexures A to H (‘Forden Declaration’);
Declaration of Paul de Mey dated 26 June 2014 and Annexures A to M (‘de Mey Declaration’);
Declaration of Claudia Sue Alister dated 1 July 2014 and Annexures CSA-01 to CSA-08 (‘Alister Declaration’);
Declaration of Dayashanker Tiwari dated 2 July 2014 and Annexures DT-01 to DT-16 (‘Tiwari Declaration’);
Declaration of Sunil Kumar Tomar dated 7 July 2014 and exhibits ST-01 to ST-06 (‘Tomar Declaration’);
Declaration of Dieter Joseph Dambiec dated 9 July 2014 and Annexures DD-01 to DD-11 (‘First Dambiec Declaration’);
Declaration of Dieter Joseph Dambiec dated 20 July 2014 and Annexures DD-12 to DD-15 (‘Second Dambiec Declaration’);
In reply
Declaration of Suwanna Thananupradit dated 23 September 2013 and Annexures ST-1 to ST-3 (‘Thananupradit Declaration’)
Declaration of Colm Largey dated 23 September 2014 and Annexures CL-1 to CL-20 (including Confidential Annexure CL-19) (‘Second Largey Declaration’); and
Declaration of Steven John dated 23 September 2014 (‘John Declaration’).
Mr Largey is a director of the Removal Opponent. The First Largey Declaration explains the background to the Removal Opponent and the Trade Mark:
The Ánanda Márga Pracáraka Sarilgha organisation and movement (commonly referred to as “Ananda Marga”) was founded in 1955 by Prabhat Ranjan Sarkar in India. Ananda Marga subsequently became a multi-faceted organisation with different branches dedicated to the upliftment of humanity through spiritual philosophy, education, relief, welfare, yoga and meditation.
In 1964, Ananda Marga became registered as a charitable and social service organisation under the West Bengal Societies Act 1961. In 1965, Prabhat Ranjan Sarkar established the Ananda Marga Universal Relief Team (AMURT). Since that time, Ananda Marga has been an ever-present participant on the disaster relief scene, providing disaster relief following fires, floods, typhoons, earthquakes and war.
Until his death in 1990, Prabhat Ranjan Sarkar promoted the spiritual philosophy of Ananda Marga covering a vast range of topics. Prabhat Ranjan Sarkar’s publications and teachings continue to be promoted under the mark “Ananda Marga.”
Today, Ananda Marga is a world-wide organisation with spiritual and social activity centres in different countries around the world. Ananda Marga runs schools, medical units, children’s homes, rural development projects, and meditation and yoga centres, and is a leading global agency for social development and progress with particular emphasis in the third world.
Concerning the presence of the Removal Opponent in Australia, the First Largey Declaration states:
[The Removal Opponent] is a company limited by guarantee, which was established in 1986 as the Australian chapter of Ananda Marga. Annexed and marked as Annexure A is copy of the Certificate of Registration attesting that [the Opponent] is recognised as a charitable organisation in Australia.
[The Removal Opponent] is the only official representative body of Ananda Marga in Australia and has been granted the sole use and control of the name and mark Ananda Marga in Australia. Attached as Annexure B is a copy of a letter dated 9 June 1999 from the General Secretary of the Indian parent organisation of Ananda Marga, which confirms that [the Removal Opponent] is the only official representative body of Ananda Marga in Australia and as such has been granted the use and control of the name Ananda Marga in Australia.
Annexed and marked as Annexure C is a copy of a letter dated 25 March 2012 from the now former General Secretary of the Indian parent organisation of Ananda Marga confirming that the power to grant the authority to register the trade mark Ananda Marga in Australia rests solely with the General Secretary of Ananda Marga Pracaraka Samgha, India, and that the current General Secretary is Bhaveshananda Avadhuta.
Annexed and marked as Annexure D is a copy of a letter dated 22 May 2012 from the General Secretary of Ananda Marga, India confirming that the permission to register and use the trade mark Ananda Marga was granted to [the Removal Opponent] and that this right continues to reside exclusively with [the Removal Opponent]. The letter of 22 May 2012 also refers to litigation in the Federal Court of Australia. This refers to proceedings that have since been resolved in respect of the identity of members and directors, the construction of the constitution and the control and disposition of [the Removal Opponent]. The Federal Court litigation has been finally determined in favour of [the Removal Opponent], with costs orders made against the various defendants to those proceedings, including orders for indemnity costs, such as in the decision of Justice Dodds-Streeton in Ananda Marga Pracaraka Samgha Ltd v Tomar (No 7) [2013] FCA 863, a copy of which is attached and marked as Annexure E.
I digress to explain that the Federal Court proceedings were brought about by a rift in the Ananda Marga movement originating in around 2003 in India and the substantive matter relating to this schism in Australia is discussed at some length in Ananda Marga Pracaraka Samgha Ltd v Tomar (No 6) [2013] FCA 284 by Dodds-Streeton J. There are two factions each which claim to be authorised to act on behalf of the Ananda Marga movement, one based in Ranchi (‘Ranchi’) and the other in Kolkatta. Put very briefly, the Removal Applicant is aligned with the defendants (the faction based in Ranchi) in the Federal Court proceedings (as are a number of those are who are declarants for the Removal Applicant in this matter). Third parties who appear to be aligned with the Federal Court defendants and Ranchi in the Federal Court proceedings had purported to repost (to countries other than Australia) a number of directors of the Removal Opponent to the benefit of the defendants who were, I gather, to replace the reposted directors. The Removal Opponent was the plaintiff in the Federal Court proceedings and was the successful party. It is my further understanding that the Courts in India, the United States and Australia have accepted that the various office bearers of the factions hold their offices pro tem: that is, until the Courts in India have made a final decision and the various avenues of appeal have been exhausted. If I am wrong in my understanding, this does not affect the reasoning that leads to my decision.
Concerning the Removal Opponent’s operation and use of the Trade Mark in the relevant period in Australia, Mr Largey states:
[The Removal Opponent] owns and manages approximately 12 Ananda Marga centres and 2 Ananda Marga schools throughout Australia, comprising:
(a) 3 centres in WA;
(b) 1 centre in Adelaide, SA;
(c) 1 centre in Melbourne, VIC;
(d) 1 centre in Hobart, TAS;
(e) 1 centre in Sydney, NSW;
(f) 1 centre in Katoomba, NSW;
(g) 1 centre in Lismore, NSW
(h) 1 centre in Stanthorpe, QLD;
(i) 1 centre in Brisbane, QLD
(j) 1 centre in Gympie, QLD.
(k) 1 school in Melbourne, VIC, the Sunrise Pre-school & Long Day-care Centre, North Fitzroy); and
(l) 1 school in Lismore, NSW, the Vistara Primary School, Lismore.
The centres [the Removal Opponent] operates provide religious and spiritual teaching, regular yoga and meditation classes and the schools and long day-care centres provide education services. [The Removal Opponent], as the owner and operator of the Ananda Marga centres and schools is responsible for the payment of staff salaries and entitlements, rents and leases, maintenance and other operational expenses associated with the operation of the Ananda Marga centres and schools listed in paragraph 14.
Annexed as CONFIDENTIAL Annexure F are redacted extracts from [the Removal Opponent’s] audited financial statements demonstrating that the income derived from school tuitions, retreats and conferences held at the centres and income derived from the sale of books and other printed publications, conducting courses and workshops at the centres is part of the income received by [the Removal Opponent]. The confidential extracts from [the Removal Opponent’s] financial accounts are provided for the financial years ended 31 January 2011 and 31 January 2012.
I confirm that [the Removal Opponent] commenced the operation of Ananda Marga centres and schools since its establishment approximately 28 years ago, which continues today. The entries in CONFIDENTIAL Annexure F under the heading “Expenditure” described as “Advertising & Promotion” reflect the annual expenditure by [the Removal Opponent] in relation to maintaining [the Removal Opponent’s] website ( the costs of printing posters to promote festivals and retreats and other expenditure in promoting classes and the schools and centres [the Removal Opponent] operates.
Mr Largey goes on to detail the goods and services in Classes 16, 41 and 42 in relation to which he states the Removal Opponent used the Trade Mark during the relevant period.
The Removal Applicant’s declarations in answer, in large part, repeat the same evidence put by different people.
Mr Forden is a director and officer (Corporate Secretary) of the Board of Directors of Ananda Marga, Inc., a not‐for‐profit, religious corporation registered in the State of Colorado, United States of America. The Forden Declaration claims that the various publications depicted at Annexure G to the First Largey Declaration are those which appear on the website of the United States based Ananda Marga Inc which is aligned with Ranchi and the Removal Applicant. However, it is not clear to me that (whether Annexure G contains copies from the website of Ananda Marga Inc or not) these claims about the publications displace the Removal Opponent’s claims that the publications referred to were in fact published by a third party and sold under the Trade Mark in Australia under the aegis of the Removal Opponent. Receipts in Mr Largey’s evidence clearly show the Trade Mark at the head of those receipts relating to the sale of publications during the relevant period.
Mr de Mey is a spiritual teacher and monk of Ananda Marga. The de Mey Declaration makes the following point:
Those persons associated with Ananda Marga teach meditation for free, whether they do so as individuals or through the organizational entities they work through. The name and words ‘Ananda Marga’ are known all around the world in relation to meditation practices. This is because teachers, practitioners and supporters of Ananda Marga use it constantly and commonly for meditation services, as well as for yoga services, and for services that promote a healthy all-round lifestyle on all levels of existence: social, physical, mental and spiritual. Importantly, the name represents services, particularly meditation, being offered for free and voluntarily and not on a commercial basis in the course of trade. No single person can claim to be the owner of the name ‘Ananda Marga’.
This is because as mentioned on the anandamarga.org website, which I manage, on the webpage at (included in my Annexure A), ‘Ananda Marga’ is the name of a system. And:
It is an optimal selection of those techniques and practices that lead to the total experience of infinite peace and happiness – what we call "selfrealization." It is an ideology and way of life; a systematic and scientific process for the fulfillment of all human needs: physical, mental and spiritual. It is introversial, intuitional practice; with techniques ranging from personal hygiene to yoga postures; from social service to meditation.
[…]
As an ordained monk of Ananda Marga I must use the term ‘Ananda Marga’ regularly in my dealings and it is proper for me to do so. From my extensive experience, this would be the case for any person who is a monk or nun of Ananda Marga and for any spiritual teachers of Ananda Marga, in any country or territory of the world. Indeed, not just monks, nuns or spiritual teachers, but it would be the case for any person propagating Ananda Marga. This is supported by the Supreme Command given by the founder of Ananda Marga which in one part states: “… it is the bounden duty of every Ananda Margi to endeavour to bring all to the path of bliss …”, i.e. ‘to Ananda Marga’. An “Ananda Margi” is a follower of Ananda Marga. Annexed and marked Annexure D is a copy of the Supreme Command given by Shrii Shriii Anandamurti, as set out in the book Ananda Marga Caryacarya Part 1, which Ananda Marga practitioners follow.
The de Mey Declaration observes that the Removal Opponent does not sell publications via the Internet whereas the Removal Applicant does. However, I note that this does not preclude retail or postal sale of publications by the Removal Opponent or cast doubt on the validity of the handwritten receipts in evidence.

The de Mey Declaration further states:
Also, books on Ananda Marga are not published or promoted merely under a mark of ‘Ananda Marga’ because that is the name of an ideology and describes the philosophy and practices of Ananda Marga. When that name appears on books it shows the books will describe and explain about the Ananda Marga philosophy and its practices, and inform the reader accordingly. Such books or other printed materials do not bear an ‘Ananda Marga’ trade mark, and certainly not the Australian trade mark number 769828. If the name does appears on a book it describes that this is a book about Ananda Marga, and usually about the Ananda Marga philosophy and its spiritual and related practices. The use of that name is descriptive and informational.
This is a theme which runs through the Removal Applicant’s evidence and the submissions of Mr Dambiec and I will address it more fully under the heading ‘Reasons’. In the meantime I again observe that the Trade Mark appears at the top of the receipts issued by the Removal Opponent for the sale of publications.
The de Mey Declaration continues:
I refer to Annexure B of Colm Largey’s declaration of 16 April 2014. It contains a letter dated 9 June 1999. A sentence at the bottom states that this letter grants the use of the name ‘Ananda Marga’ to Ananda Marga Education Ltd. However, that cannot be correct as the company Ananda Marga Education Ltd was incorporated under that name on 5 January 1993 (at least 6 years earlier). Annexed and marked Annexure L are details shown on the ASIC database for Ananda Marga Education Ltd and its registration date.
The letter at Annexure B affirms that Ananda Marga Education Ltd is affiliated and subordinate to the Removal Opponent. It is not clear to me why the grant of permission to use the name cannot be given after the incorporation of the company or why that company or the Removal Opponent could not use the name as a trade mark in relation to educational services with (or without) grant of the use. It will be recalled that the schism in the organization did not arise until 2003 and until some time after the first use of the Trade Mark in relation to education services by the Removal Opponent which apparently had (at the time of the schism) used the Trade Mark without demur by any person for a period of some years. Further the Removal Opponent claims to have operated two schools in Australia during the relevant period under the Trade Mark – these being the Sunrise Pre-School and Long Daycare Centre in North Fitzroy, Victoria, and also the Vistara Primary School in Lismore, New South Wales. At one level this use is not challenged by the Removal Applicant. However Ms Alister states that she volunteered her time during the non-use period at the Ananda Marga River School which has no connection with the Removal Opponent.
Nevertheless, that does not of itself displace the Removal Opponent’s evidence that it was using the Trade Mark during the relevant period in relation to educational services.
Ms Alister states that she has been involved in Ananda Marga for over 30 years. She states, “I was a director of Ananda Marga Pracaraka Samgha Ltd (the [Removal] Opponent) from 7 May 2001 to 27 October 2013, which includes the entire non-use period of 26 August 2010 to 26 August 2013. I am familiar with the affairs of the [Removal] Opponent company and have managed its events while I was a director.” The Alister Declaration explains Ms Alister’s understanding of Ananda Marga and states:
That being so, the name ‘Ananda Marga’ was not used by the [Removal] Opponent in the sense of having the capacity to act as a badge of origin for services (or goods) provided in relation to the Ananda Marga movement. From my experience that is not possible. It is necessary and proper for persons, especially every Ananda Margi, to use the name for propagating Ananda Marga philosophy and practices, and the services and goods that may be required for such propagation, consistent with the teachings of the Ananda Marga movement.
The balance of the Alister Declaration is a critique of the evidence in the Largey Declaration. Much of this critique appears to be centered on a view that the use of the Trade Mark is use of a descriptive and/or generic term.
The Tiwari Declaration is by a spiritual teacher. The Tiwari Declaration states, inter alia:
In Australia, I have also helped raise funds for relief work carried out by the Ananda Marga Universal Relief Team (AMURT) associations in different parts of the world. I am well acquainted with the history of AMURT which was established for relief work by Shrii Shrii Anandamurti (also known as Prabhat Ranjan Sarkar), the founder and guru of Ananda Marga.
The Tiwari Declaration addresses two groups of services: religious/marriage ceremonies and disaster relief. In relation to the former, the Tiwari Declaration states:
One ceremonial event in Ananda Marga is weddings. When the term ‘Ananda Marga marriage’ or ‘Ananda Marga wedding’ is used, it immediately calls to mind what the nature of the wedding will be and what it will be like. It is fully set out in Caryacarya Part 1 (chapter 18) which is included in Annexure DT-04. If use of the term ‘Ananda Marga’ were not allowed it would hinder the ability of Ananda Marga teachers and celebrants to properly cater for the marriage and this would be embarrassing to persons wanting an Ananda Marga marriage ceremony and for those who wish to attend. The same applies to other Ananda Marga religious ceremonies, events and festivals.
Marriage celebrants, mostly spiritual teachers of Ananda Marga, perform marriage ceremonies for free. They do not charge a fee. To officiate and solemnise a marriage is not a commercial enterprise, but to be treated as a sacred spiritual ceremony. A follower of Ananda Marga simply has to approach an Ananda Marga teacher who can act as a marriage celebrant and request they carry out the marriage ceremony once the arrangements for the marriage have been satisfied and finalised.
And in relation to disaster relief services, the Tiwari Declaration states:
In my role as a monk I also have duties in assisting the relief work of AMURT associations, which I have done primarily by way of fundraising events. In my role as a monk in the religious order of Ananda Marga, I am given a posting which denotes the type of social service work I should carry out or help with in my monk life. Accordingly, on 14 December 2007 the higher authorities of my religious order gave me duties in relation to AMURT relief work which I should oversee and help out with. Annexed as Annexure DT-06 is a copy of my posting order which refers to my role as AMURT Secretary in Australia (part of the geographical administrative area called the Suva Sector of Ananda Marga Pracaraka Samgha). This makes me qualified to comment on AMURT relief work.
The Tiwari Declaration lists Ananda Marga Universal Relief Team, Inc. (AMURT Inc) in the USA, AMURT Philippines Inc., a further Ananda Marga Universal Relief Team entity in Indonesia, and also in Haiti and states that the Removal Opponent is not mentioned on the Internet sites associated with these bodies. However, the declaration continues:
Various countries have their own associations using the AMURT name or the long name of Ananda Marga Universal Relief Team and they are legally independent and separate from each other. The Opponent company in Australia cannot claim the benefit or reputation of their work.
It would appear to logically follow that the Removal Opponent is similarly independent and thus its non-appearance on the websites of other AMURT organisations is not determinative.
In regard to disaster relief the Tiwari Declaration also states:
I understand that merely sending money overseas for relief projects, disaster relief and community development activities, of itself, does not amount to use of a trade mark in Australia for those services (which are carried on overseas). Campaigns for the raising of money would be fundraising services, not disaster relief services or community development activities or emergency relief services.
In regard to the above, I note that section 228 of the Act provides:
228Use of trade mark for export trade
(1)If:
(a)a trade mark is applied in Australia:
(i)to, or in relation to goods that are to be exported from Australia (export goods); or
(ii)in relation to services that are to be exported from Australia (export services); or
(b)any other act is done in Australia to export goods or export services which, if done in relation to goods or services to be dealt with or provided in the course of trade in Australia, would constitute a use of the trade mark in Australia;
the application of the trade mark or the other act is taken, for the purposes of this Act, to constitute use of the trade mark in relation to the export goods or export services.
Note:For applied to or in relation to goods and applied in relation to services see section 9.
(2)Subsection (1) applies to an act done before 1 January 1996 as it applies to an act done on or after that day, but it does not affect:
(a)a decision of a court made before that day; or
(b)the determination of an appeal from such a decision.
I also note that although disaster relief is frequently provided overseas, Australia has bush fires, floods and cyclones and thus disaster relief might be offered by the Removal Opponent in Australia. If it were not engaging in disaster relief, its disaster training services, which the First Largey Declaration shows that the Removal Opponent offered, would appear to be pointless.
The Tiwari Declaration continues:
I refer to Annexure P of Colm Largey's declaration dated 16 April 2014 at pages 4 to 9, which is a tenancy agreement for lodgings. I was the tenant under that agreement in the premises at 19 Lovel Street, Katoomba, 2780 in New South Wales.
[…]
I note that the agreement had commenced on 20 March 2010 and was signed on 26 and 27March 2010. I was also living at the premises before that time for about one month. The dates are before the non-use period which started on 26 August 2010.
[…]
I lived at the Katoomba premises until November 2011.
While this passage appears to be directed at the Removal Opponent’s non-performance of real estate rental services (which are not amongst the Goods and Services) I note that November 2011 is after the start of the non-use period and it logically follows that the Removal Opponent was offering this service during the relevant period.
Mr Tomar is a spiritual teacher of the Ananda Marga spiritual path. The Tomar Declaration states:
There are numerous persons and associations involved in propagating and promoting Ananda Marga in various ways around the world, including in Australia. Those persons in the propagation of Ananda Marga spirituality and practices, including in Australia, must use the phrase ‘Ananda Marga’ in connection with goods and services which are provided consistent with the philosophy and practices of Ananda Marga , as it is the name given by its founder. They do so to bring people to Ananda Marga and to indicate that services, such as meditation and yoga, ceremonies, festivals, religious and spiritual teachings, education services, and other services, are such that they concern and are consistent with the teachings and practices of the Ananda Marga spiritual movement. The same applies to goods such as books and other printed publications, compact discs (CDs), DVDs and other media used to propagate Ananda Marga.
The Tomar Declaration states in relation to the provision of health education:
I refer to paragraph 25 of Colm Largey’s declaration of 16 April 2014. Stating on a poster that workshops for “health and wellbeing” will be held as part of a program at an event, such as a retreat or festival, does not make it the provision of health education services – as there are no educational criteria and no teaching goals. Such workshops are not the promotion of health education services. The public has no idea what the services are in regard to health education.
The Opponent company did not trade in health education services. There was no commercial undertaking involved through which the Opponent company derived profit from health education services, including in the non-use period. There was no separate charging for any health education services and no advertising for such services.
I do not understand the distinction that the Tomar Declaration seeks to make: it appears to me that if a person has paid a fee in order to attend a conference and attends health and wellbeing workshops as a part of that conference then that person has been the recipient of a health education service.
I note again that these conferences also provided AMURT emergency rescue training and I also do not understand the distinctions made in the Tomar Declaration to the effect that although the service may have been provided that service was not emergency rescue education. It is possible that the Tomar Declaration focusses on a qualification or formal recognition at the end of such training. However, much education is provided without any formal qualification being offered or achieved.
The Tomar Declaration states of the Removal Opponent’s primary school in Victoria:
The only mention of ‘Ananda Marga’ in pages 1 to 4 of that Annexure M (which are four webpages from the Sunrise Pre-school website) is informational and the phrase is used descriptively. In the settings in which the name ‘Ananda Marga’ is presented, it appears to viewers of the webpages as possessing a descriptive purpose with no connection in the course of trade between the services provided (by the Sunrise Preschool) and the [Removal] Opponent.
The Tomar Declaration makes similar comments about the Removal Opponent’s primary school in New South Wales. I again note that I will address this line of submission under the heading ‘Reasons’.
The following advertisement (shown here in reduced size) appears in the Largey Declaration at Annexure N:
The Tomar Declaration states of the above:
Colm Largey’s declaration of 16 April 2014 at Annexure N, page 1, contains what he calls a “promotional flyer” for an organic farming workshop. This is not an advertisement of a commercial nature – it contains no fee or charge for the workshop, it does not indicate a connection to the Opponent company, as the words ‘Ananda Marga’ are a generic descriptor of that movement.
In my experience many brochures promoting services have no specific mention of fees – it is in the nature of advertisements that fees are frequently unmentioned. The Trade Mark appears at the bottom of the flier. The flier does of course refer to a phone and Internet contact where bookings might be made. The farm itself is apparently a part of the Removal Opponent’s operation.
A difficulty with the Tomar Declaration is that it tends to be submission rather than fact; it tends to set up its own (generally very restrictive) definitions of what might constitute various services and then states that the services claimed to be performed by the Removal Opponent do not fall within those definitions. An example lies within [34]-[35], above. Another lies within the claim at [41] of the Tomar Declaration:
A training class ordinarily requires a series of lessons or lectures teaching the skills needed for a particular activity or as part of a job. In this regard, ‘training’ ordinarily requires the process of bringing a person or group of persons to an agreed standard of proficiency by practice and instruction. For example, in training classes or training course for firefighters, safety training to drive a particular vehicle safely, training in the use of software applications, training to perform a certain therapy or therapeutic technique, training in other techniques and methods. In this regard, a ‘class’ requires a group of students who meet, often regularly, to be taught a subject or activity or be given a course of instruction. No such training classes were provided by the Opponent company in the non-use period or during the period I was a director of the Opponent company.
The tightness of the definition adopted in the above paragraph invites speculation about the nature of the training courses that were or might have been offered by the declarant or Removal Opponent during the relevant period which do not meet the definition adopted by the declarant and consequently conjecture about what the declarant is not stating. A mentor system of training without any particular set standard at completion, for example, would both be a service in terms of the Act, and also in keeping with the Removal Opponent’s philosophy and would not meet the definition set by the Tomar Declaration.
The First Dambiec Declaration states:
The words ‘Ananda Marga’ are descriptive of goods and services which are provided in a way consistent with the teachings of the Ananda Marga spiritual movement. Therefore, the words are included in the name of or are used by several suppliers in Australia of meditation and yoga services, as well as other services and goods in relation to Ananda Marga, to describe their services and goods. For example, ‘Ananda Marga books’, ‘Ananda Marga retreat’, ‘Ananda Marga festival’, ‘Ananda Marga meditation’, ‘Ananda Marga yoga’, ‘Ananda Marga spiritual practices’ and so on are common expressions that one easily comes across. Meditation is a core practice in the Ananda Marga movement and is taught and provided free of charge, as it forms the foundations of Ananda Marga. Other spiritual practices, including individual yoga postures, are also taught free of charge.
Regarding other suppliers, I have searched various databases that are to do with the registration of organisations and entities, as well as the Internet. These include the ASIC database, the ACNC database, the ABN Register, the ATMOSS trade mark database, and I also relied on my own knowledge of Ananda Marga in Australia.
I note particularly that given the non-profit nature and, indeed, the free and without-charge services provided by suppliers in the Ananda Marga movement in Australia and around the world, in relation to meditation and other spiritual practices, the name ‘Ananda Marga’ has, in practice, been freely used by those who seek to promote and propagate Ananda Marga philosophy and practices. Some related support services, such as retreats are generally on a cost recovery basis, or in some cases even free. Meditation is, however, taught for free, along with related spiritual practices. This effort is done consistent with what PR Sarkar gave as the foundations of Ananda Marga, and I am not aware of any particular controversy or dispute of substance about any person’s or association’s efforts to promote and propagate Ananda Marga in Australia.
The name has not been controlled by any particular person in teaching meditation or yoga or other spiritual practices – which are taught for free. Every follower of Ananda Marga has a duty to promote and propagate Ananda Marga practices and philosophy. Practically, the name is not able to be controlled by any particular person. Many associations and persons (such as spiritual teachers) use it properly, in various countries of the world, to offer free services. The number of persons who wish to use it consistently with the aims and objectives of what PR Sarkar gave in relation to Ananda Marga philosophy and practices is simply too vast. I also was taught meditation, yoga and spiritual practices all free of charge with no monetary requirement. Lesson reviews on meditation are also taught free of charge.
The above statement is at odds with the registration of the trade mark ANANDA MARGA in the United States of America by Ananda Marga Inc.[1] in respect of “instructional services in the field of yoga and meditation, namely classes, workshops and seminars, including instructions online and via e-mail” under registration 2962186. The statement is also inconsistent with United Kingdom registration EU003148715 owned by Ananda Marga Pracaraka Samgha of London for, inter alia, “Education, teaching and training; education services provided by schools; training, education and seminars relating to teaching services; religious services; individual instruction in meditation techniques; religious and spiritual services; consecration of buildings; house-warming ceremonies; teaching of spiritual practices; rendering spiritual services; hosting and conducting social and spiritual functions including collective meditation functions; educational services relating to spiritual development; courses in yoga and meditation; courses in social and spiritual philosophy; organising of festivals and seminars; education in health; educational services for children; educational training services related to the relief of poverty, combat of distress and alleviating suffering.”
[1] I note that one of the declarants for the Removal Opponent, Mr Forden, is a director of Ananda Marga Inc which is the owner of the USA registration and is aligned with the Ranchi faction.

The First Dambiec Declaration details various searches that the declarant made on Facebook®, and on the ASIC, ACNC, ABN and ATMOSS websites. These searches, and the balance of this declaration, are couched in terms of establishing that the term ‘Ananda Marga’ is descriptive of a philosophy or religion. However, both the results of the searches and the question of whether the term ‘Ananda Marga’ is descriptive are not relevant to my decision for reasons I will state under the heading ‘Reasons’, below.
The Second Dambiec Declaration focusses on matters concerning the schism in the Ananda Marga organization in Australia (and elsewhere) and the multiplicity of persons who the Removal Applicant claims are entitled to use the expression ‘Ananda Marga’ in Australia. These matters are (again for reasons I will state under the heading ‘Reasons’) incidental to the question I must address: whether the Removal Opponent has used the Trade Mark during the relevant period.
The Thananupradit Declaration is by a person associated with the Removal Opponent who, with her husband, bought land adjacent to the rural community development project known as Ananda Palli, near Stanthorpe in Queensland. Ananda Palli is managed by the Removal Opponent. In brief the Thananupradit Declaration explains that although the declarant wished to use the Trade Mark in relation to training services and food products (with, I gather, the consent or authorization of the Removal Opponent) she was constrained from such use by the following circumstances:
In March, 2010, Mr. Richard Pfeiffer, one of the residents of Ananda Palli, became a defendant in Federal Court litigation concerning the identity of members and directors of [the Removal Opponent], the construction of the constitution and the control and disposition of [the Removal Opponent], and the owner of the land at which Ananda Palli is situated (the ‘Federal Court Litigation’).
The following persons (who I understand are declarants for the non-use applicant) were also defendants in the Federal Court Litigation:
· SUNIL KUMAR SINGH TOMAR (First Defendant)
· CLAUDIA ALISTER (Second Defendant)
· TIWARI DAYASHANKAR (Fourth Defendant)
· DIETER DAMBIEC (Sixth Defendant)
[…]
The approach of the defendants referred to at paragraph 11 above was to attempt to take over [the Removal Opponent] or, alternatively, to have [the Removal Opponent] wound up. For instance, I refer to the comments of Dodds-Streeton J at paragraphs 572 and 606 of the No 6 Decision (emphasis added):
[572] At trial, the defendants submitted that if they were unsuccessful in their contentions on membership and oppression, [[the Removal Opponent]] should be wound up pursuant to s 461(1)(k) of the Act on a number of bases, some of which were also advanced to support winding up or other relief sought for oppression.
[606] The defendants did not allege serious misconduct or dishonesty by the plaintiffs or indeed any other party. They did not allege that the plaintiffs had dissipated or misapplied company assets or breached their directors’ duties in any other respect. They did not allege that the company had failed properly to carry out its legitimate activities in pursuit of the corporate objects. Indeed, their primary claim was that [the Removal Opponent] should continue under the defendants’ control.
In the periods leading up to and during the course of the Federal Court Litigation (i.e. from around March 2010 up to and including 2013, before and during the Non-Use Period, a number of the defendants engaged in conduct which had the effect of disrupting the business of [the Removal Opponent] and, consequently, of disrupting a number of entities and organisations which were associated with or controlled by [the Removal Opponent].
An example of such behaviour is the attempt by Dr Tomar, Mr Pfeiffer, Mr Tiwari and Ms Allister to change the authorizations on [the Removal Opponent]. bank accounts, or have them frozen. For instance, I refer to the following comments of Dodds-Streeton J at paragraph 506 of the No 6 Decision (emphasis added):
When cross examined on whether, shortly after 20 March 2010, he and Messrs Tiwari and Pfeiffer attempted to remove Ms Nayak as a signatory from the account of the Women’s Welfare Department at the Westpac Bank in Brisbane and substitute themselves as signatories, Dr Tomar stated that he could not recall and did not remember the amount in the account, although it was “big” ($200,000 to $300,000). Dr Tomar ultimately agreed that he attempted to prevent Ms Nayak from operating the account and stated “I just acted to protect the money”.
The above reference to the Women’s Welfare Department is a reference to the Women’s Welfare Department of [the Removal Opponent]. I confirm that the bank account referred to at paragraph 506 of the No 6 Decision is the [the Removal Opponent] Women’s Welfare Department bank account. Ms Nayak was at the relevant time a Director of [the Removal Opponent].
In addition to the above, I am aware that on or around 20 March 2010, the bank account of the Ananda Marga Vistara Primary School in Lismore were also frozen for several days without warning or explanation. I note that the bank account of the Ananda Marga Vistara Primary School is owned and operated by [the Removal Opponent].
At Ananda Palli, Mr. Pfeiffer's refusal to cooperate with the management regime for [the Removal Opponent], established by Federal Court orders made in March and December of 2010 (copies of which are reproduced at Annexure ST-3), caused serious disruption to [the Removal Opponent’s] financial management.
On or around April 2010, I was requested by Mr Largey (acting on behalf of [the Removal Opponent]) to manage the bank accounts of [the Removal Opponent] relating to the Ananda Palli project, including by ensuring that appropriate procedures and protocols were complied with.
However, during the period between April 2010 until [sic], Mr Pfeiffer acted unilaterally by incurring expenses on behalf of [the Removal Opponent] without first submitting appropriate requisition forms for processing and approval. In these circumstances, Mr Pfeiffer would present me with receipts (or other evidence of expenses incurred by him without providing requisition forms), and would then seek reimbursement from [the Removal Opponent] for these expenses.
I regarded Mr Pfeiffer’s conduct, and the conduct of the other defendants referred to at paragraph 11 above, as reckless and irresponsible and I was concerned that any activity carried out in the name of [the Removal Opponent] other than that controlled by the Federal Court Litigation defendants was potentially open to disruption and to sabotage. In this respect, I refer to the following comments of Justice Dodds-Streeton at paragraphs 499 to 500 and 503 to 504 of the No. 6 Decision:
[499] Dr Tomar conceded that he was aware that his duties as a director precluded involvement in the unjustified removal of officers, making false representations to ASIC, holding invalid meetings and misappropriating corporate assets.
[500] Dr Tomar acknowledged that he knew that it was a breach of his director’s duties to hold the meeting purporting to remove Messrs Pillay and Pillai as directors and to advise ASIC accordingly. He also conceded that he knew that his actions and the purported appointment of Mr Pfeiffer as a director were invalid.
[…]
[503] Dr Tomar also acknowledged that Ms Alister and Mr Dambiec cancelled [the Removal Opponent’s] 2010 “mela” (a festival to raise funds and promote Ananda Marga) and diverted traffic from the company website. He agreed that he discussed that conduct with Ms Alister and did not try to prevent it, although Ms Alister would have desisted had he instructed her to do so. Dr Tomar stated that he was not sure of his legal obligations in that regard.
[504] Dr Tomar conceded that he was aware that Ms Alister and Mr Tiwari diverted company mail in late 2010. He advanced justifications for that conduct and was extremely evasive when asked if he did anything to prevent it.
I believe that the allegiance of the defendants referred to at paragraph 11 above to the Ranchi Administration of Ananda Marga in India was a relevant circumstance influencing the conduct of these individuals which had the effect of disrupting the activities of AMPS Ltd and affiliated entities.
In light of the above circumstances, in 2010 I decided not to associate my food-based business (including training services) with the ANANDA MARGA trade mark. I was also unable to assist the local Ananda Marga food based venture in successfully using the ANANDA MARGA mark due to the ongoing disruption.
Most of the above statement goes to the provisions of subsection 101(c) of the Act which were not cited in the SGP filed by the Removal Opponent.

Reasoning

Section 92 of the Act relevantly provides:

92Application for removal of trade mark from Register etc.
(1)Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register.
(2)The application:
(a)must be in accordance with the regulations; and
(b)may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

(3)An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Note:For prescribed court see section 190.

(4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i)to use the trade mark in Australia; or
(ii)to authorise the use of the trade mark in Australia; or
(iii)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 to which the non‑use application relates and that the registered owner:
(iv)has not used the trade mark in Australia; or
(v)has not used the trade mark in good faith in Australia;
in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;
(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i)used the trade mark in Australia; or
(ii)used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Note 1:For file and month see section 6.
Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

I draw particular attention to subsection 92(4) which (before specifying the grounds under paragraphs 92(4)(a) or (b)) states, “An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds” (Stress added). Much of the Removal Applicant’s evidence and submission does not address a ground under section 92 at all – rather the evidence and submission appear to be addressed to a rectification action under either of sections 87 or 88 of the Act. A large part of the Removal Applicant’s evidence, and much of its submission, is that the Removal Opponent could not use the Trade Mark as a trade mark as it is a descriptive term the use of which is open to anyone providing similar goods or services as those in respect of which the Trade Mark is registered; or, that the uses instanced by the Removal Opponent were not uses as a trade mark but of a descriptive term. However, this is not the appropriate forum for such arguments which should be before a Court under section 87 or 88 of the Act, seeking a rectification of the Register.
A trade mark is defined by the Act:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
It follows that a sign used, or intended to be used, which does not distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person is not a trade mark. Thus a registered trade mark which consists solely of words which are alleged to be descriptive (as is the case here) is, in view of the definition in section 17, and having met the conditions specified under section 41 of the Act, prima facie incapable of being used descriptively in relation to the particular goods and services for which it is registered unless it is so determined by a Court under the provisions of sections 87 or 88 (or, indeed, as a defence to an infringement action under Part 12 of the Act); see for example, Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27; (2008) 166 FCR 312; [2008] AIPC 92-277; (2008) 75 IPR 102 (‘the fence dropper’); Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; [2006] 154 FCR 165; (2006) 69 IPR 255 (‘Go On ...’); Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117 (‘Persian Fetta’); Sports Break Travel Pty Ltd v P & O Holidays Ltd [2000] FCA 924; (2000) 50 IPR 51 (‘Schoolies’); Larry John Powell v Glow Zone Products Pty Ltd [1996] FCA 1021 (‘Caps the Game’). Concerning section 87 and 88 claims “masquerading as a non-use action” see Kimen International Pty Ltd v Sunsmart Products Pty Ltd [2008] ATMO 94; (2008) 80 IPR 158 and the cases mentioned therein.
Thus, contrary to the ‘rectification arguments’ of the Removal Applicant, I must accept the Trade Mark as validly registered until a Court orders the rectification of the Register. Any uses that the Removal Opponent makes of the Trade Mark in relation to the Goods and Services are, in this forum, not uses of a descriptive term and it is inappropriate that I consider whether they be uses of a descriptive term or not as such considerations would be, in effect, a de facto consideration of issues appropriately determined by a Court under sections 87 or 88 of the Act. Accordingly the sole question that I must address is whether the Removal Opponent has, prima facie, used the Trade Mark in good faith in relation to the Goods and Services during the relevant period.
Section 7 of the Act provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
(2)To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3)An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
Section 9 of the Act provides:
9Definition of applied to and applied in relation to
(1)For the purposes of this Act:
(a)a trade mark is taken to be applied to any goods, material or thing if it is woven in, impressed on, worked into, or affixed or annexed to, the goods, material or thing; and
(b)a trade mark is taken to be applied in relation to goods or services:
(i)if it is applied to any covering, document, label, reel or thing in or with which the goods are, or are intended to be, dealt with or provided in the course of trade; or
(ii)if it is used in a manner likely to lead persons to believe that it refers to, describes or designates the goods or services; and
(c)a trade mark is taken also to be applied in relation to goods or services if it is used:
(i)on a signboard or in an advertisement (including a televised advertisement); or
(ii)in an invoice, wine list, catalogue, business letter, business paper, price list or other commercial document;
and goods are delivered, or services provided (as the case may be) to a person following a request or order made by referring to the trade mark as so used.
(2)In subparagraph (1)(b)(i):
covering includes packaging, frame, wrapper, container, stopper, lid or cap.
abel includes a band or ticket.
The Removal Opponent’s evidence shows use of the Trade Mark at the head of receipts for the sale of publications – this, according to the above definition, is a use both in relation to such publications and the retail of such publications. Brochures may be a necessary adjunct to a service: Re Real Estate Agents Co-op Ltd [1991] 20 IPR 547 although I do not consider that the Removal Opponent has established that here. Additionally, use of a trade mark in an advertisement – such as the Removal Opponent’s brochures and fliers in evidence – is, according to the above definition, use in relation to the goods or services so advertised and provided. These are the uses of the Trade Mark discussed under the heading ‘Evidence’, above, and include religious and spiritual teaching, courses in yoga and meditation, organizing of festivals, provision of educational services, training in disaster relief or emergency services and organic farming.
I accordingly accept that the Removal Opponent’s evidence in the First Largey Declaration establishes use of the Trade Mark during the relevant period in relation to the goods and services which are underlined below:
Class 16: Books, brochures, pamphlets, leaflets and other printed publications
Class 41: Religious and spiritual teaching, courses in yoga and meditation; organising of festivals, in particular in relation to religious and spiritual issues; providing health education; delivery of economic development and income generation programs, namely training classes in subjects related to farming, milling of seeds into oil or flour, grain storage, marketing farm products, sewing, handicrafts and small-scale manufacturing; training classes in the operation and management of cooperative enterprises including farms, handicraft manufacturing and small business merchandising; providing educational services in preschool, kindergarten, primary, secondary and tertiary levels
Class 42: Providing, conducting and arranging religious and spiritual services and ceremonies; food catering; disaster relief and community development activities, including emergency relief, administration of medical services; orphanage services; farming and reforestation services
I do not consider that the Removal Opponent has established use of the Trade Mark on the balance of the goods and services:
Class 16: brochures, pamphlets, leaflets
Class 41: delivery of economic development and income generation programs, namely training classes in subjects related milling of seeds into oil or flour, grain storage, sewing, handicrafts and small-scale manufacturing; training classes in the operation and management of cooperative enterprises including handicraft manufacturing and small business merchandising;
Class 42: administration of medical services; orphanage services; reforestation services

Discretion

Section 101 of the Act relevantly provides:
101Determination of opposed application—general
[…]
(3)If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
[…]
Note 1:If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2:For registered owner see section 6.
In Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354 Bennett J stated at [167]:
The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
In E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:
o there had been no abandonment of the trade mark ;
o the registered proprietors of the mark still had a residual reputation in the mark ;
o there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
o the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;
o the registered proprietors were not aware of the applicant’s sales under the mark
The above list is not exhaustive but is an indication of some of the factors that the Registrar might take into account in deciding whether to exercise his or her discretion. Additionally, to paraphrase the words of Wynn-Parry J (albeit in relation to the exercise of the Registrar’s discretion in relation to honest concurrent use)[2]:
The discretion is unfettered and it appears that any relevance circumstance may, and indeed ought to be considered. What is a relevant circumstance must depend on the facts in each case.
[2] Re Electrix Ltd’s Application [1957] RPC 369 [at 379]
Here the Removal Opponent is in the nature of being similar to a charitable body where the use of the Trade Mark ‘in trade’ in the normal sense might be difficult to establish. At one level the Removal Applicant’s argument that Removal Opponent has only used the Trade Mark descriptively may be viewed as a concession that the Removal Opponent has indeed used the Trade Mark during the relevant period. However, the alternative argument put by the Removal Applicant is that such use (if it is not descriptive use) is not use ‘in the course of trade’. However, the nature of the trade that charitable organisations engage in may differ from that of commercial traders and may need to be assessed in that context. Brochures and pamphlets might be ‘sold’ for a donation; services such as weddings or other ceremonies might be provided in exchange for a donation or other forms of consideration. If, for example, a person ‘tithes’ to a religious organisation and that organisation provides certain services to that person, it may be unrealistic to state that a trade mark used in respect of the services offered by that institution has not been used. Persons such as the Removal Opponent are often run by volunteers and funded by donations and it is difficult to draw a ‘bright line’ and state that such services are contextually not ‘in trade’ and thus deprive trade mark registrants which are of a charitable nature of the registration of their trade marks. A school might in fact be funded by the government and/or by donation, but if that is the nature of the trade that the school is in, a finding that it is not ‘in trade’ in the customary sense may ignore the reality that in such circumstances the educational service is being provided for good consideration, the bill is just being footed by a person (for example the Government or a donor) other than the recipient of the service. Under such circumstances (as exist also here) the exercise of the Registrar’s discretion may be appropriate.
Further, the evidence and the submissions of the Removal Opponent are, as discussed above, in substantial part couched in terms of a rectification of the register under sections 87 or 88 of the Act in circumstances where the Removal Opponent has established use of the Trade Mark in relation to a broad part of the Trade Mark’s specification of goods and services – particularly the goods and services which appear to be of special interest to the Removal Applicant. Consideration of sections 87 or 88 of the Act is ultra vires the power of the Registrar and the extensive evidence and argument from the Removal Applicant which is more properly argued under section 87 and 88 invites the response that it might be fitting to leave the specification of Goods and Services intact in order that the matter might be fully addressed in the appropriate forum.
Having regard to all of the above circumstances, I consider it appropriate that the Registrar exercise her discretion in relation to the balance of the Goods and Services for which the Removal Opponent has not established use (ie that at [60] above) and the specification of Goods and Services at [1], above, be left intact.

Decision

The Removal Opponent has established its opposition to the removal of the Trade Mark from the Register.

Costs

Having been successful, the Removal Opponent is entitled to its costs which I award against the Removal Applicant at the official scale set out at Schedule 8 of the Trade Mark Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
7 October 2015