Ananda Marga Pracaraka Samgha Ltd v Seva Dharma Mission (Australia) Limited
[2016] ATMO 79
•29 September 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Ananda Marga Pracaraka Samgha Ltd to registration of trade mark application 1582023 – AMUS ANANDA MARGA UNIVERSAL STORES - in the name of Seva Dharma Mission (Australia) Limited.
Delegate: Bianca Irgang Representation: Opponent: Melissa Marcus of Counsel instructed by Watermark Patent and Trade Mark Attorneys
Applicant: Written submissionsDecision: 2016 ATMO 79
Trade Marks Act 1995 - Section 52 opposition: sections 44, 42(b) and 60 pressed – s 60 established.Background
Seva Dharma Mission (Australia) Limited (‘the applicant’), filed trade mark application number 1582023 on 23 September 2013 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: 1582023
Filing Date: 23 September 2013
Specification: Class 35: Book clubs (retailing of books); Discount services (retail, wholesale, or sales promotion services); Presentation of goods on communication media, for retail purposes; Retail clothing shop services; Retail services; Retailing of goods (by any means); Display and sale of works of art (commercial exhibitions shows, galleries); Sales promotions by means of cookery displays and demonstrations (for others); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Bartering services (facilitating the trade exchange of goods and services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Wholesaling of goods (by any means); Online advertising on a computer network; Online promotion on a computer network; Web site traffic optimisation; Association services being the promotion of the interests of members of the association; Sales promotion services; Association services being the provision of business support or advice; Charitable services, namely business management and administration; Charitable services, namely organising and conducting volunteer programmes and community service projects; Charitable services, namely the recruitment, organisation and deployment of volunteers
Endorsements: The applicant has advised that the English translation of the Sanskrit words ANANDA MARGA appearing in the trade mark is PATH OF BLISS. Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks dated 13 February 2014. Subsequently Ananda Marga Pracaraka Samgha Ltd (‘the opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars.
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’).
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
The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’). Those grounds under sections 42, 43, 44, 58, 60 and 62A 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’.[1] 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.[2] 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.
[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599
[2] [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
The evidence in this matter consists of the following declarations being:
Evidence in Support
·Declaration of Colm Largey (the “Largey 1 declaration”) dated 19 September 2014
·Declaration of Prakash Gupta (the “Gupta declaration”) dated 19 September 2014
Evidence in Answer
·Declaration of Dieter Dambiec (the “Dambiec 1 declaration”) dated 25 December 2015
·Declaration of Dieter Dambiec (the “Dambiec 2 declaration”) dated 25 December 2015
·Declaration of Dieter Dambiec (the “Dambiec 3 declaration”) dated 25 December 2015
Evidence in Reply
·Declaration of Colm Largey (the “Largey 2 declaration”) dated 27 March 2015
·Declaration of Acarya Nityashuddhananda Avadhuta “Nityashuddh Anand” (the “Anand declaration”) dated 24 March 2015
I heard this matter at the same time as the opposition against trade mark application no. 1524272. The applicants were different legal entities and refused to have the evidence in both proceedings joined together. Therefore, two separate decisions and awards of costs have been issued.
As reflected in earlier decisions made by this Office in regards to various legal entities, some with Mr Dambiec as a director, the evidence of the parties outlines a long standing dispute over the use of various ANANDA MARGA trade marks and other issues unrelated to trade marks. The history between the declarants and their related entities appears to be long-running and contentious.
The Largey 1 declaration 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. This is further supported by the evidence provided in the Anand declaration which I will discuss later in paragraphs 13 to 15.
According to the evidence put forward by the opponent there have been ongoing disputes and divisions within the administrative bodies of Ananda Marga in India. In particular, since around 2003 two rival Ananda Marga administrations exist in Kolkata and Ranchi in India, each claiming legitimacy. The validity of various elections and appointments are the subject of ongoing litigation in India. There have been a number of court proceedings in both India and Australia which have addressed some of the issues between the various competing 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[3] which supports and confirms the information provided by Mr Largey and Mr Anand and of which Mr Dambiec was an unsuccessful defendant. However, Mr Dambiec is correct in stating that this litigation did not directly involve the current applicant which is a separate legal entity, although I note that Mr Dambiec is a director of the applicant.
[3] That judgment refers, inter alia, to:
Mr Largey and Mr Anand declare that the Ananda Marga Universal Relief Team (‘AMURT’) is one of the departments in the Ananda Marga organisation and AMURT was established in 1965 in India. The Largey 1 declaration and the Gupta declaration state that AMURT is now a world-wide organization focusing on disaster relief, education and fundraising for their numerous charitable endeavors in over 30 countries and it registered and has frequently partnered in relief operations with the UN and is coordinated by its Head Office in Maryland, US. Mr Largey and Mr Gupta state that the Australian branch of AMURT, AMURT Ltd., was established in 1986. 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 trade mark no. 769828 for the words ANANDA MARGA[4]. During the period from 1995 to 2001, Prakash Gupta was the Director of AMURT Ltd. Mr Gupta declares that all AMURT work in Australia is coordinated from the opponent’s centres with the Australian Head Office being located in Katoomba, NSW. Therefore, the use of the words Ananda Marga by AMURT is done so with the permission and co-operation of the opponent.
[4] Annexure CL1 accompanying Largey 2 declaration
The applicant’s evidence consists of three declarations made by Dieter Dambiec. Mr Dambiec is critical of the information and evidence provided by the opponent and his main concern appears to be in establishing that anyone can and does use the expression Ananda Marga and that the opponent has never exercised or is capable of exercising any authorizations or control of the name Ananda Marga. Dambiec 2 states that the words Ananda Marga are openly used by many persons around the world. He argues that the combination of the Sanskrit words Ananda Marga mean ‘Path of Bliss’ and amount to a descriptive term that literally describes the practices and philosophy of the Ananda Marga religion.
The information provided by Mr Dambiec is at odds with the information provided in the Anand declaration, Gupta declaration and both Largey declarations. Mr Anand declares that he is one of the longest serving missionaries of Ananda Marga and states that he has been involved in a number of the litigations between the opponent and other entities. Mr Anand gave testimony in the Federal Court case VID 208 of 2010, Ananda Marga Pracaraka Samgha Ltd. & Others (Plaintiffs) vs Sunil Kumar Singh Tomar & Others (Defendants) of which Mr Dambiec was a Defendant. Mr Anand’s testimony was that Ananda Marga is a religion governed by committees at all levels and not a hierarchical religion with a supreme authority figure. Mr Anand’s evidence on the structure of the Ananda Marga philosophy and organization was accepted as authoritative by the judge in that matter and that same evidence of Ananda Marga being a disciplined, organized and coherent global organization of which AMPS is inseparable from the Ananda Marga movement[5] is before me. Mr Anand further points out that Mr Dambiec is now contradicting his earlier assertions before the Courts that Ananda Marga was a hierarchical religion with a supreme authority figure and is currently stating for the purposes of these opposition proceedings that Ananda Marga is a disassociated or loosely associated movement.
[5] Annexure AN1 accompanying the Anand declaration
Mr Anand declares that AMPS is inseparable from the Ananda Marga movement, that it is the only vehicle of the Ananda Marga movement, and was intended as such by its founder, Shri PR Sarkar. Mr Anand states:
I understand that Ananda Marga Pracaraka Samgha Ltd. is the interface between Ananda Marga in Australia and the legal structures of Australia. This arrangement, whereby Ananda Marga registers according to the legal provisions of the country it’s operating in, is normal and a great number of such registrations exist throughout the world. The aim of these registrations is to enable Ananda Marga to function, not to create a separate entity with identical aims and objectives. In practice, the registered body deals with legal matters while the informal Ananda Marga operates under a set of governance procedures common to Ananda Marga throughout the world. These are largely contained in two booklets called Carya Carya 1 & 2. AN 2 shows excerpts from Carya Carya 1 and Carya Carya 2.
Shri Sarkar regarded his spiritual and social philosophy as a resource for individuals and society. In it, he addressed the ills of modern life, prescribing meditation and social service as a remedy for alienation, and an expanded concept of humanism, that he called Neo-humanism, as a foundation for global society.
The success of Ananda Marga from its foundation in 1955 to the present is due to Shri Sarkar’s unwavering dedication to the organisation that he founded, expanded and supervised until his passing in 1990.
Shri Sarkar believed in system and this is reflected in the way he structured the organisation and planned its expansion. From my personal experience of him, I can say that he demanded a systematic approach to the mission throughout the organisation.
He created departments of Ananda Marga to focus on: propagation of the ideology and spiritual practice; socio-economic transformation; advancing intellectual understanding, particularly of the subtle mental sphere or intuition; women’s welfare; disaster relief and development; animal and plant rights; education… to mention a few. These departments function within Ananda Marga and account for most of Ananda Marga’s activity.
Mr Anand’s evidence supports and confirms the information provided in the Gupta and Longey declarations regarding the structure of the Ananda Marga organisation. It also supports and confirms that the opponent is the representative of the Ananda Marga organisation within Australia. The opponent’s evidence demonstrated that it has continuously used a number of various trade marks bearing the words Ananda Marga and I have reproduced them below:
ANANDA MARGA
Ananda Marga Publications
(collectively called “Ananda Marga trade marks”)
Discussion
Section 60 - Reputation in Australia
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.
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.
I note that the applicant has argued that there is no overlap in the services and that “there is no relationship or connection of any identified trade mark to the services in trade mark 1582023. Therefore, the applicant’s trade mark 1582023, in respect of its specified services, before its priority date is not similar to any other trade mark that has an acquired reputation in Australia”. 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 services claimed by the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar.
It is now for me to determine if the opponent has acquired a reputation in Australia for its Ananda Marga trade marks which is sufficient to establish that use of the Trade Mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating prior use, the opponent’s Ananda Marga trade marks need 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
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: …
To this end the opponent has provided a table outlining the income received by the opponent from sales of its products and services and charitable fundraising activities since 1996 until 2013. It similarly provided the figures on its expenditure on charitable fundraising services including missionary support and special fundraising events during the same period of the time[7]. These figures are reasonable. I also note that the opponent accepts donations in the form of labor, time and goods which are not represented in financial statements and bank account statements but in the form of statements from volunteers and news articles[8].
[7] Confidential annexure CL-20 accompanying the Largey 1 declaration
[8] Annexures PG-1 and PG-2 accompanying the Gupta Declaration
An article from the first newsletter of a/n AMURT News article dated July 1997 provides additional information demonstrating the opponent’s fundraising and engagement in charity work in Australia under its Ananda Marga trade marks[9]. The opponent’s evidence included a number of dated documents including updates and news on charitable causes it supported and catalogues for the sale of clothing to support its charitable endeavours. Each of them prominently featured the Ananda Marga trade marks usually in combination. The opponent’s fundraising activities and voluntary workshops for raising awareness of Ananda Marga in the community include Indian Cooking Classes, workshops of agriculture, small scale manufacturing and cooperative enterprises[10], This evidence demonstrates that the opponent has used its Ananda Marga trade marks extensively in its fundraising activities in Australia over the course of around 20 years[11] and normally a number of its trade marks are used together - from the plain text trade mark to the AMURT and AMURTEL trade marks.
[9] Annexure PG-2 accompanying the Gupta Declaration
[10] Annexure CL-13 accompanying the Largey 2 declaration
[11] Annexures CL-10 and CL-19 accompanying the Largey 1 declaration
The opponent also produced a number of exhibits including receipts for book sales through the opponent’s Ananda Marga centres which retail its Ananda Marga branded books[12], along with evidence of its sale of clothing under its ANANDA MARGA trade mark[13] and Indian Cooking classes[14]. It is also clear from the evidence provided that the opponent has engaged in significant and continuous activities to raise awareness of itself and its charitable endeavors under the Ananda Marga trade marks. The broad range of supporters and donations (in their various forms) listed as well as the broad and eclectic range of publications the opponent has appeared in and produced over the years indicates a pervasive reputation for its charitable and fundraising services within Australia and more broadly, across the world.
[12] Annexure CL7 accompanying the Largey 2 declaration, Annexures CL-14, CL-15, CL-16 and CL-17 accompanying the Largey 1 declaration
[13] Annexure CL 8 accompanying the Largey 2 declaration
[14] Annexure CL-10 accompanying the Largey 1 declaration
I am satisfied that the opponent has established the existence of a significant reputation in Australia for its Ananda Marga trade marks before the priority date of the Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark would be likely to deceive or cause confusion. While section 60 does not require a finding that the respective trade marks are deceptively similar, similarities between the trade marks and the goods and services of interest to the parties can increase the likelihood that use of the Trade Mark would cause deception and confusion.
Overall I consider that, given the reputation evidenced by the opponent in its Ananda Marga trade marks, a significant number of consumers would at the very least experience a reasonable doubt[15] as to the existence of some sort of connection between the opponent’s Ananda Marga trade marks and the Trade Mark if it were used to the extent of all of the services listed in the opposed application.
[15] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5
In considering the opponent’s Ananda Marga trade marks it is clear the words Ananda Marga are the memorable and striking elements in them. I also note that the AMURT Ananda Marga Universal Relief Team trade mark is structured with the letters AMURT in larger text atop the words ‘Ananda Marga Universal Relief Team’ contained within a diamond border with globe device. The word AMURT is simply and obviously the acronym comprised of the first letters of the words ‘Ananda Marga Universal Relief Team’ as seen directly below it.
The Trade Mark is for the letters AMUS in larger text atop the words ‘Ananda Marga Universal Stores’ within a flower device. The acronym AMUS is also clearly comprised of the first letters of ‘Ananda Marga Universal Stores’ which appears below it, serving to further emphasis that it is an acronym. The opponent’s AMURT trade mark and the Trade Mark all contain the words ‘Ananda Marga Universal’ followed by relatively descriptive words such as ‘Stores’ and ‘Relief Team’.
I consider that adopting a similar structure to the opponent’s trade marks in using an acronym along the top of the trade mark with the same and memorable words Ananda Marga and Universal underneath the acronym only serves to emphasise the similarities between the respective trade marks. These similarities 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.
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
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.
I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no. 1582023.
Costs
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
29 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).
0
10
0