Aquarian Foundation, Inc v Bruce Lowndes

[2024] ATMO 88

TRADE MARKS ACT 1995

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

Re:Opposition by Aquarian Foundation, Inc to registration of trade mark application number 2155850 (class 41) – SPIRITUALISM AUSTRALIA & Device - in the name of Bruce Lowndes.

Delegate:

Timothy Brown

Representation:

Opponent: Jannifer Werner.

Applicant: Self-represented.

Decision:

2024 ATMO 88

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 43, 44, 58, 58A, 60, 61, 62 and 62A considered – no grounds established – trade mark to proceed to registration.

Background

1. This decision concerns an opposition under section 52 of the Trade Marks Act 1995 (Cth)[1] brought by Aquarian Foundation, Inc (‘Opponent’) to the registration of the following trade mark in the name of Bruce Lowndes (‘Applicant’):

   [1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Trade mark number	2155850
Trade mark	(‘Trade Mark’)
Filing date	15 February 2021
Specification	Class 41: Religious education; Religious educational services; Publication of educational texts; Publication of educational materials; Provision of information relating to education; Provision of facilities for education; Provision of education services via an online forum; Provision of education courses; Educational services; Educational seminars; Educational research; Educational instruction; Education services; Adult education; Adult education services (‘Applicant’s Services’)

1. Following examination, the Trade Mark was accepted for registration and then advertised for opposition on 16 July 2021.

2. The Opponent filed a Notice of Intention to Oppose on 11 August 2021 followed by a Statement of Grounds and Particulars on 31 August 2021. The Applicant filed a Notice of Intention to Defend the opposition on 29 March 2022.

3. The Opponent filed evidence in support of the opposition on 5 July 2022. The Applicant filed evidence in answer on 27 September 2022. The Opponent filed evidence in reply on 6 December 2022.

4. Following the end of the evidence stages, the Opponent requested an oral hearing. This matter was heard before me on 2 February 2024. The Opponent was represented by Jannifer Werner of the Opponent. The Applicant did not appear or file written submissions.

Grounds, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP are sections 42(b), 43, 44, 58A, 58, 60, 61, 62 and 62A.

2. The Opponent bears the onus of proof.[2] To succeed in its opposition the Opponent must establish at least one of the grounds of opposition. The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the filing date of the Trade Mark, except for grounds where a priority date is required. In this matter both the filing date and priority date are the same, 15 February 2021 (‘Relevant Date’).

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The following evidence was filed:

   Evidence in Support

• Declaration of Jannifer A. Werner, President of the Board of Directors of the Opponent, made on 4 July 2022 (‘Werner’) with Exhibits A1 to H2.

  Evidence in Answer

• Declaration of Bruce Kimberley Lowndes, also known as Sri Sunkara Sankacharya, made on 27 September 2022 (‘Lowndes’) with exhibits.

  Evidence in Reply

• Declaration of Jannifer A. Werner made on 12 January 2023 (‘Werner 2’) with Exhibits 1 to 13.

1. As an initial observation, I note that significant portions of both parties’ declarations are in the form of submissions rather than evidence. These submissions are not evidence and have not been included in the summary of the evidence below. The Werner Declarations also contain numerous accusations and allegations of fraud and potential criminal activity that have no relevance to the grounds on which the registration of the Trade Mark is opposed. While I have reviewed the entirety of the Werner Declarations, I have given the material that pertains to these accusations no weight unless relevant to a ground of opposition. The summary of the evidence below focuses on the information relevant to the grounds of opposition to the registration of the Trade Mark.

Opponent

1. The Opponent is a non-profit religious institution based out of the United States of America that was founded by Keith Milton Rhinehart (‘KMR’) in 1955.

2. The Opponent is the owner of the following trade mark registrations (collectively, ‘Opponent’s Trade Marks’):

Trade Mark No.	Trade Mark	Priority Date	Goods & Services
2044020	CHURCH OF HIGHER SPIRITUALISM (‘2044020 Mark’)	16 October 2019	Class 45: Conducting religious ceremonies; Ministerial services (religious); Organization of religious meetings; Pastoral care (religious services); Religious services; Spiritual or religious counselling
2044019	KEITH MILTON RHINEHART SACRED TEACHINGS (‘2044019 Mark’)	16 October 2019	Class 9: Cassettes containing sound recordings; Films for sound recordings; Record discs bearing sound recordings; Records bearing sound recordings; Sound recordings; Sound recordings in the form of cassettes; Sound recordings in the form of discs (disks); Sound recordings in the form of phonograph records; Sound recordings in the form of tapes; Sound recordings on magnetic tapes Class 45: Ministerial services (religious); Organization of religious meetings; Religious services; Spiritual or religious counselling

1. According to the Werner, Spiritualism is recognised as a worldwide religion that was established in the United States of America in 1848. Ms Werner declares that the Opponent has used the expression ‘Higher Spiritualism’ since 1977 to identify the Opponent’s spiritual teachings, which were initially developed by KMR.

2. Ms Werner declares that the Opponent has acquired a positive reputation in Australia since the mid-1990s.[4] Specifically, Ms Werner states that the Opponent has provided its teachings in Brisbane since 1997.

   [4] Werner [13].

3. Ms Werner explains that the Opponent advertises its services through various websites and social media sites, but does not advertise its goods for sale, or otherwise make its goods available digitally online.[5]

   [5] Ibid.

4. Werner describes an ongoing dispute between the Opponent and Mr Lowndes. According to Werner, the Opponent has had ‘a long and negative history with the Applicant’.

5. Exhibited to Werner are screenshots of the Applicant’s website at (‘Applicant’s Website’).[6] Werner claims that the Applicant’s Website advertises for sale without permission the Opponent’s goods and services.[7]

   [6] Ibid B1-19.

   [7] Ibid [9].

6. The details of the following trade mark application are exhibited to Werner:

   Trade mark number:       659256

   Trade mark:      (‘659256 Mark’)

Goods:  Class 16: Church religious teachings

1. Trade mark application 659256 lapsed on 22 June 1997.  

2. The owners of the 659256 Mark were the Higher Spiritualism – Everlasting Trust and Keith Milton Rhinehart. Ms Werner alleges that trade mark application 659256 was applied for by the Applicant in the owners’ names without the Opponent’s permission or knowledge.[8] According to Werner, the trefoil symbol featured in 65256 Mark has been exclusively used by the Opponent since November 1975, and in Australia since 1995.[9] However, Ms Werner claims that this symbol is now being used on the Applicant’s Website without the Opponent’s permission.[10] Examples of the trefoil symbol being used on the Applicant’s Website are exhibited to Werner.[11]

   [8] Ibid [11].

   [9] Ibid [10].

   [10] Ibid.

   [11] Ibid D-1.

3. According to Werner, the Applicant previously registered the following trade mark under the name ‘Church of Higher Spiritualism, Inc’:

   Trade mark number: 784113

   Trade mark:   (‘784113 Mark’)

   Services:  Education in spiritualism

4. The 784113 Mark was not renewed and was later removed from the Register in 2009. Ms Werner claims that the 784113 Mark is another example of the Applicant using the Opponent’s intellectual property without the Opponent’s permission.

5. Regarding ongoing court matters between the party in the United States of America, Werner 2 notes that proceedings between the parties are pending and ongoing.[12]

   [12] Werner 2 Exhibit 1.

Applicant

1. Mr Lowndes registered Spiritualism Australia as a business name initially in 2018, and then again in 2020. An ASIC extract is exhibited to Lowndes showing registration of the Applicant’s business name.

2. The Applicant offers spiritual teaching and teaching material via the Applicant’s Website. A screenshot of the Applicant’s Website is exhibited to Lowndes.

3. Mr Lowndes claims that he was granted exclusive license to use KMR’s spiritual and teaching material. Mr Lowndes exhibits a letter signed by KMR entitled ‘Legal Permission to Use Copyrighted Material’ granting him a license to use KMR’s copyrighted materials.

4. Mr Lowndes explains that the Applicant and the Opponent have been involved in ongoing court proceedings in the United States of America from 2019 to June 2022 concerning copyright infringement.[13] Exhibited to Lownes is a motion for summary judgement and a decision involving the parties from the United States District Court Western District of Washington.

   [13] Lowndes [7].

5. Also exhibited to Lowndes is a copy of Aquarian Foundation, Inc V Domain Privacy/Richard Stewart/Sri Sunkara Sankacharya, aka Rev. Bruce Kimberley Lowndes, aka KIM Case No. D2021-4176, a WIPO Administrative Panel Decision concerning a dispute over the domain names ‘higherspirtualism.com’ and ‘higherspirtualism.org’.

Discussion and Reasons

Section 44

1. Section 44 relevantly provides:

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a)    the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of services that are similar to the Applicant’s Services, or goods that are closely related to the Applicant’s Services.

2. The Opponent relies on the Opponent’s Trade Marks as the basis for this ground of opposition.

3. I note that both the Opponent’s Trade Marks have an earlier priority date than the Trade Mark and are held in name of another person.

Comparison of Trade Marks

1. The Trade Mark and the Opponent’s Trade Marks are reproduced below:

Trade Mark	Opponent’s Trade Marks
CHURCH OF HIGHER SPIRITUALISM (‘2044020 Mark’)
KEITH MILTON REINHART SACRED TEACHINGS (‘2044019 Mark’)

1. The Opponent’s SGP focused on deceptive similarity. For completeness, I am satisfied that the Trade Mark is not substantially identical with either of the Opponent’s Trade Marks. Whether two trade marks are substantially identical is determined by a side-by-side comparison having regard to the essential features of the trade marks and the total impression of resemblance or dissimilarity that emergers from that comparison.[14] In this instance, there is little in common between the trade marks. Both the Trade Mark and the Opponent’s Trade Marks include additional essential elements, such as the device in the Trade Mark, the name ‘KEITH MILTON REINHARDT’ and the words ‘CHURCH OF HIGHER’. When considered side-by-side these additional elements are sufficient to differentiate the trade marks. I am satisfied that there is not an overall impression of resemblance between the Trade Mark and either of the Opponent’s Trade Marks.

   [14] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

2. Turning to whether the Trade Mark is deceptively similar to either of the Opponent’s Trade Marks. Section 10 defines ‘deceptive similarity’ in the following terms:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[15]

   [15] [1963] HCA 66, [13].

2. The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[16] Accordingly, an allowance is made for imperfect recollection of the trade marks.[17] The impression comes from the trade marks in their entirety,[18] and is informed by the look, sound and ideas conveyed by the trade marks.[19]

   [16] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [17] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [18] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [19] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

3. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[20] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the services come from the same trade source.[21]

Trade mark number 2044020 (‘2044020 Mark’)

[20] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

[21] Ibid.

1. Visually, the trade marks differ significantly. The 2044020 Mark consists of the words ‘CHURCH OF HIGHER SPIRITUALISM’. In contrast, the Trade Mark is comprised of the words ‘SPIRITUALISM AUSTRALIA’ and a prominent device depicting a person with their left hand raised to their temple. The word ‘SPIRITUALISM’ is the sole element of visual and aural similarity between the trade marks. Any similarity that might stem from the shared element is further mitigated by the contrasting placement of the word in the trade marks. In the 2044020 Mark ‘SPIRITUALISM’ is located at the termination of a four-word phrase. Conversely, ‘SPIRITUALISM’ is the first word of the Trade Mark. This placement also serves as an obvious point of aural distinction between the trade marks.

2. Conceptually, in the context of the Applicant’s Services, which include various religious instruction and education services, the term ‘spiritualism’ is descriptive of the subject matter or nature of those religious and spiritual services. The presence of a common descriptive element in the trade mark does not mean the element should be ignored,[22] but it does mean other distinctive elements in the trade marks may be more memorable. In this instance, the device is likely to have a more pronounced impact in the Trade Mark.

   [22] Broadhead’s Application (1950) 10 RPC 209, 215 (Lord Evershed MR).

3. For these reasons, I am not satisfied that the 2044020 Mark is deceptively similar to the Trade Mark.

Trade Mark Number 2044019 (‘2044019 Mark’)

1. The 2044019 Mark is comprised of the name ‘KEITH MILTON RHEINHART’ with the words ‘SACRED TEACHINGS’. The 2044019 Mark and the Trade Mark share no elements in common. In my view, there is no basis any visual, aural or conceptual similarity with the elements of the Trade Mark.

2. Conceptually, consumers are likely to construe ‘KEITH MILTON RHEINHART’ as a name and likely the source of the ‘SACRED TEACHINGS’.  Consumers familiar with either parties’ religion may draw some connection between ‘Keith Milton Rhienhart’ and ‘SPIRITUALISM’. However, in my view, this is not likely to result in any real tangible danger of confusion. Furthermore, any potential confusion would not derive from the Trade Mark itself, but from circumstances beyond what has been entered into the Register.

3. Bearing the above in mind, I am not satisfied there is real or tangible danger of confusion between the Trade Mark and either of the Opponent’s Trade Marks. The visual, aural, and conceptual differences between the trade marks are such that, even allowing for imperfect recollection, there would not be a real or tangible danger of confusion.

4. The Section 44 ground of opposition has not been established.

Section 58A

1. Section 44(4) allows a trade mark to be accepted because it has been continuously used since before the priority date of the trade mark with which it is substantially identical or deceptively similar. For section 58A to apply, the trade mark must have been accepted by the examiner under s 44(4), or a hearing officer finds during opposition that it is appropriate to apply those provisions. In this matter the Trade Mark was not accepted by the examiner under the provisions of section 44(4). Furthermore, given my finding that the Trade Mark is not substantially identical with, or deceptively similar to, any of the Opponent’s Trade Mark, the provisions of section 44(4) are not available to be applied in this opposition proceedings.  Accordingly, the ground of opposition under s 58A has not been established.

Section 58

1. Section 58 provides:

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

2. Ownership of a trade mark can be established through authorship and first use of a trade mark,[23] or, in the absence of use, a combination of authorship, the filing of an application and an intention to use the trade mark.[24] To succeed in this ground of opposition, the Opponent must establish the following:

   ·     The Trade Mark is identical, or substantially identical, to an earlier trade mark;

   ·     The trade mark upon which the Opponent relies has been used in respect of services that are ‘the same kind of thing’ as the Applicant’s Services; and

   ·     A person other than the Applicant has an earlier claim of ownership based on prior use of the earlier trade mark before the Relevant Date.[25]

   [23] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd. v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).

   [24] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).

   [25] Pham (n 24) [50].

3. The Opponent relies on its use of the Opponent’s Trade Marks as the basis for this ground of opposition. As particularised in the SGP:

   Applicant is not the owner of the trade mark. Spiritualism is a recognized world‐wide religion, which was formally established in 1848 in the United States of America. The religions of Roman Catholicism, Judaism, Hinduism, Christianity, Buddhism, Islam are practiced in many countries including Australia, and none of these religions can be exclusive in ownership in name by any one person or organization. Aquarian Foundation nominates that trade mark #2044020, #2044019 have earlier use for the goods and services identified under Church of Higher Spiritualism. The goods under trade mark  #2044020 and #2044019 are the printed, tape cassettes and CD’s, DVD’s  of the permanent minister of Aquarian Foundation, plus other  materials. The services under trade mark # 2044020 and #2044019 are religious meetings, religious services, and sacerdotal services that are specific and unique to the religion Aquarian Foundation, the Church of Higher Spiritualism.

1. In regard to the Opponent’s initial contention that no party can claim exclusive ownership of a religion, I note that the Trade Mark is not seeking registration for the word ‘Spiritualism’ alone, but rather a composite of the words ‘Spiritualism Australia’ and what otherwise appears to be a distinctive device. The inclusion of the name of a region or a religious movement in a composite trade mark is unlikely to constitute an attempt at exclusive ownership of that religion or movement. In any event, this is not relevant to the consideration of this ground of opposition.

2. Turning to the Opponent’s Trade Marks, in my discussion on the section 44 ground of opposition, I indicated that I do not consider the Trade Mark to be substantially identical to either of the Opponent’s Trade Marks. Additionally, the Opponent has provided no evidence demonstrating use of either of the Opponent’s Trade Marks in Australia before the Relevant Date.

3. For these reasons, I am satisfied that the ground of opposition under section 58 has not been established.

Section 60

1. Section 60 provides:

   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.

2. To establish this ground of opposition, the Opponent must establish:

   • A reputation was acquired by another trade mark in Australia before the Relevant Date; and
   • That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

3. In the SGP, the Opponent particularised this ground of opposition as follows:

   Aquarian Foundation is an internationally known Church, whose spiritual founder and leader, Rev. Keith Milton Rhinehart first used the trade mark Higher Spiritualism in 1995 when members of Aquarian Foundation in Australia established small study groups of the Aquarian Foundation Teachings of High Spiritualism – also known as the Keith Milton Rhinehart Sacred Teachings 2044019/ the Spiritual Teachings of Aquarian Foundation/ the Spiritual Teachings of Real Ascended Masters. The Trade Marks USPTO2440233 and 2440225 are used synonymously with the Church of High Spiritualism in Australia.

4. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[26] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[27]

   [26] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [27] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).

5. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[28] or providing evidence of high volume of sales,[29] advertising expenditure or other promotion of goods or services to which the trade mark applies.[30] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[31]

   [28] Ibid [118].

   [29] McCormick (n 26) [86].

   [30] Ibid.

   [31] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

6. Generally, the relevant reputation must be amongst a significant or substantial number of persons.[32] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[33]

   [32] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [33] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

7. In my view, the Opponent’s evidence falls well short of demonstrating that the trade mark ‘Higher Spiritualism’, or any of the other trade marks referenced in the SGP, had acquired a reputation amongst a substantial number of people in Australia prior to the Relevant Date. Firstly, despite the contention that the Opponent has used the ‘Higher Spiritualism’ trade mark in Australia since 1995, the Opponent has adduced no evidence demonstrating any use of ‘Higher Spiritualism’, or any of its other trade marks by the Opponent in Australia. The only use of ‘Higher Spiritualism’ included in the Opponent’s evidence is the use featured on the Applicant’s Website. Secondly, the Opponent’s evidence contains no information regarding the Opponent’s income, revenue or marketing expenditure. While such information is not necessarily crucial to establishing that a trade mark had acquired a reputation, its absence presents a challenge for the Opponent in terms of demonstrating the extent of any reputation ‘Higher Spiritualism’ may have acquired by its use in Australia. The absence of any examples of marketing or promotion compounds this issue. Werner states that the ‘Opponent advertises it services through various websites and social media sites’.[34] However, the Opponent has adduced no examples of these advertisements, nor does the Opponent’s evidence include any examples of social media promotion. Consequently, the Opponent’s evidence leaves little basis to draw any conclusions regarding the extent of the reputation of the ‘Higher Spiritualism’ trade mark or any of the Opponent’s other trade marks.

   [34] Werner [13].

8. For these reasons, I am not satisfied that at the Relevant Date a reputation in Australia had been acquired by the trade mark ‘Higher Spiritualism’ or by any of the other trade marks referenced in the SGP. Given s 60(a) has not been satisfied, it is not necessary to consider s 60(b). Accordingly, the s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42 relevantly provides:

   An application for the registration of a trade mark must be rejected if:

   …

   its use would be contrary to law.

2. The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) as the basis for the ground of opposition under section 42(b). As particularised in the SGP:

   The Applicant intends to deceptively cause confusion and mislead Australian consumers, and worldwide consumers that trade mark 2155850 is a subsidiary of Aquarian Foundation, the Church of Higher Spiritualism and the Keith Milton Rhinehart Spiritual Teachings. Such conduct is totally deceptive and had already confused consumers into thinking that the applicant’s trade mark has emanated from the same source of Aquarian Foundation in the United States and in Australia. Such conduct and use of trade mark is in contravention of Australian Consumer Law under sections 18 and 29. The use of trade mark 2155850 by the applicant would be contrary to law as it is being used primarily to steal the goods and services and income that is due to Aquarian Foundation.

3. To succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL. [35]

   [35] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

4. The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[36]  The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60.[37]

   [36] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [37] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

5. The Opponent’s SGP claims that the Applicant ‘intends to deceptively cause confusion’ and that the Applicant has ‘already confused customers into thinking that the applicant’s trade mark has emanated from the same source’ as the Opponent. However, the Opponent’s evidence provides no examples of consumer confusion to substantiate this claim.

6. The Opponent submits that the Applicant’s use of the Opponent’s Trade Marks on the Applicant’s Website is likely to create or cause confusion as to the source of the Applicant’s goods and services. However, section 42(b) is concerned with whether use of the Applicant’s Trade Mark would be contrary to law, not with the Applicant’s use of the Opponent’s Trade Marks.

7. The requirements to establish a breach of the ACL are more onerous than section 60. As stated in the discussion on the section 60 ground of opposition, the ‘Higher Spiritualism’ trade mark has not acquired a reputation in Australia. In the absence of such a reputation this ground of opposition cannot succeed.

8. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.

Section 43

1. Section 43 provides:

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. Section 43 requires the Opponent to demonstrate that there is a connotation in the Trade Mark, or a part of it, and that because of the connotation use of the Trade Mark would be likely to deceive or cause confusion.

3. The term ‘connotation’ in the context of section 43, refers to a secondary meaning implied by the trade mark.[38] The likelihood of deception or confusion must stem from the connotation inherent in the trade mark.[39] If no connotation can be identified then section 43 is not engaged, and the Opponent’s opposition under section 43 will fail.

   [38] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J) (‘Pfizer’).

   [39] Ibid.

4. In the SGP, the Opponent particularised this ground of opposition as follows:

   2155850 is used substantially in the same way as the trade mark 659256 applicant fraudulently applied for in 1995. Applicant use of trade mark 2155850 has already confused and deceived customers and the general public into believing that the applicant is authorized to sell or disseminate goods/services – the Keith Milton Rhinehart Spiritual Teachings, and that the applicant’s use of 2155850 is affiliated with and/or emanated from the source, which is Aquarian Foundation, Church of Higher Spiritualism, when it is not.

5. The Opponent does not clearly identify a connotation stemming from the Trade Mark. The Opponent claims that the Trade Mark has caused people to believe that the applicant is authorised to sell KMR’s teachings and that the Trade Mark is associated with the Opponent.

6. The connotation must arise from the trade mark itself.[40] In my view, there is nothing present in the Trade Mark that would connote that Applicant is authorised, presumably by the Opponent, to disseminate KMR’s teachings. Nor has the Opponent adduced any compelling evidence to that effect.

   [40] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [140] (Greenwood, Katzmann, and Rangiah JJ) (‘Primary Health Care’).

7. As to whether there is a connotation associating the Trade Mark with the Opponent, I note that the connotation cannot arise not from comparison with another trade mark.[41] It is sections 44 and 60 that are concerned with whether use of the trade mark would be likely to deceive and cause confusion by reason of similarity with another trade mark or the reputation of another trade mark in Australia. The authorities do recognise that deception or confusion may arise from a perceived sponsorship or endorsement in the name of a well-known institution or celebrity persona.[42] However, the Opponent’s submission does not appear to depend on a connotation arising from the Trade Mark, but upon the Trade Mark’s alleged similarity to the Opponent’s Trade Marks and the potential reputation the Opponent has developed in relation to religious services.

   [41] Ibid.

   [42] See: McCorquodale v Materson [2004] FCA 1247, [60] (Kenny J).

8. In consideration of the above reasons, I am not satisfied that the Trade Mark is likely to deceive or cause confusion because of any connotation in the Trade Mark. The ground of opposition under section 43 of the Act is not established.

Section 61

1. Section 61 relevantly provides:

   (1)  The registration of a trade mark in respect of particular goods ( relevant goods ) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods ( designated goods ) originating in:

   (a)  a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

   (b)  a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

   if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.

   (2)  An opposition on a ground referred to in subsection   (1) fails if the applicant establishes that:

   (a)  the relevant goods originated in the country, region or locality identified by the geographical indication; or

   (aa)  the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or           

   (b)  the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or

   (c)  the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

   (i)  1   January 1996; or

   (ii)  the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

   whichever is the later; or

   (d)  if the registration of the trade mark is being sought in respect of wine or spirits ( relevant wine or spirits )--the sign is identical with the name that, on 1   January 1995, was, in the country in which the relevant wine or spirits originated, the customary name of a variety of grapes used in the production of the relevant wine or spirits.

2. In the SGP, the ground of opposition under section 61 is particularised as follows:

   The applicant falsely represents that the goods associated with the trade mark 2155850 originate in Australia, when the origin of the goods are from Seattle, Washington, United States of America. Aquarian Foundation has not authorized the applicant as an agent or licensee of Aquarian Foundation. Aquarian Foundation has not authorized its goods to be sold in Australia.

   The goods and services are associated with the Aquarian Foundation, Church of Higher Spiritualism study group  at 404 Bennetts Road, Norman Park, Brisbane,  QLD  4170 Australia, and the Aquarian Foundation, Inc. 315 15th Avenue East , Seattle, WA 98112, United States of America, and not online from an obscure location in St Helens, Tasmania. 

3. The expression ‘geographical indication’ is defined in section 6 in the following terms:

   geographical indication, in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their region of origin.

4. There are several issues with the Opponent’s submission. First, despite the remarks in the SGP, the trade mark application is made in relation to services in Class 41, not goods. This is an issue for the Opponent because section 61 applies to only to ‘a trade mark in respect of particular goods’ rather than services. Second, it is not sufficient for the Opponent to merely assert that a sign contains a geographical origin. A geographic indication is not the same as an indication of the geographical origin of a good. It is necessary for the Opponent to establish that the Trade Mark includes a ‘geographical indication’ within the meaning of section 6. This requires persuasive evidence, and the Opponent has provided no evidence that the term ‘Australia’ is a geographical indication, or that would otherwise suggest that ‘Australia’ identifies particular goods as having a given quality, reputation or other characteristic that could be attributed to the geographical region. Finally, whether or not the Applicant’s Services are provided from Tasmania has no bearing on whether the Trade Mark contains a geographic indication. The geographic indication must be contained within the Trade Mark itself.

5. Consequently, I am not satisfied that the Trade Mark includes a geographical indication.  

6. The section 61 ground of opposition has not been established.

Section 62A

1. Section 62A provides:

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

2. In the SGP, the Opponent particularised the s 62A ground of opposition as follows:

   In 1995, the applicant fraudulently applied for trade mark 659256 alleging falsely that the application was on behalf of the Aquarian Foundation, Inc and Keith Milton Rhinehart. Trade mark 659256, depicted a map of Australia, and within the map of Australia, an Aquarian Foundation symbol (trefoil) which has been used exclusively and specifically by Aquarian Foundation worldwide since 1955. The Applicant is in bad faith applying for trademark 2155850 because the Applicant is prohibited from using the opponent’s trade mark 2044020, and the applicant is prohibited from using 659256. The Applicant has in bad faith come up with a trade mark that will allegedly give him credibility in Spiritual circles to sell Aquarian Foundation Church of High Spiritualism’s goods/services, namely the Keith Milton Rhinehart Sacred Teachings.

3. ‘Bad faith’ is not defined in the Act. The meaning of ‘bad faith’ was considered in Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty:

   For an assessment of “bad faith” as it applies to such a situation it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application. In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the “reasonable man” standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.[43]

   [43] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty [2009] ATMO 26, [11] (Hearing Officer Nancarrow).

4. In DC Comics v Chequout Pty Ltd, Bennett J summarised the principles the principles for bad faith:

• Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

• Bad faith does not require dishonesty.

• Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

• The question is whether the conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

• Mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[44]

  [44] [2013] FCA 478, [62].

1. Whether the application to register the Trade Mark was made in bad faith requires the Delegate to first consider the Applicant’s knowledge at the time of making the application and then decide whether the Applicant’s behaviour fell short of acceptable commercial standards.

2. The Opponent’s position is based on the Applicant’s alleged conduct in relation to 659256 Mark.  It is suggested by the Opponent that the trade mark application is a result of the Applicant being precluded from using the 659256 Mark or the Opponent’s Trade Marks. The Opponent claims regarding the Applicant’s conduct in relation to the 659256 Mark are unsubstantiated. I acknowledge that given the Applicant’s history with the Opponent, that the Applicant was likely aware of the Opponent’s Trade Marks. However, awareness of another trade mark when an application is made does not, by itself, constitute bad faith. Furthermore, noting the differences between the Trade Mark and the Opponent’s Trade Marks discussed previously, I do not consider it unreasonable that the Applicant would proceed with the trade mar application despite having knowledge of the Opponent’s Trade Marks.

3. The Opponent also submits that the Applicant filed the application to register the Trade Mark in an attempt to secure trade mark rights over the world-wide religion, Spiritualism. By analogy, the Opponent equates the trade mark application with an attempt to register the word ‘Catholicism’. I do not find this submission persuasive. The Trade Mark is not comprised solely of the word ‘Spiritualism’. Furthermore, any rights afforded to the Applicant upon registration of the Trade Mark are only those provided for in the Act.

4. As there are no other aspects of the Opponent’s evidence that point to any activity or action taken by the Applicant that might be indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious in character, I am not satisfied that the application for the Trade Mark was made in bad faith.

Section 62

1. Section 62 relevantly provides:

   The registration of a trade mark may be opposed on any of the following grounds:

   …

   (b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

2. In the SGP, the Opponent particularised this ground of opposition as follows:

   Applicant is falsely representing in his website that there is a substantial association with Aquarian Foundation, Church of High Spiritualism and the Keith Milton Rhinehart Spiritual teachings. Applicant falsely claims that Spiritualism Australia is an authorized agent or subsidiary. Applicant has misrepresented his statements on his application by falsely indicating that he has goods and services that are entirely interdependent of any other organization, and which must be protected by trade mark, when in fact bulk of the goods and services on his website (formerly promoted as Higher Spiritualism) comprise of Aquarian foundation copyrighted materials. In fact, the applicant has indicated that he has over 500 titles of Aquarian Foundation copyrighted materials, which must be secreted from Aquarian Foundation for fear of legal reprisals from Aquarian Foundation, YouTube, Vimeo, vk.com and other sites.

3. To establish the ground of opposition under section 62(b), the Opponent must demonstrate that in applying for the registration of the Trade Mark that the Applicant filed representations or evidence that was false in material particulars and that due to those false representations or evidence the trade mark was accepted for registration.

4. The Opponent’s basis for this ground of opposition relies on the contention that the Applicant falsely claimed an association with the Opponent and that the Applicant has made statements in the Application that its goods and services derive from the Opponent or the Opponent’s copyrighted materials. However, the Opponent has not identified where the Applicant has made these claims in the Application, nor was any evidence filed by the Applicant prior to acceptance of the trade mark application. Consequently, this ground of opposition falls at the first requirement. The Opponent, therefore, has failed to establish this ground of opposition.  

Decision

1. Section 55(1) relevantly provides:

   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.

2. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark 2155850 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. Both parties sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

3 May 2024