Aquarian Foundation Inc v Steven Penson

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Aquarian Foundation INC to application under section 92 of the Trade Marks Act 1995 (Cth) by Steven Penson to remove trade mark number 2044021 (class 45) - Aquarian Foundation - in the name of Aquarian Foundation INC

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Self-represented

Applicant: Self-represented

Decision:

2024 ATMO 153

Trade Marks Act 1995 (Cth) – section 96 opposition - s 92(4)(a) application for full removal – no intention to use or use established - discretion not exercised– trade mark to be removed

Background

On 17 September 2022, Steven Penson (‘Applicant’) filed an application under s 92(4)(a) of the Trade Marks 1995 (Cth)[1] (‘Removal Application’) for the complete removal of the following registered trade mark in the name of Aquarian Foundation INC (‘Opponent’)[2]:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
[2] While the Removal Application has only been filed under s 92(4)(a), the Applicant’s written and oral submissions incorrectly refer to the Removal Application also including the s 92(4)(b) ground. The Opponent’s submissions are also under the same misconception.

Number

Trade Mark

Date of filing

Services

2044021

Aquarian Foundation

16 October 2019

(‘Filing Date’)

Class 45: Conducting religious ceremonies; Ministerial services (religious); Organization of religious meetings; Pastoral care (religious services); Religious services; Spiritual or religious counselling

(‘Services’)

On 26 September 2022, the Opponent filed a Notice of Intention to Oppose removal of the registration. On 1 October 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 23 November 2022.
The Opponent filed Evidence in Support (‘EIS’) on 6 December 2022 and 6 February 2023. The Applicant filed Evidence in Answer (‘EIA’) on 7 June 2023. The Opponent filed Evidence in Reply (‘EIR’) on 4 August 2023.
The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent requested a hearing by video conference and the Applicant requested a hearing by telephone. I heard the opposition in my capacity as a delegate of the Registrar of Trade Marks on 16 August 2024. Providing submissions for the Opponent was Jannifer Werner, president of the Opponent (observed by Cathy Reid, treasurer of the Opponent). The Applicant’s submissions were made by Nancy Lee of the Applicant. The parties’ oral submissions were supplemented by written submissions filed prior to the hearing.
Evidence
5. The following EIS was filed:
- Declaration of Jannifer A Werner dated 20 November 2022 with Exhibits 1, 1A, 1B, 2 to 4 and 5A to 5E (‘Werner’).
- Second declaration of Jannifer A Werner dated 5 February 2023 with Exhibits 6A. 6B and 7 (‘Werner 2’).
6. The following EIA was filed:
- Declaration of Steven Penson, owner of the business Aquarian Australia, dated 5 June 2023 with Exhibit A (‘Penson’).
7. The following EIR was filed:
- Third declaration of Jannifer A Werner dated 3 August 2023 (‘Werner 3’).
Legal Framework
Part 9 of the Act deals with removal of trade marks from the Register for non-use.
In respect of this matter, s 92(4)(a) relevantly provides (notes omitted):
Application for removal of trade mark from Register etc.
(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)...
In the case of an allegation of non-use under s 92(4)(a), s 100(1)(a) provides that the Opponent bears the onus of rebutting any allegation on the balance of probabilities[3] that, on the Filing Date, the Opponent had no intention to use, authorise the use of or assign to a body corporate, the Trade Mark in relation to the Services. Alternatively, the Opponent must establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used by the Opponent, in good faith, in relation to the Services, at any time in the period ending one month prior to the day on which the Application was filed. As the Removal Application was filed on 17 September 2022, this date is prior to 17 August 2022 (‘Relevant Period’).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ), albeit in respect of oppositions under s 52 of the Act.
If the Opponent establishes either the requisite intention to use the Trade Mark at the Filing Date or relevant use of the Trade Mark during the Relevant Period, the opposition to removal will succeed.
The intention to use the Trade Mark in good faith and/or the actual use of the Trade Mark in good faith required to be demonstrated by the Opponent is ‘use as a trade mark’. Section 17 defines a trade mark as ‘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’. Therefore, use as a trade mark is use of a sign as a badge of origin.[4]
Use in the course of trade means an actual dealing in the services, an offer to provide the services, or an intention to provide the services manifested through preparatory steps showing an objective commitment to use the trade mark.[5]
In Woolly Bull Enterprises Pty Ltd v Reynolds,[6] Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’.
Use of the Trade Mark by an authorised user, as defined by s 8, is taken to be use of the Trade Mark by the Opponent.[7]
[4] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).
[5] Christou v Tonch [2008] ATMO 24; see also Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261.
[6] [2001] FCA 261, [16].
[7] s 7(3).
Further, I also have a general discretion under s 101(3) to allow the Trade Mark to remain registered even if the Opponent does not establish either the requisite intention to use or relevant use of the Trade Mark.
Summary of EIS
Werner states that the Opponent is a non-denominational spiritualist church founded in Seattle, Washington in 1955. Werner claims that the Trade Mark has been in use since this date in the USA and since 1995 in Australia, and claims that the Opponent has branches and study groups in the USA and international study groups, including the Aquarium Foundation study group in Brisbane (‘Study Group’). Werner states that the leader of the Study Group is Jeff Lohse and the Study Group follows the protocol for religious meetings, religious ceremonies and services and spiritual counselling established by the Opponent.
Werner declares that the Trade Mark continues to be used by the Study Group and that the Study Group advertises its religious meetings and where to study the Opponent’s teachings under the Trade Mark through:
·its website based in Australia at which is claimed to link to the Opponent’s US websites and Werner provides no evidence that the website is based in Australia or that the website links to the Opponent’s US websites. Werner exhibits an undated printout from the website (‘Undated Website Printout’). While the printout is largely illegible, and unrecognisable as a website printout, I note the use of Aquarian Foundation Brisbane Australia.
·word-of-mouth, brochures and social media. No supporting evidence is provided.
·flyers. Werner exhibits an undated flyer (marked copyright 1997 – 2022) which states:

(‘Undated Flyer’).
19.     Werner claims that the Opponent’s Trade Mark is used on church materials provided to the Study Group including CDs, cassette tapes and printed publications containing the religious teachings of the Opponent. Werner exhibits undated photographs of:
·two cassettes displaying the Trade Mark (marked copyright 2001)
·an undated flyer referring to the Trade Mark with an address in the US
·a CD referring to the Trade Mark (marked copyright 2017).
20.     Werner 2 claims that the Opponent advertises numerous worship centers including the Study Group on the websites and and exhibits:
·an undated photograph which is either from the or website which states:
(‘Undated Photograph’).
·an undated printout which is either from the or website.
21.     Werner 2 refers to active links to the websites and but no links are provided.
Summary of EIA
22.     Mr Penson claims to have attempted to visit the website and received a message stating ‘server not found’ and exhibits a copy of the result. I note that the exhibit provides the result for the domain name rather than The remainder of Penson consists of comments and opinions on Werner and Werner 2 which do not constitute evidence and have no probative value together with information and materials which have no relevance to the matter before me.
Summary of EIR
24.     Werner 3 claims that the Opponent authorised the leaders of the Study Group, Rev. Jeffrey Lohse and Prema Lohse, to create the website, which is claimed to link to the Opponent’s website. No support is provided for these claims.
25.     The remainder of Werner 3 consists of comments and opinions on Penson and the Applicant which do not constitute evidence and have no probative value nor relevance to the matter before me.
Discussion and Reasons
26.     The Opponent bears the onus of establishing that it had the requisite intention to use the Trade Mark at the Filing Date, but that burden is not high. The filing of the Trade Mark is prima facie evidence of its intention to use the Trade Mark in respect of all of the Services claimed.[8] Once the Opponent has satisfied the initial onus, the onus then shifts to the Removal Applicant to establish the Opponent’s lack of intention.[9]
[8] Aston v Harlee Manufacturing Co[1960] HCA 47 (Fullagar J) (‘Aston’); Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).
[9] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [118] (Burley J).
27.     In Secondment Pty Ltd v MCI Group Holdings SA,[10] the Hearing Officer Wilson observed:
The act of applying for a trade mark is prima facie evidence of an intention to use it, or as Dodds Streeton J phrased it in Suyen Corporation v Americana International Ltd: “[A]s possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.” Taking the intention arising from the act of filing into account, the onus may be shifted to the Applicant by making a positive statement regarding its intention to use the trade mark.
[10] [2013] ATMO 71, [9] (citations omitted).
28.     In Structureco Inc v Starite Distributors Pty Ltd, Hearing Officer Forno said:
Although the opponent to removal does bear the initial onus, in accordance with the legislation, I think that, in the case of applications for removal under s 92(4)(a), where the primary allegation regards the state of mind of an applicant for registration about whether it intends to use a mark in good faith, then that onus is not high. I believe that it is so low that it can be overcome if the opponent or its agent states that it was the case that the applicant for registration had an intention to use the mark in good faith. The onus should then shift to the removal applicant to support its case — perhaps by the production of some evidence which might support a circumstantial case of a lack of good faith, or by some other means.[11]
[11] [2000] ATMO 31,
29.     Wilcox J went further in Nikken Wellness Pty Ltd v van Voorst to state:
I do not think [the Opponent] bears any onus in relation to the application for removal. It is for the applicant for removal […] to persuade Court that the requirements of s 92(4)(a) are satisfied.[12]
[12] [2003] FCA 816, [59].
30.     The SGP, the Opponent’s evidence and the Opponent’s written and oral submissions are silent as to the Opponent’s intention to use the Trade Mark in good faith as at the Filing Date. The most the Opponent provides is a statement in the Opponent’s written submissions that the Opponent registered the Trade Mark in good faith. This statement however is not a statement regarding the Opponent’s intention to use the Trade Mark, rather it is a statement as to the Opponent’s act of filing the Trade Mark in good faith or the act of obtaining its registration in good faith.
31.     The Applicant’s evidence and the Applicant’s written and oral submissions are silent regarding the Opponent’s intention to use the Trade Mark in good faith as at the Filing Date.
32.     Fullagar J observed in Aston v Harlee Manufacturing Co:
[,,,] the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention. Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.[13]
[13] Aston (n 8), [21].
33.     Here there is no statement from the Opponent regarding its intention to use the Trade Mark in any of the SGP, the Opponent’s evidence or the Opponent’s written and oral submissions and the Opponent’s evidence does not satisfy me that there was an intention to use the Trade Mark. The next question is whether the Opponent has discharged its initial onus under s 100(1)(a) and shifted the onus to the Applicant by the mere act of having filed the Trade Mark? In my opinion the answer is no - the Opponent has not discharged its onus.
34.     The Opponent has clearly been put on notice that a lack of intention to use for the Services is an issue in these proceedings. The Opponent has not provided a statement regarding its intention to use the Trade Mark in any of the SGP, the Opponent’s evidence or the Opponent’s written and oral submissions. A party that held a genuine intention to use/authorise/assign a trade mark should at the minimum be able to express what its actual intention was at the time of filing in its SGP or evidence or even its submissions.
35.     I am not satisfied that the act of filing alone is sufficient to discharge the Opponent’s onus that the Opponent had an intention in good faith to use the Trade Mark in Australia in respect of all or any of the Services. The burden may not be high but it is a burden which the Opponent has failed to satisfy as it has provided nothing to support an intention to use the Trade Mark in Australia at the Filing Date.
36.     As the Opponent has not discharged its onus that the Opponent had an intention in good faith to use the Trade Mark in Australia, the next question is whether the Opponent can establish that the Trade Mark (or the Trade Mark with additions or alterations not substantially affecting its identity) was used by the Opponent, in good faith, in relation to the Services, at any time before the Relevant Period.
37.     The SGP provides particulars of the Opponent’s use of the Trade Mark in Australia since 1995 and the Opponent’s evidence alleges use in the Relevant Date.
38.     The Opponent’s submissions claim the following:
·that the Opponent authorised the use of the Trade Mark by the Study Group.
·that the Opponent spends thousands of dollars a year to maintain its numerous websites and domain names
39.     These are newly claimed assertions for which there is no support in the Opponent’s evidence. As a consequence, these statements are not probative and I give them no weight.
40.     In summary, the Applicant’s submissions claim that the Opponent’s evidence does not support use of the Trade Mark in Australia in the Relevant Period.
41.     On my review of the Opponent’s evidence, a number of claims are made with little or no documentary support namely:
·the Trade Mark has been in use since 1995 in Australia – no support.
·the Opponent has a Study Group in Brisbane – support is the Undated Flyer which refers to the Trade Mark and the ‘Brisbane Study Group of Aquarian Foundation’. In addition to being undated, the Opponent provides no evidence of distribution of the flyer at any time in Australia.
·the Study Group follows the protocol for religious meetings, religious ceremonies and services and spiritual counselling established by the Opponent – no support.
·the Study Group advertises its religious meetings and where to study through its website based in Australia at – support includes the Undated Website Printout which refers to Aquarian Foundation Brisbane Australia and the Undated Photograph which shows similar information to the Undated Flyer. There is however no support that the website is based in Australia or that any Australians have ever visited the website.
·the Study Group also advertises its religious meetings and where to study through:
oits website – support is an undated printout from a website but there is no indication that it is firstly a printout from a website and secondly a printout from the website nor whether the website is directed to Australian consumers or has been viewed by Australian consumers.
oword-of-mouth, brochures and social media - no support.
·the Opponent provides CDs, cassette tapes and printed publications containing the religious teachings of the Opponent to the Study Group – support consists of undated photographs of two cassettes displaying the Trade Mark (marked copyright 2001), an undated flyer referring to the Trade Mark with an address in the US and a CD referring to the Trade Mark (marked copyright 2017). The Opponent provides no evidence as to whether these religious teachings were ever distributed to Australia.
·links to the websites and - no links are provided.
42.     The onus is on the Opponent to show use of the Trade Mark in the Relevant Period in good faith. While it is well established that provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use,[14] if a single act of use, or a few instances of use, are relied upon, then they should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[15]
[14] Ibid [17].
[15] Nodoz Trade Mark (1962) RPC 1 (Wilberforce J) (‘Nodoz’); See also E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15 (French CJ, Gummow, Heydon, Crennan and Bell JJ).
43.     Justice Wilberforce said in Nodoz Trade Mark:
It may well be, of course, that in a suitable case one single act of user of the trade mark may be sufficient; I am not saying for a moment that that is not so; but in a case where one single act is relied on it does seem to me that that single act ought to be established by, if not conclusive proof, at any rate overwhelmingly convincing proof. It seems to me that the fewer acts relied on the more solidly ought they to be established....[16]
[16] Ibid 7.
44.     Little weight is to be given to assertions of use which are not supported by documentary evidence[17] and the decision-maker may not be persuaded by evidence that is solely from internal files or that is circumstantial.[18]
[17] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd [1998] ATMO 8 (Delegate Forno). See also Ion Asset Management Ltd v Ion Trading UK Limited [2015] ATMO 124, [21] (Delegate Wilson).
[18] Nodoz (n 15); Re Trina Trade Mark [1977] RPC 131.
45.     Thus, if an opponent intends to rely on only slight evidence of use of the registered trade mark, the evidence should be of high provenance and will carry more weight if it provides objective, preferably third party, corroboration of the claims.
46.     As shown above at [41] of this decision, the Opponent’s evidence is replete with uncorroborated assertions of use and undated examples of use which are not supported by other evidence of record. The only evidence which is dated, solely by virtue of a copyright claim, is the Undated Flyer. Even if I were satisfied that the copyright claim of 1997 – 2022 was an accurate reflection of the publication date of the Undated Flyer, the Opponent has failed to provide any evidence that the flyer was distributed in Australia to anyone for the purpose of providing and offering the Services in Australia so as to establish the Trade Mark is used in the course of trade.[19]
[19] Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414, 433–4 (Deane J).
47. I have described the shortcomings of the Opponent’s evidence. In essence the Opponent provides undated evidence corroborating undated evidence. Such evidence is not probative and carries little weight. I find that because of these shortcomings, I am not satisfied that, on the balance of probabilities, the Opponent has used the Trade Mark in Australia in good faith during the Relevant Period. Therefore, the Opponent has not rebutted the s 92(4)(a) non-use allegation.
48.     That is, however, not the end of the matter. Having made this finding, it is now necessary to consider the Registrar’s discretion to allow the Trade Mark to remain on the register.
Discretion
49.     The question to be asked is whether it is reasonable not to remove the Trade Mark. The Opponent bears the onus of satisfying the registrar that the discretion under s 101(3) ought to be exercised[20] and I must be positively satisfied that it is reasonable that the Trade Mark should not be removed.
[20] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 (Yates J).
50.     The discretion provided by this section is very broad. In PDP Capital Pty Ltd vGrasshopper Ventures Pty Ltd,[21] the Court made the following observations regarding the discretion under s 101(3):
[21] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).
The following propositions are relevant to the exercise of this discretion:
(1) It is broad and is unfettered in the sense that there are no express limits on it. It is to be understood as limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter scope and purpose of Part 9 of the Trade Marks Act.
(2) The scope and purpose of the Trade Marks Act strikes a balance between various disparate interests. On the one hand there is the interest of consumers in recognising a trade mark as a badge of origin of goods or services and in avoiding deception or confusion as to that origin. On the other is the interest of traders, both in protecting their goodwill through the creation of a statutory species of property protected by the action against infringement, and in turning the property to valuable account by licensing or assignment. ...
(3) The particular purpose of Part 9, within which s 101 falls, is to provide for the removal of unused trade marks from the Register. It is designed to protect the integrity of the Register and in that way the interests of consumers. At the same time, it seeks to accommodate, where reasonable to do so, the interests of registered trade mark owners. Accordingly, the Court must be positively satisfied that it is reasonable that the trade mark should not be removed. The onus in this respect lies on the trade mark owner to persuade the Court that it is reasonable to exercise the discretion in favour of the owner. ...
(4) The discretion in s 101(3) is expressed in the present tense. It requires consideration of whether, at the time that the Court is called upon to make its decision, it is reasonable not to remove the mark.
(5) The range of factors considered in the exercise of the discretion has included whether or not:
(a) there has been abandonment of the mark;
(b) the registered proprietor of the mark still has a residual reputation in the mark;
(c) there have been sales by the registered owner of the mark of the goods for which removal was sought since the relevant period ended;
(d) the applicant for removal had entered the market in knowledge of the registered mark;
(e) the registered proprietors were aware of the applicant’s sales under the mark;
(f) A further factor, explicitly noted in s 101(4), but which falls within the scope of the discretion in s 101(3), is whether or not the trade mark under consideration has been used by its registered owner in respect of similar goods or closely related services.[22]
[22] Ibid [153] (emphasis altered) (citations omitted).
51. The discretion factors broadly fall under 3 headings:
·     the interests of the owner of the trade mark;
·     the interests of the applicant for removal; and
·     the public interest.[23]
[23] Societe Anonyme des Eaux Minerales d’Evian v The Yogurt Co Pty Ltd [2012] ATMO 53, [33] (Hearing Officer Thompson).
52.     The Opponent does not touch on the issue of discretion in its written or oral submissions. It could be argued that the Opponent’s submission that it has spends thousands of dollars a year to maintain its numerous websites and domain names is a factor to take into account but as stated above at [37] of this decision, the evidence does not support this claim.
53.     The Applicant only touches on the issue of discretion in its oral submission stating that the discretion should not be exercised in the Opponent’s favour on public interest grounds.
54.     On the question of the public interest, there is a public interest in maintaining the integrity (or ‘purity’) of the register which generally demands that unused trade marks be removed. In Health World Ltd v Shin-Sun Australia Pty Ltd, on the subject of the condition of the register, the Court said:
[T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.[24]
[24] [2010] HCA 130, [22] (French CJ, Gummow, Heydon and Bell JJ) (citations omitted).
55.     There is no evidence before me as to the interests of the Opponent or the Applicant or that the removal of the Trade Mark would practically impact on the interests of the Opponent or the Applicant. Accordingly, given the importance of the integrity of the register, I do not consider it appropriate to exercise my discretion in favour of the Opponent not to remove the Trade Mark.
Decision
56. The Opponent has not been successful in its opposition and the ground for removal under s 92(4)(a) of the Trade Mark has been established in respect of all the Services. Therefore, I direct that registration number 2044021 be removed.
57.     In the event of an appeal from this decision, the registration shall not be removed until the appeal has been discontinued or dismissed, or in the event of a decision from the court, that the registration be dealt with as the court sees fit.
Costs
58.     Both parties sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
27 August 2024

[2024] ATMO 153

27 August 2024

Key Legal Topics

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Administrative Law

Intellectual Property

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Statutory Construction

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