Aquarian Foundation v Bruce Lowndes

[2024] ATMO 175

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 2256155 (classes 41 & 45) – HIGHER SPIRITUALISM (composite) - in the name of Bruce Lowndes

Delegate:	Tracey Berger
Representation:	Opponent: Jeffrey Lohse Applicant: Self-represented
Decision:	2024 ATMO 175 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 43, 44, 58, 58A, 60 and 62A nominated – no ground established - trade mark to proceed to registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of the application detailed below in the name of Bruce Lowndes (‘Applicant’):

Trade Mark:  (‘Trade Mark’)

Number:   2256155 (‘Application’)

Filing Date:    15 March 2022

Services:         Class 41:  Religious education; religious educational services

Class 45: Conducting religious ceremonies

(‘Applicant’s Services’)

[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

2.     Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose on 10 May 2023, followed by a Statement of Grounds and Particulars (‘SGP’) on 8 June 2023.  The Applicant filed a Notice of Intention to Defend the opposition on 22 August 2023.

3. The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support was filed on 28 November 2023, followed by the Applicant’s evidence in answer filed on 7 February 2024 and concluding with the Opponent’s evidence in reply on 14 July 2024.

4.     After the evidence stage ended, the parties were given the opportunity to request a hearing.  The Applicant requested a decision without a hearing.  Although neither party elected to be heard orally or by way of written submissions, the evidence of both parties contained submissions related to the different grounds of opposition.  This matter has been allocated to me to decide as a delegate of the Registrar of Trade Marks.  I do so based on the aforementioned materials.

Grounds, onus and relevant date

5.     In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 43, 44, 58, 58A, 60 and 62A. 

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

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

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.     The date at which the rights of the parties are to be determined is 15 March 2022 (‘Relevant Date’) being the filing date of the Application and priority date for the purposes of ss 44 and 60.

Evidence

8.     The following evidence was filed in the proceedings:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Jannifer A. Werner, President of the Board of Directors of the Opponent (‘Werner 1’)	27 November 2023	1-7
Evidence in answer
Declaration of Bruce Kimberley Lowndes, also known as Sunkara Sankacharya, Applicant (‘Lowndes’)	1 February 2024	1-12
Evidence in reply
Jannifer A Werner (‘Werner 2’)	13 July 2024	1-7 (but additional attachments filed)
Jannifer A Werner (‘Werner 3’)	13 July 2024	N/A

9.     A significant proportion of the evidence of both parties consists of submissions, personal attacks and allegations not relevant to the present proceeding.  In my summary below of the evidence and in reaching my decision, I have not had regard to any submissions or allegations not pertaining to a ground of opposition.

Opponent’s evidence

10.     Werner 1 declares that the Opponent is an international church that teaches Spiritualism and Higher Spiritualism.  In Australia, the Opponent’s teachings are provided by the Aquarian Foundation in Brisbane which has an authorised study group.

11.     According to Werner 1, the Applicant has a ‘long and negative history’ with the Opponent.  The Applicant was a former member of the Opponent in the United States of America (‘USA’) and a copy of the Applicant’s application for membership of the Opponent from 1976 is provided.   

12.     The Opponent claims that the mark Higher Spiritualism was created by the Opponent’s founder, Reverand Keith Milton Rhinehart (‘KMR’), in the 1960s.  KMR undertook 2 world tours, visiting over 40 countries to establish Higher Spiritualism in each country.

13.     Werner 1 declares that the Opponent has used the marks Higher Spiritualism and Church of High Spiritualism since at least 1977 in relation to the Opponent’s spiritual teachings provided globally.

14.     The Opponent is the owner of Australian trade mark registration numbers 2044019 KEITH MILTON RHINEHART SACRED TEACHINGS in classes 9 and 45, 2044020 Church of Higher Spiritualism in class 45 and 2044021 Aquarian Foundation in class 45 (collectively ‘Opponent’s Marks’).

15.     Werner 1 notes that the Applicant has previously tried to register marks containing ‘Higher Spiritualism’ including lapsed application number 2064708 Higher Spiritualism in classes 41 and 45, and registration 784113 for the Trade Mark in class 41 which I note was registered in the name of Church of Higher Spiritualism Inc but has been removed from the Register because it was not renewed.  

16.     Werner 1 also exhibits details of lapsed Australian trade mark number 659256 in class 16 for ‘church religious teachings’ for the mark shown below which was filed in the name of Higher Spiritualism-Everlasting Trust which is allegedly the Opponent’s study group in Hazelbrook, NSW.  Werner 1 attests that the Applicant filed or caused this application to be filed without the Opponent’s authorisation.  The Opponent claims that this mark consists of its trefoil design which the Applicant has put inside a map of Australia with flames.
 

17.     According to Werner 1, the Opponent has used its trefoil design since 1975 and in Australia since 1995 for its Higher Spiritualism teachings.

18.     Werner 2 simply repeats a number of the claims and arguments in Werner 1.  The declaration references 7 exhibits but an additional 11 attachments were filed without explanation.  Many of the attachments are undated, were already filed in Werner 1 or seem to relate to the Opponent’s use of Higher Spiritualism or the Church of Higher Spiritualism in the USA.  No explanation is provided about these additional documents or their relevance to the present proceedings.

19.     Werner 3 declares that the court proceedings between the parties in the USA are ongoing with the Opponent having filed an appeal

Applicant’s evidence

20.      Lowndes claims that he was granted an exclusive license to use KMR’s spiritual and teaching material. In support of this claim, Mr Lowndes exhibits a letter signed by KMR entitled ‘Legal Permission to Use Copyrighted Material.’ Lowndes claims that a court in the USA recognized this licence and acknowledged Mr Lowndes’ ownership and prior use of the mark Higher Spiritualism.  A copy of this court decision is provided (‘US Court Decision’).

21.     Lowndes declares that ‘Higher Spiritualism’ is a generic term for a philosophy in 1914 and that philosophy has been used in England since 1800.

22.     Mr Lowndes claims to have used the marks Higher Spiritualism and Church of Higher Spiritualism since 1976 when he became a Spiritualist Minister.  Over the last 40 years, Mr Lowndes has developed his own ‘original’ goods and services which he provides under the Trade Mark.

23.     Lowndes declares that in 1998 he authored and created the Higher Spiritualism website at which is now at (‘Applicant’s Website’) where he provides his ‘original teachings’ without reference to the Opponent or any teachings of KMR.

Discussion

Section 44

24.     Section 44 relevantly provides:

44  Identical etc. trade marks

…

(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)  it 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.

(3)  If the Registrar in either case is satisfied:

(a)  that there has been honest concurrent use of the 2 trade marks; or

(b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

25.     To successfully oppose the Application pursuant to s 44, the Opponent must establish that the trade mark(s) upon which it relies, being a trade mark registered or sought to be registered by a person other than the Applicant:

·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

·     is in respect of similar services and/or closely related goods to the Applicant’s Services (‘the third requirement’).

26.     In its SGP, the Opponent relies on the Opponent’s Marks which are detailed below:

Number	Trade Mark	Filing Date	Specification
2044019 (’19 Mark’)	KEITH MILTON RHINEHART SACRED TEACHINGS	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
2044020 (’20 Mark’)	Church of Higher Spiritualism	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 27.
2044021 (’21 Mark’)	Aquarian Foundation	16 October 2019

1. Each of the above marks satisfies the first requirement in that each of the Opponent’s marks has an earlier priority date than the Application.

   28.     The Applicant’s class 45 services ‘conducting religious ceremonies’ is encompassed in the class 45 services of each of the Opponent’s Marks.  The class 41 services of the Application being ‘religious education’ are, in my view, similar services to the religious services of the Opponent’s Marks.  In determining whether two sets of services are similar, it is necessary to consider the following factors:

   • the nature and characteristic of the services;
   • the origin of the services;
   • the purpose of the services;
   • whether the services are usually provided by one and the same business or person;
   • whether the services are provided from the same sources, in the same area or district, during the same season or in relation to the same related goods or services and to the same class or classes of customers; and
   • whether the services are regarded as the same by those who provide them.[4]​​​​​​

   [4] Beck, Koller & Company's Application

   29.     I consider religious education services to be provided by the same organisations that provide spiritual or religious services and that such services are provided for a similar purpose.  Therefore, the third requirement is satisfied.

   30.     Accordingly, the only outstanding question is whether the Trade Mark is substantially identical or deceptively similar to any of the Opponent’s Marks.

   31.     The test for whether two marks are substantially identical was set out by Windeyer J in TheShell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd,[5] where his Honour stated:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison

   [5] [1963] HCA 66; (1963) 109 CLR 407, 414.

   32.     It is immediately apparent on a side by side comparison that there is no resemblance between the Trade Mark and either the 19 Mark or the 21 Mark.  The 20 Mark and the Trade Mark share the words Higher Spiritualism but there are still obvious differences with the 20 Mark containing the words ‘Church of’ and the Trade Mark containing the pictorial device which forms a significant portion of the Trade Mark.  I am satisfied that there is not a total impression of resemblance between the Trade Mark and any of the Opponent’s Marks.

   33.     The question of whether the Trade Mark is deceptively similar to any of the Opponent’s Marks involves the application of a broader test namely whether the Trade Mark so nearly resembles any of the Opponent’s Marks that it is likely to deceive or cause confusion.[6]

   [6] Act s 10.

   34.     In determining deceptive similarity, the marks in question are to be compared as wholes taking into consideration the size, prominence and stylisation of words and device elements used in the marks and their relationship to each other, and any essential feature that emerges.[7]  This comparison is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class of services are provided.[8]  A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source’.[9]  There must be a real tangible danger of confusion; a possibility of confusion is not sufficient.[10]  It is not necessary that the confusion persist up to, or contribute to inducing, a sale.[11]  The use to be considered is notional use.[12]

   [7] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; 158 IPR 9, [334] (Burley J).

   [8] Australian Woollen Mills v F S Walton and Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [9] Ibid.

   [10] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 [50] (French J).

   [11] TiVo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 [105] (Dodds-Streeton J).

   [12] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353, 362 (Mason J).

   35.     I do not consider there to be any points of similarity between the Trade Mark and either the 19 Mark or the 21 Mark.  The Trade Mark is visually and phonetically different from both the 19 Mark and the 21 Mark.  There is no reason that a consumer of religious services would recollect the Trade Mark as either the 19 Mark or the 21 Mark.  The Trade Mark is not deceptively similar to either of these registered marks of the Opponent.

   36.     In terms of the 20 Mark, this mark and the word elements of the Trade Mark are the same.  However, the fact that both marks contain the term ‘higher spiritualism’ is not conclusive to a finding of deceptive similarity.  Where an element which is present in both trade marks under comparison is descriptive or in common use in the trade, its presence must be to some extent discounted in considering whether the trade marks are deceptively similar. Thus, as Whitford J observed in Frigiking Trade Mark,[13] the court's deliberations must ‘necessarily involve some inquiry as to the inherent distinctiveness of the part which is common to both marks under consideration.’  In my view, the term ‘higher spiritualism’ is not distinctive being comprised of two common English words where ‘higher’ means ‘greater’ or ‘elevated’ and ‘spiritualism’ meaning a philosophical or religious belief system.  In the context of the relevant services, the term ‘higher spiritualism’ is not particularly distinctive.  The pictorial element of the Trade Mark is a dominant and essential feature of the mark which is likely to be recalled by consumers.  Moreover, people with an interest in religious education or religious ceremonies are likely to be discerning and take care in choosing a provider of religious services.  Accordingly, I do not believe that there is a real likelihood of confusion between the 20 Mark and the Trade Mark given the overall differences in the marks and non-distinctive nature of the common element. 

   [13] [1973] RPC 739, 752.

   37.     I am not satisfied that there is a real tangible danger of confusion between the Trade Mark and the 20 Mark.  Accordingly, the s 44 ground of opposition is unsuccessful.

   Section 58A

   38.     Section 58A relevantly provides:

   58A  Opponent’s earlier use of similar trade mark

   (1) This section applies to a trade mark (section 44 trade mark) the application for registration of  which has been accepted because of:

   (a) subsection 44(4); or
   …

   (2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a) first used the similar trade mark in respect of:

   (i) similar goods or closely related services; or

   (ii) similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b) has continuously used the similar trade mark in respect of those goods or services since that first use.

   39.     In its SGP, the Opponent identifies the Opponent’s Marks as being relevant to this ground of opposition.  Whilst the Trade Mark was accepted under the provisions of s 44(4), I have found that the Trade Mark is not substantially identical or deceptively similar to any of the Opponent’s Marks.  Hence the provisions of s 44(4) are not available to be applied in this opposition and therefore, the s 58A ground of opposition is not available.

   Section 60

   40.     Section 60 is reproduced below:

   Section 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 Goods 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 Goods, 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.

   41.     To establish a ground of opposition under s 60, an opponent must first demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market and secondly that as a result of that reputation, use of the trade mark would be likely to deceive or cause confusion.   

   Reputation

   42.     Justice Kenny considered the meaning of ‘reputation’ in McCormick & Co Inc v McCormick (‘McCormick’) and based on the Macquarie Dictionary definition, her Honour concluded it refers to ‘the recognition of the [trade mark] by the public generally.’[14]  This means the reputation must be amongst a ‘significant or substantial’ number of Australian consumers, tempered by the nature of the relevant market.[15]

   [14] [2000] FCA 1335, [81] (‘McCormick’).

   [15] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

   43.     The Opponent must establish the ‘existence and extent of reputation’ as a matter of fact.[16]  In terms of establishing reputation, in Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:

   The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or Goods to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally...[17] 

   [16] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).

   [17] [2019] FCA 923, [83].

   44.     In its SGP, the Opponent claims it has a reputation in the Opponent’s Marks and the mark Higher Spiritualism and as a result of that reputation, use of the Trade Mark will convey an association, affiliation or endorsement by the Opponent which does not exist.

   45.     In my opinion, the Opponent’s evidence does not establish a reputation in the mark Higher Spiritualism or any of the Opponent’s Marks.  None of the Werner declarations provide any details about the number of members of the Opponent nor any information about the extent of the Opponent’s religious services or operations in Australia.  The only use of the mark Higher Spiritualism is 2 cassette covers and a poster from the 1970s exhibited to Werner 1.  There is no indication if these recordings or poster were ever distributed in Australia.  Werner 2 annexes a flyer for the Opponent’s Brisbane study group of the Church of Higher Spiritualism which has a copyright notice 1996-2024 but Werner does not provide any details on how many people have attended these meetings or how the study group is promoted.  The other attachments to Werner 2 are either undated or relate to events held in the USA.  There is no evidence that the Opponent has provided religious services to a substantial number of Australians under the mark Higher Spiritualism or any other mark nor that they have extensively promoted the provision of such services in Australia.  In the circumstances, I am not satisfied that the Opponent had a reputation in Higher Spiritualism or any of the Opponent’s Marks in Australia amongst a significant proportion of the Australian public interested in religious services.

   46.     The s 60 ground of opposition is not established.

   Section 42(b)

   47.     Section 42(b) provides that a trade mark may be opposed on the basis that use of the mark would be contrary to law.

   48.     The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[18]

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

   49.     The Opponent claims in its SGP that use of the Trade Mark would contravene the Copyright Act 1968 (Cth) (‘Copyright Act’), breach the Australian Consumer Law (‘ACL’) being Schedule 2 to the Competition and Consumer Act 2010 (Cth), various sections of the Trade Marks Act 1995 (Cth) and constitute passing off.

   50. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60.[19]

   [19] See e.g.: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ), Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

   51. As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Services is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation in breach of the ACL.

   52.     In relation to the claim that use of the Trade Mark will amount to passing off, Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation addressed the relationship between s 52 of the Trade Practices Act 1974 (Cth) (the equivalent provision to s 18 of the ACL) and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[20]

   [20] [1989] FCA 506, [40] (citations omitted).

   53.     Accordingly, I am not satisfied that the use of the Trade Mark would involve passing off.

   54. The Opponent does not expand on its claim that use of the Trade Mark will breach the Copyright Act. Further there is nothing in the Opponent’s evidence that satisfies me that any copyright which might exist in the Trade Mark as a whole or any element of the Trade Mark, is owned by other than the Applicant. Consequently, I am not satisfied that use of the Trade Mark by the Applicant would breach the Copyright Act.

   55. The Opponent’s claims that use of the Trade Mark will infringe various sections of the Act namely ss 10, 41, 43 and 62(a) are not appropriate bases under s 42(b). These are dealt with under the Act as separate grounds of opposition under ss 44, 41, 43 and 62(a). Those grounds that have been claimed are dealt with separately in this decision and if the ground was not separately claimed, the Opponent should have done so if it wished to rely on it.

   56.     The s 42(b) ground of opposition is unsuccessful.

   Section 43

   57.     Section 43 provides:

   43  Trade mark likely to deceive or cause confusion

   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.

   58.     This section 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.

   59.     The ‘connotation’ must arise from the Trade Mark and not from any comparison with another trade mark.  As Spender J noted in Winton Shire Council v Lomas:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[21]

   [21] Winton Shire Council v Lomas [2002] FCA 288, [19].

   60.     The Opponent does not identify any connotation inherent in the Trade Mark in its SGP nor in its evidence.  The Opponent claims that the Applicant uses ‘his Higher Spiritualism to confuse and deceive consumers’ into believing that they are supporting the Opponent’s Church of Higher Spiritualism and the Opponent’s ‘spiritual mission’.  Sections 44 and 60 are concerned with whether use of a trade mark is likely to deceive or confuse consumers as a result of its similarity with another trade mark or reputation of another mark in Australia.  I have dealt with these grounds of opposition above.  Whilst the authorities do recognise that under s 43, deception or confusion may arise from a perceived sponsorship or endorsement in the name of a well-known institution or celebrity persona,[22] that is not the case here.  There is no connotation inherent in the Trade Mark which suggests the licence or endorsement of the Opponent.

   [22] McCorquodale v Materson [2004] FCA 1247, [60] (Kenny J).

   61.     The s 43 ground of opposition fails.

   Section 58

   62.     Section 58 provides that registration of a trade mark may be opposed on the ground that the applicant is not the owner of the mark.

   63.     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) [1984] HCA 73; 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] HCA 27; (1948) 78 CLR 601, 627 (Dixon J).

   [25]

   64.     In support of this ground, the Opponent relies on use since 1995 in Australia of two trade marks, being HIGHER SPIRITUALISM and CHURCH OF HIGHER SPIRITUALISM.

   65.     I have already found at [32] that the mark CHURCH OF HIGHER SPIRITUALISM is not substantially identical to the Trade Mark.  Turning to the side by side comparison of the Trade Mark and Higher Spiritualism, the two marks are depicted below:

HIGHER SPIRITUALISM

66.     Despite the common words, it is immediately obvious on a side by side comparison that the Trade Mark includes a pictorial device which forms a significant part of the mark.  In my view, the two marks are not substantially identical.  Moreover, the Opponent has provided no dated evidence demonstrating use of HIGHER SPIRITUALISM as a trade mark in Australia for religious services before the Relevant Date.  Accordingly, the s 58 ground of opposition is not successful.

Section 62A

67.     Pursuant to s 62A, registration of a trade mark may be opposed on the ground that the application was made in bad faith.

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

The application was filed in bad faith, because the applicant trademark (sic) never heard the words Higher Spiritualism until he became a member of the Aquarian Foundation.  The applicant did not conceive of or create the trademark – the trade mark HIGHER SPIRITUALISM was conceived of and created by the Founder of Aquarian Foundation in September of 1977 to date (sic).  The applicant is fully aware that Rev. Rhinehart used the phraseology during various lectures in Aquarian Foundation, which are recorded lessons of the Church.  Rev. Rhinehart coined the words Higher Spiritualism to describe the teachings studied in Aquarian Foundation.  The lessons describe the differences between Spiritualism and Higher Spiritualism and why Aquarian Foundation uses the trade mark Higher Spiritualism to describe its teachings.  Church used the trademark HIGHER  SPIRITUALISM on advertising, business cards and posters to identify the uniqueness of the Church’s teachings and to clarify that while Aquarian Foundation still adhered to certain Spiritualism’s teachings, Higher Spiritualism was what was taught in the Church.

69. What constitutes ‘bad faith’ is not defined in the Act. As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[26]

[26] [2012] FCA 81, [167].

70.     In DC Comics v Cheqout Pty Ltd, Bennett J summarised 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.[27]

[27] [2013] FCA 478, [62].

71.     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.

72. In Werner 1, the Opponent claims the Applicant’s bad faith is demonstrated by the Applicant filing application 659256 for a mark incorporating the Opponent’s trefoil design as outlined above at [16]. Werner 1 also claims that the Trade Mark has been filed in bad faith to ‘give him credibility in Spiritualist Circles in order to sell, market and publish Opponent’s goods and services without having to report to any authority in the Church…’. These claims are not substantiated by supporting evidence.

73.     As I have already noted in this decision, the term ‘Higher Spiritualism’ is not distinctive and the Opponent’s evidence does not demonstrate that this term has been used by the Opponent in Australia to such an extent that the term is associated with the Opponent.  In the circumstances, I do not consider that it is unscrupulous, underhand or otherwise unconscionable for the Applicant to use this term in the Trade Mark.

74.     I am not satisfied that the application for the Trade Mark was made in bad faith and the s 62A ground of opposition is unsuccessful.

Decision

75. Section 55 of the Act relevantly 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 Goods 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.

76.     The Opponent has not established any of the grounds of opposition nominated and  trade mark number 2256155 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that the registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court’s orders or directions.

77. In its Notice of Intention to Defend, the Applicant sought an award of costs. Costs generally follow the event and accordingly, I award costs against the Opponent under s 221 in the applicable amounts set out in Schedule 8 of the Regulations.

Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
19 September 2024