Drogmi Buddhist Institute Incorporated v Philippe Gerard Droulers

[2018] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Drogmi Buddhist Institute Incorporated to registration of trade mark application 1741076 (45) - Kamalashila Tibetan Buddhist Centre - in the name of Philippe Gerard Droulers.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Terri Janke and Company Pty Ltd –written submissions Applicant: Self represented
Decision:	2018 ATMO 19 Trade Marks Act 1995 Section 52 opposition to registration - section 58. Opposition established. Registration refused.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Philippe Gerard Droulers (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:           1741076

Priority Date:               14 December 2015
Services:  Class 45: Meditation services for spiritual purposes
Trade Mark:                Kamalashila Tibetan Buddhist Centre
  (‘the Trade Mark’)

Endorsement:               The applicant has advised that the word KAMALASHILA appearing in the trade mark is a name and has no translation in English

1. The Trade Mark was examined in compliance with section 31 of the Act and, on 5 May 2016, advertised as accepted for possible registration in the Australian Official Journal of Trade Marks.

2. On 29 June 2016 Drogmi Buddhist Institute Incorporated (‘the Opponent’) filed both a Notice of Intention to Oppose the registration of the Trade Mark and a Statement of Grounds and Particulars (which was subsequently rectified on 29 July 2016) nominating grounds under sections 58, 43 and 62A of the Act.

3. On 5 September 2016 the Applicant filed a Notice of Intention to Defend.

4. On 12 December 2016 the Opponent filed its Evidence in Support being a declaration by John William Moloney Heath, President of the Opponent, made on 12 December 2016 with annexures.

5. On 28 December 2016 the Applicant filed his Evidence in Answer being a declaration by himself made on 21 July 2016 with some 54 documents appended thereto and two extensive covering letters.

6. The Applicant has also filed extensive written submissions on 30 April 2017 and 9 June 2017.  The Opponent has filed written submissions by its legal representative Terri Janke and Company Pty Ltd.

7. Neither party has requested to be heard and now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me for my decision.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application.

Other

1. This matter is related to other proceedings before the Registrar: Drogmi Buddhist Institute Incorporated v Philippe Gerard Droulers (Unpublished) dated 27 February 2017 in which the Applicant sought determination of ownership of various trade marks.  In that decision the Registrar’s delegate commented:

   Despite the Applicant’s expressed desire for IP Australia to determine the proper ownership of the Trade Marks, it is not necessary or appropriate for the Registrar to determine any broad dispute, to the extent that it exists, between Sakya Tharpa Ling and the Opponent, especially in circumstances in which Sakya Tharpa Ling has chosen not to participate or assert any claim in this matter. The role of the Delegate is to determine whether the Opponent has established any of its grounds of opposition under the Act and hence whether any of the Trade Marks shall proceed to registration.

2. Further, the Applicant has made strong and lengthy submissions that the provisions of either of the subparagraphs of subsection 44(3) of the Act should be applied to this application. However, the Registrar would only consider the provisions of subsection 44(3) if an opponent had established a ground under either of subsection 44(1) or 44(2) based on a prior trade mark filed by a person other than an applicant. Here there is no prior filing and section 44 has not been particularised as a ground of opposition. The provisions of subsection 44(3) thus cannot be applied to the Trade Mark.

3. Additionally, the Applicant places strong emphasis on his registration of the business name ‘Kamalashila Tibetan Buddhist Centre’ as entitling him to ownership of the Trade Mark.  However in Lone Star Steakhouse & Saloon Inc v Zurcas[2] (‘Zurcas’) Lindgren J observed:

   Registration of a business name under the Business Names legislation […] merely prevents contravention of the legislation, which provides generally to the effect that a person may not carry on a business under a name other than the person's own name unless the business name is registered under the Act.

   By duly registering the business name "Lonestar Saloon", Ms Zurcas avoided contravening s 5 [of] the Business Names Act 1962 (Vic) but this did not give her a "right" to carry on business under that name, let alone a right to do so in infringement of the trade marks of others.

   [2] [2000] FCA 29; 48 IPR 325 at [26]-[27].

4. The registration of the business name thus gives no ‘right’ to the Applicant to carry on business under the name ‘Kamalashila Tibetan Buddhist Centre’ or, indeed, to register the Trade Mark if it is owned by a person other than himself.

Evidence

1. As I will decide this matter under the provisions of section 58 of the Act, I will only discuss the evidence of the parties insofar as it is necessary to decide that ground.

2. In his declaration in Evidence in Support Mr Heath states:

   On 2 December 2015, [the Opponent] purchased the property on 9000 Princes Highway, Tilba Tilba NSW 2546 as [the Opponent’s] principal place of business in providing meditation services for spiritual purposes.

   On 5 December 2015, [the Opponent] held its Annual General Meeting (AGM) in Tilba Tilba, New South Wales. The words "Kamalashila Tibetan Buddhist Centre" were first publically used by [the Opponent] on this date at the AGM to name the property described in Paragraph 4. See the attached minutes of that AGM in Annexure 1 and a media article published by [the Opponent] on its website regarding the naming of the property in Annexure 2.

   This name is identical to the trade mark applied for by the Applicant.

   The Applicant is not the owner of the trade mark as [the Opponent] used the exact words of the Applicant's filed application for trade mark in the course of providing meditation services for spiritual purposes on 5 December 2015, which is before the filing date of the Applicant's trade mark, being 14 December 2015.

3. I turn to the Applicant’s Evidence in Answer.

4. In a letter written to the Opponent’s legal representatives (relied upon in the Applicant’s Evidence in Answer), the Applicant stated:

   The article in the Wisdom Age also states that HH Sakya Trizin has offered [the Opponent] the name of Kamalashila Tibetan Buddhist Centre to this project. So having asked for and received this name isn’t it the case that your clients are duty bound to use this name? [Emphasis in original]

   […]

   So when I put all the information together after receiving the first statement of grounds and particulars on 14th December 2015, I became even more convinced that this opposition had been lodged in bad faith. I also became convinced that the purchase of the land at Tilba Tilba and the request for the name Kamalashila Tibetan Buddhist Institute to His Holiness were not actions taken their interests and in good faith.

   […]

   So it is because of this act of bad faith in February last year that I lodged these applications for registration of these trademarks after having my own conversations with HH Sakya Trizin in Kuala Lumpur in May. So once I learnt of the announcement of the new centre at Tilba Tilba in November 2015 and then compared that joyous news with what I saw in the statements of grounds and particulars, I had no hesitation in registering the business name of Kamalashila Tibetan Buddhist Centre myself.

   […]

   Furthermore the continued use of these (DBI) trademarks[3], are not consistent with the request for the new name of Kamalashila Tibetan Buddhist Centre. Therefore I cannot understand why the opponent would want to continue to oppose the applications for these trademarks. Why not use the name Kamalashila Tibetan Buddhist Centre?

   Also the name Kamalashila Tibetan Buddhist Centre also is not linked to any of the above points above. This name has the blessing of HH Sakya Trizin and I suppose it carries with it the opportunity for the opponent to be free of any association with the former Drogmi Retreat Centre project, the Drogmi trademarks being applied for, Sakya Tharpa Ling, Dirru monastery, Dungyud Tulku Rinpoche or the lineage he represents.

   So although there is this potential for the name Kamalashila Tibetan Buddhist Institute to be used in a manner that frees the opponent of these associations, the opponent does not own the business name of Kamalashila Tibetan Buddhist Centre. So the opponent is free to talk to me about the use of this name should they wish to do so.

   [3] Those are the ones referred to at paragraph [11] of this decision.

Section 58

1. Section 58 of the Act provides:

   58Applicant not owner of trade mark

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

   Note:For applicant see section 6.

Discussion

1. Ownership of a trade mark may arise in two ways: firstly, by use of a sign as a trade mark; or, secondly, by the filing of an application for registration as a trade mark.  In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark.  In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark which is at least substantially identical[4] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’.[5]

   [4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].

   [5] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

2. The Applicant does not evidence use of the Trade Mark before the Trade Mark’s priority date.

3. Because the Opponent used the Trade Mark publically on 5 December 2015 in relation to ‘Meditation services for spiritual purposes’, before the Trade Mark’s priority date on 14 December 2015, the Applicant is not the owner of the Trade Mark.

4. Additionally, the Applicant’s statements in his Evidence in Answer carry the implication that he is not the owner of the Trade Mark but seeks to establish that ownership through a business name registration.  However, as noted above, Zurcas illuminates the principle that registration of a business name does not give a person the right to carry on business under that name nor does it establish ownership of a corresponding trade mark.

5. The Opponent has established its opposition under section 58 of the Act.

Decision

1. Section 55 of the Act provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

1. It is appropriate that the Registrar refuses to register the Trade Mark.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
7 February 2018