Executor of the Estate of Francisco D Coll Monge v Inner Peace Movement Pty Ltd
[2010] ATMO 98
•29 September 2010
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Executor of the Estate of Francisco Coll Monge to registration of trade mark application nos. 1045722 (9, 16, 25, 41 and 45) INNER PEACE MOVEMENT - in the name of Inner Peace Movement Pty Ltd and 1045725 (9, 16, 25, 41 and 45) PEACE COMMUNITY CHURCH - in the name of Peace Community Church Pty Ltd.
Delegate: Heath Wilson Representation: Decision on the Written Record. Decision: 2010 ATMO 98
Section 52 opposition – Grounds nominated under sections 41, 43, 58 and 60 of the Trade Marks Act 1995 – owner of the trade mark – grounds not established – costs awarded against the opponent.Background
On 11 March 2005, the Americana Leadership College Pty Ltd applied for the registration of trade mark no. 1045722: INNER PEACE MOVEMENT and trade mark no. 1045725: PEACE COMMUNITY CHURCH both containing the following specification of goods and services:
Class 9: CDs, CD-ROMs, discs, audio and video tapes, audio and visual recordings, educational films, publications being in electronic form supplied on-line from databases or from facilities provided by way of a global computer network (including websites), electronic publications
Class 16: Printed matter including but not limited to promotional literature, books, magazines, newsletters, brochures, cards, posters, letterhead, stationery and advertising
Class 25: Clothing, footwear, headgear
Class 41: Conferences, seminars, live musical performances, classes, courses, educational services, meetings, leadership training, including spiritual leadership training
Class 45: Church services, religious services, spiritual services, counselling in the field of religion and spiritualityThe overriding issue for this opposition under section 52 of the Trade Marks Act 1995 (“the Act”) is where the ownership of the trade marks “Inner Peace Movement” and “Peace Community Church” lies in Australia. A notice of opposition was filed on 18 June 2007 by the executor of the Estate of Francisco Coll Monge (“the opponent”) against both of these applications and citing grounds of opposition under sections 41, 43, 58 and 60. The Australian predecessor-in-title of the applicant (Americana Leadership College Pty Ltd) then assigned trade mark no. 1047522 to Inner Peace Movement Pty Ltd, and 1047525 to Peace Community Church Pty Ltd (for convenience, I will refer to both of these separately named but very closely related applicants simply as "the applicant"). The parties in this opposition (or their predecessors) have a history of intellectual property disputes both in Australia[1], and a number of other countries (including New Zealand).
[1] See Estate of Francisco Coll Monge, Francisco David Coll, Executor v Americana Leadership College Pty Ltd [2009] ATMO 16.
In these proceedings, neither party has requested a formal hearing but I find that the complexity of the facts and evidence in this matter warrants the reasons for the decision to be published. Accordingly, I will decide this matter on the following evidence which comprises the written record:
Evidence
Evidence in Support
·Statutory declaration of Robert Conrad dated 20 May 2008 with attached exhibits 1, 1A, 1B, 1D, 2, 4, 1D, 1C, 5, 6, 8, 9, 9B and D1 (sic) (“the Conrad declaration”).
·Statutory Declaration of Louise Simmons dated 20 March 2008 (with attached exhibits “LS1- LS6” (“the Simmons declaration”).
Evidence in Answer
·Statutory declaration of Stephen Gibbs dated 26 March 2009 in relation to “Inner Peace Movement” with attached exhibits “SG1 - SG59.” (“First Gibbs declaration”).
·Statutory declaration of Stephen Gibbs dated 26 March 2009 in relation to “Peace Community Church” with attached exhibits “SG1 – SG39” (“Second Gibbs declaration”).
Robert Conrad and Louise Simmons are both licensed spiritual educators, lecturers and consultants. Both declarants have had specific involvement with Americana Leadership College Inc, the Inner Peace Movement and the Peace Community Church in the United States. However, the relationship of Mr Conrad and Ms Simmons to the opponent in this matter is not evident. For the applicant, Stephen Gibbs is a director of the Australian companies Americana Leadership College Pty Limited, Inner Peace Movement Pty Limited and Peace Community Church Limited.
Onus and Reasons
I proceed on the basis that the opponent bears the onus of establishing one of the nominated grounds of opposition namely sections 41, 43, 58 or 60 of the Act on the balance of probabilities.[2] The opponent’s evidence contains certain unsupported allegations regarding the conduct of the applicant both in the United States and Australia. I attribute little weight to such unsupported statements. As stated above, the opponent must establish the grounds based upon its documented evidence, and thereby satisfy me that they have been made out on the balance of probabilities.
[2] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].
Section 41: Trade mark not distinguishing applicant’s goods or services
The test for the inherent adaptability of a trade mark to distinguish was defined by Justice Kitto in F.H. Faulding & Son Ltd[3] as:
The question to be asked in order to test whether a word is adapted to distinguish one trader’s goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.
[3] F.H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd (1965) 112 CLR 537 at 555
Mr Conrad alleges that the trade marks in question are based on assets and goodwill that the applicants do not own. However, under section 41, the opponent bears the onus of establishing that other traders for the relevant goods and services would need to use (without improper motive) the expressions “Inner Peace Movement” and the “Peace Community Church” in the ordinary course of their business. Beyond documenting the later use of these terms by the opponent itself to identify its own services, the opponent has not provided sufficient evidence to establish this ground and has not effectively addressed whether or not the marks themselves are adapted to distinguish the goods and services.
Accordingly, I am not satisfied that the opponent has discharged the onus of establishing this ground of opposition for either of the trade mark applications, and I find that section 41 of the Act has not been made out.
Section 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.
To establish a ground of opposition under section 43, there must be an inherent connotation within the trade mark as indicated by Justice Gyles’ comments in Pfizer Products Inc v Karam[4]. To clarify the intention of the section, it is worth referring to the statements of Justice Spender in Winton Shire Council v Lomas[5] where he said:
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 s60.
[4] Pfizer Products Inc v Karam (2006) 70 IPR 599 (at [53]).
[5] Winton Shire Council and Anor v Lomas (2002) 56 IPR 72 at 19.
The opponent relies generally on the possibility of confusion between the applicant’s and the opponent’s services and points to alleged wrongdoings by the applicant, rather than focusing on the inherent qualities of the trade marks “Inner Peace Movement” and “Peace Community Church” themselves. The evidence before me does not indicate that the trade marks contain inherent connotations recognisable to the Australian public, which would result in their use by the applicant causing deception or confusion in the Australian marketplace. For completeness, I would not consider the trade marks to be misdescriptive (as the opponent claims) if applied to goods/services that are not religious in nature (such as clothing or CDs). I find that the opponent has not discharged its onus in this regard.
Accordingly, I am not satisfied that a connotation exists within the trade marks “Inner Peace Movement” and “Peace Community Church” such that their use on the above goods and services would be likely to result in confusion in Australia. The ground of opposition under section 43 has not been established.
Section 58: Applicant 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.
Given the overall tenor of the opponent’s evidence, section 58 would appear to be the most relevant nominated ground. The opponent argues that the applicant does not own the trade marks in Australia, but rather they are owned by Dr. Francisco Coll and the Estate of Francisco Coll Monge. While it is evident that the expressions “Inner Peace Movement” & “Peace Community Church” were used by Dr. Francisco Coll for the religious teachings which he developed in the United States, the ownership of the trade marks in Australia is not so clear. Following Dr. Coll’s death, it appears that there was no relevant Will or Probate document dealing with the ownership of intellectual property and the use of the trade marks outside of the United States. If such documents exist, neither party in this matter has produced them to establish title in the trade marks. Ownership will therefore be determined by the first use of the marks at common law in Australia.
It is well established that the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner. An exception to this is if the trade mark has been used before the filing date (i.e. 11 March 2005). In that case, and in the absence of fraud, the owner of a trade mark in Australia for particular goods or services is taken to be the first person to use it (“first user”) in the course of trade in Australia for those goods or services. The first user need not have invented or first thought of the trade mark,[6] but only need be the first to adopt the mark for a trade mark in Australia.
[6] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399 per Fullagar J.
The applicant and opponent agree that Dr. Coll first developed the religious teachings conducted in relation to the trade marks “Inner Peace Movement” and “Peace Community Church” in the United States, but they differ as to who owns the trade marks in Australia. It is worth noting from a perusal of the USPTO[7] website that the trade marks “Inner peace movement” and “Peace community church” are now registered in the United States (Nos. 74517091 and 74452519 respectively) under the name of the opponent in this matter.[8] Even if the applicant were definitively proven to have appropriated the trade marks from Dr Coll (as the opponent alleges) or Americana Leadership College, Inc (U.S.) this would not necessarily be a breach of the law – so long as it is the first user of the trade marks in Australia. For example, in the Yanx[9] case, Justice Williams said that:
…To try and register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its cigarettes is sharp business practice. But it is not in itself fraudulent or a breach of the law.
[7] United States Patent and Trademark Office.
[8] Under Regulation 21.15(8): “The Registrar….may inform herself on any matter that is before her in any way that the Registrar reasonably believes to be appropriate.”
[9] Re Registered Trade Mark “Yanx”; Ex Parte Amalgamated Tobacco Corporation Ltd (1951) 82 CLR 199 per Williams J [at 202]).
However, Williams J also had commented in the earlier case of The Seven Up Company v. O.T. Limited that:[10]
[I]n the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader.
[10] (1947) 75 CLR 203 at 211
As there are instances where the parties rely on similar or identical evidence (albeit disagreeing on whose use it is), I find the opposed trade marks of the applicant and those common law trade marks identified by the opponent to be substantially identical. The determination of whether or not the opponent’s trade mark has been used earlier on goods/services that are the “same kind of thing” as the applicant’s goods/services largely depends upon the evidence of use put forward by the opponent. However, to ascertain the date prior to which the opponent must establish earlier trade mark use, it is necessary to analyse the applicant’s evidence first.
Applicant’s First Use of the Trade Marks
The applicant has stated that it (and its predecessor Americana Leadership College Pty Ltd) has been using the “Inner Peace Movement” and the “Peace Community Church” trade marks in Australia since 1977. In relation to the first trade mark, the Gibbs declaration provides:[11]
Since 1977, the Inner Peace Movement Trade Mark (and/or its abbreviation “IPM”) have also been used by ALC Pty Ltd and my Company on…Course materials in connection with camps from 1977 to date which prominently display the Inner Peace Trade Mark, including:… Copies of National Camp Brochures for courses conducted by ALC Pty Ltd in Australia and New Zealand dated August 1978.
[11] 1st Gibbs declaration, paragraph 28 and Exhibit SG-12.
The National camp brochures are in evidence at exhibit SG-12 to the first Gibbs declaration. They feature the “Inner Peace Movement” trade mark, with references to conferences and educational programs being held in Australia in August 1978, and also to the company Americana Leadership College Pty Ltd. I am satisfied that this constitutes trade mark use on behalf of the applicant’s predecessor-in-title and the remainder of the evidence appears to indicate that the use has continued until the filing date of the opposed application. As a result, in order to succeed under the section 58 ground of opposition the opponent must establish trade mark use of “Inner Peace Movement” by another trader in Australia prior to August 1978.
Turning now to the “Peace Community Church” trade mark, much of the applicant’s evidence either features the acronym “PCC” or a logo associated with those letters. That evidence does not constitute use of the trade mark as applied for (nor does it amount to use of the trade mark with additions or alterations not substantially affecting its identity). The applicant’s logbook for ceremonies of the “Peace Community Church of Australia” may have been able to establish use in relation to services claimed in class 45, but it is unclear how the trade mark was used and the logbook dates range from 1975-2002. Similarly, the log of radio interviews from 1988-2000 submitted by the applicant does not indicate when or how the trade mark was advertised. However, I find that an instance of use in Australia can be ascertained from the 2001 Camp brochures describing a “Peace Community Church Fellowship” course. Despite the inclusion of the word “Fellowship” I find that this example still amounts to use.[12] There are earlier instances referring to “Peace Community Church”, but I find that they are not uses of the expression as a sign to distinguish goods dealt with in the course of trade by the applicant from goods so dealt with by someone else.[13] Rather, the contexts in which those examples appear indicate use in a descriptive (and therefore non-distinctive) manner and not as the applicant’s badge of origin.
[12] An analogous decision on this point is QH Tours Ltd v Mark Travel Corp (1999) 45 IPR 553.
[13] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107 at [19]; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15; (2010) 265 ALR 645 at [43].
As the applicant’s common law use predates the filing date for the trade mark applications, the opponent must now establish use of “Inner Peace Movement” prior to 1978 and use of “Peace Community Church” prior to 2001. If the opponent is unable to demonstrate such use, the ground under section 58 of the Act must fail.
Opponent’s Use of the Trade Marks
The opponent declares that Dr. Coll travelled to Australia in the 1970s and controlled the use of his trade marks while he was living here. In addition, the opponent further declares that there has been use of the trade marks by the estate licensees since 1999-2001, (which appear to have occurred despite the objections from the applicant in this matter). Bald statements that Dr. Coll was the owner of these trade marks[14] in the United States, and that he controlled their use in Australia are not sufficient by themselves to establish ownership of the trade marks in Australia. Mere assertions of use without documentary support are generally given little weight in trade mark opposition matters.[15]
[14] (Or failing that, a company named Alley Copyrights, Inc – who owns the copyright in many of the brochures printed in the United States).
[15] Great White Shark Enterprises Inc v Joose Apparel Pty Ltd (1998) 41 IPR 208, Steen Petersen v Daniel Baden and Garth Harris [2003] ATMO 83.
The earliest piece of evidence from the opponent is an Australian Summer Camp Schedule from 1976-1977[16] featuring the acronyms “ALC” (presumably, Americana Leadership College, Inc), “IPM & Device” and a logo of a stick figure wearing a halo and clicking its heels above a globe of the world. This does not amount to use of either of the trade marks at issue here. There is one reference each to the “Inner Peace Movement program” and the “Peace Community Church” within the text of the schedule. However, due to their context I am not satisfied these are definitive instances of use as the opponent’s badge of origin, that the camp actually took place or that the schedule was distributed to Australian consumers. On the latter point, the opponent merely states that the schedule was “printed before the corporations or applicants existed” (my emphasis). The schedule does indicate that Dr. Coll was to conduct the educational courses, but there is no indication that he had or retained control of the use of the trade marks in Australia. Perhaps most importantly, even if the above examples did constitute use of the trade mark, the opponent has not adequately clarified whose use it is; whether it is use by applicant’s predecessor-in-title ‘Americana Leadership College Pty Ltd’ (incorporated on 2 February 1977), or by the ‘Americana Leadership College, Inc’ (incorporated in the US on 15 October 1977). If it could be proven conclusively that it was use by a company other than the applicant or its predecessor in title, section 58 may be satisfied. This has not been established.
[16] Conrad declaration, Exhibit 4.
The Simmons declaration indicates that Dr Coll travelled to Australia in 1999, and Ms Simmons also attended a “Man and the Universe” lecture in 1986 given by an ALC contracted instructor incorporating the trade marks. In terms of the evidence attached to that declaration, certain exhibits do not feature the trade marks and others are not examples of use as a trade mark in the Australian marketplace. The best examples of trade mark use consist of media articles referring to seminars on ESP (“extra sensory perception”) given by “Ms Simmons of the Inner Peace Movement in Australia” towards the end of 1992 and 1993.[17]
[17] Simmons declaration, exhibit LS-5.
However, the applicant’s evidence not only predates this use but also relies on the same media articles referred to by Ms Simmons[18] in support of its own argument, and declares that they are examples that[19] “the Inner Peace Movement Trade Mark has been used in association with promotional activities which have been undertaken by ALC Pty Ltd and by My Company” (i.e. the applicant). The opponent has not provided any evidence in response or any explanation in the face of this apparent inconsistency.
[18] At exhibit SG-57 of the Gibbs declaration.
[19] Gibbs declaration, paragraph 29.
The remainder of the opponent’s evidence is either dated after the applicant’s priority date or after the opponent’s use in Australia, contains the acronyms (“IPM” or “PCC”) rather than the trade marks, or does not feature the trade marks at all.[20] The opponent’s pamphlet featuring the “Peace Community Church” trade mark also has an attached sticker which states:
® Marks registered at USPTO or IPO other countries. Used in Australia since 1974 under direction of Dr. Francisco Coll or the Francisco Coll Monge Estate. Americana Leadership Inc. is a tradename and ® Service mark or trademark in USA, US PTO; Used with Permission
This is Exhibit 1D which was produced and … (sic).
[20] Conrad declaration, Exhibit 1D.
Due to the existence of the final partial sentence on the sticker it is clear that the preceding statement of ownership was an addition at the time of preparing the declaration and not part of the original document. The sticker also appears on another exhibit with the identical wording regarding the ownership of the trade marks. I can therefore give little weight to those statements.
In summary, the opponent has not discharged the onus of establishing use at common law of the opposed trade marks prior to the use demonstrated by the applicant or its predecessor in title. For those instances in the opponent’s evidence which do constitute use of the trade mark, it is possible to infer that it may actually constitute use on behalf of the applicant. If this is not the case, the opponent has not adequately addressed this apparent contradiction.
I am not satisfied that the opponent has sufficiently demonstrated that the trade marks had become identified in Australia with the goods of a foreign trader (whether that foreign trader was Dr Coll, or the U.S company Americana Leadership College, Inc) before the common law use by the applicant. As no instance of earlier trade mark use in Australia has been established, it is unnecessary to address the question of whether the opponent’s and the applicant’s goods and services are “the same kind of thing.” On the balance of probabilities, the ground under section 58 of the Act has not been established for either trade mark.
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 services may be opposed on the ground that:
(a)it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.
At the time of filing these applications, prior to the 2006 amendments to the Act[21], section 60 contained a threshold requirement for the trade marks of the applicant and the opponent to be substantially identical or deceptively similar.[22] Under section 58, I have already determined that the trade marks “Inner Peace Movement” and “Peace Community Church” are substantially identical to the opponent's marks. Therefore, the opponent must establish a sufficient reputation in these trade marks (existing on 11 March 2005) such that the applicant’s use of its “Inner Peace Movement” and “Peace Community Church” trade marks would be likely to deceive or cause confusion in the Australian marketplace.
[21] Trade Marks Amendment Act 2006.
[22] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80.
I refer to my detailed discussion under section 58 regarding the evidence submitted by the opponent. Even assuming that all of the examples provided by the opponent are instances of use by a company other than the applicant or its predecessor - the other shortcomings in the opponent’s evidence preclude a finding that it has a sufficient reputation in the trade marks. Certain examples are undated, some only refer to use of the marks in the United States, or do not feature use of the relevant trade marks. In McCormick & Co Inc v McCormick[23] Kenny J observed that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.
[23] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127.
However, the opponent has not provided any advertising expenditure or sales figures arising from its use of the trade marks “Inner Peace Movement” or “Peace Community Church.” As a whole, I find that the opponent has not discharged the onus of establishing the requisite reputation of its trade marks in Australia as at 11 March 2005, such that the use of the opposed applications would be likely to deceive or cause confusion. The ground of opposition under section 60 has not been established.
Decision
Section 55: Decision
(1) Unless the proceedings are discontinued or dismissed, 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.
As the opponent has not discharged the onus of establishing the grounds of opposition against either of the applicant’s trade marks, I find both oppositions have been unsuccessful. I direct that trade mark application nos. 1045722 and 1045725 may proceed to registration after one month from the date of this decision.
If the Registrar is served with a notice of appeal on or before the end of the appeal period, I direct that registration shall not occur until the appeal(s) have been discontinued, or in the event of an order from the court that the application(s) be subject to any order the Court sees fit to make.
Costs
As the applicant has been successful in these proceedings, I award costs against the opponent to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995 for both of the opposed applications.
Heath Wilson
Hearing Officer
Trade Marks Hearings
29 September 2010
1
16
0