Institute for Inner Studies, Inc

[2010] ATMO 6

TRADE MARKS ACT 1995

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

Re:Trade mark application numbers 1287221; 1287224 (41, 42, 44) - PRANIC HEALING; PRANIC ENERGY HEALING- in the name of INSTITUTE FOR INNER STUDIES, INC.

Delegate:	Heath Wilson
Representation:	Natasha Williams of Griffith Hack, Patent & Trade Mark Attorneys
Decision:	2010 ATMO 6 Section 33: Section 41 –Trade mark has no inherent adaptation to distinguish the services – Founder of the specific service - s41(6) - Evidence insufficient - Trade mark applications rejected.

Background

1. The Institute for Inner Studies, Inc. (“the applicant”) has previously applied to register the trade marks PRANIC HEALER (applications 1077124 & 1077324) on 26 September 2005, and PRANIC ENERGY HEALING (1130912) and PRANIC HEALING (1130914) on 22 August 2006. The latter two of those applications listed services as follows:

   Class: 41 Education and training, including education and training in meditation, yoga, non-contact energy transfer techniques, and application of meditation practices, yoga, non-contact energy transfer techniques for health and well-being purposes

   
   Class: 42 Research and development in meditation practices, yoga, non-contact energy transfer techniques and the effects on health and well-being arising from application of meditation practices, yoga, non-contact energy transfer techniques

   
   Class: 44 Beauty, health and well-being maintenance care services for humans, animals, plants and the environment, including application of meditation practices, yoga, non-contact energy transfer techniques for health and well-being purposes

2. For all four of these earlier applications, an objection under section 41(6) of the Trade Marks Act 1995 (“the Act”) was raised during examination on the basis that the trade marks consisted of words that other traders would be likely to use (without improper motive) in connection with their services.    

3. Applications 1077124 and 1077324 lapsed in due course. The evidence submitted by the applicant in support of applications 1130912 and 1130914 did not satisfy the examiner that the provisions of subsection 41(6) of the Act could be applied to those trade marks. Those applications, too, have since lapsed.

4. On 27 February 2009, the applicant again applied to register the trade marks PRANIC HEALING and PRANIC ENERGY HEALING (applications 1287221 and 1287224 respectively – “the current applications”) for the services previously specified.

5. When the current applications reached the examination stage, a notice of intention to reject was issued on the same basis, taking the previous applications into account, along with their evidence and submissions. Under section 33(4) of the Act, the applicant exercised its right to be heard in relation to the aforementioned section 41 ground for rejection.

6. The evidence submitted during the examination of application nos. 1130912 and 1130914 was resubmitted as the entirety of the evidence for this hearing.  That evidence consists of the statutory declaration of Maria Louisa Choa Uy, the General Manager of the applicant (with attached exhibits). I heard this matter in Canberra on 25 November 2009 as a Delegate of the Registrar of Trade Marks. Natasha Williams of Griffith Hack, patent and trade mark attorneys, appeared on the applicant’s behalf.

   Reasons

   “Pranic Healing” and “Pranic Energy Healing”

7. Both words “Pranic” and “Healing” have meanings by themselves. The word “Pranic” has been defined as “Of, relating to, or consisting of prana”[1] or the “adjective form of prana, the vital energy which permeates the universe.”[2]  In addition, the Sanskrit word “Prana” (used in Hinduism) means “the principle of life moving in the human body”[3] and “Breath, considered as a life-giving force.”[4] As a result, the combinations of words forming both of the applicant’s trade marks also have clear meanings, being services with the aim of utilising a persons’ “Prana” or “Pranic energy” to heal.

   [1] Oxford English Dictionary Online – (Oxford University Press 2009)

   [2] & Applicant’s submissions on Trade mark application no. 1130914.

   [3] The Macquarie Dictionary Online © Macquarie Dictionary Publishers Pty Ltd.

   [4] The Oxford Dictionary of English (revised edition). Ed. Catherine Soanes and Angus Stevenson. Oxford University Press, 2005).

8. The applicant stated that Pranic healing (or Pranic energy healing) is a system of energy medicine developed by Master Choa Kok Sui in Quezon City, Phillipines on 27 April 1987. The applicant has further declared that Master Choa Kok Sui also established the applicant.

9. Section 41: Inherent adaptation to distinguish

   In the case of F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[5] the relevant test under section 41 of the Act was summarised 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 that 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.

   [5] F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 per Kitto J.

10. Taking into account the above definitions of the applicant’s marks and their specification of services, the trade marks are prima facie descriptive and are expressions that other traders are likely to want to use to describe their services. In this particular case, the determinative issue is whether the submission that the founder (and by extension, the applicant) has coined the terms, is sufficient to render the trade mark inherently adapted to distinguish under section 41(3), or capable of distinguishing under the provisions of section 41(6).

11. This issue occasionally arises in trade mark opposition proceedings. A trader who invents a new form of martial arts,[6]  cultivates a new variety of plant,[7]  or is the founder of a new form of healing can encounter difficulties when attempting to register a trade mark which is to become the identifier for that specific product or service. In this matter, the difficulty arises because the expression “Pranic Healing” is the only way for another trader in the same field to accurately describe this service. While it is dated precedent, the case of Siegert v Findlater[8] effectively articulates the applicant’s problem:

    The person who produces a new article and is the sole maker of it, has the greatest difficulty (if it is not an impossibility) in claiming the name of that article as his own, because until somebody else produces the same article there is nothing to distinguish it from.

    [6] Rimmington v Zen Do Kai Pty Ltd (2002) 57 IPR 127.

    [7] Strauss’s Application (1999) 47 IPR 191 (Reg).

    [8] Siegert v Findlater [1878] 7 Ch D 801 at 813 (“Angostura Bitters”) per Fry J.

12. This situation is similar to instances when a proprietor’s monopoly in a product causes the trade mark to become descriptive of the product and therefore lose its capacity to distinguish.[9] While a person or entity may use a trade mark in a descriptive manner, this does not mean that it is transferred from private property to a publicly available expression.[10] In this case however, other practitioners of Pranic Healing or Pranic Energy Healing have no alternative but to use these words in the ordinary course of trade.

    [9] For example, Shredded Wheat Co. Ltd v Kellogg Co (G.B.) (1940) 57 RPC 137.

    [10] Business Marketing Australia Pty Ltd v The Australian Telecommunications Commission [1994] 28 IPR 589.

13. The name indicates the product (or service) in general,[11] rather than the product as emanating from one particular trade source. While Pranic Healing is similar to the ‘Reiki’ method of healing, a perusal of the websites listed in the applicant’s evidence indicates that Reiki and Pranic Healing are in fact two different methods of energy healing. This situation is akin to that in the “Linoleum” case[12] where that was the only accurate word to describe those particular goods. Pranic Healing and Pranic Energy Healing are both expressions which other practitioners of this specific form of healing (acting without improper motives) may legitimately desire to use.

    [11] Powell v Glow Zone Products Pty Ltd (1997) 39 IPR 506; (1997) 150 ALR 411.

    [12] Linoleum Manufacturing Co v Nairn (1878) 7 Ch. D 834

14. Contrary to this conclusion, Maria Uy has stated that the words Pranic Healing and Pranic Energy Healing are terms that can be legitimately “used only by practitioners of our courses and members of local Pranic healing organizations licensed by the applicant.” The declaration then goes on to list these Australian (and overseas) licensees via their websites. However, the evidence to support this statement is slight. For example, it is unsupported by evidence of any licensing contract or agreement to use the applicant’s trade marks, and instead appears to be graduates of the applicant’s course simply using the words to describe the services they now offer.  In addition, the applicant’s website describes Pranic healing as “an ancient science and art,” and that Master Choa Kok Sui appears to have developed a modern form of it.

15. Even if the applicant was able to establish that graduates of the applicant’s course (who the applicant describes as its “licensees”) were the only ones who could legitimately use the expression, the phrase does still have its ordinary descriptive meaning (i.e. healing utilising ‘Prana’). Therefore, evidence would nonetheless be required to establish that these expressions would be recognised solely as the applicant’s sign or badge of origin. 

16. Despite the fact that the applicant appears to have developed a new form of an ancient healing technique and has declared that it was the first trader to coin the expressions, allowing the registration of these trade marks under section 41(3) would create a monopoly in the use of the words for these services. As Lord Parker of Waddington commented:[13]

    It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire to use.

    [13] In Registrar of Trade Marks v W& G Du Cros Ltd [1913] AC 624 (at 634).

17. In summary, I find that the trade marks “Pranic Healing” and “Pranic Energy Healing” have no inherent capacity to distinguish the applicant’s services and the matter is to be determined under section 41(6). I will now consider whether the evidence submitted by the applicant is sufficient to satisfy s 41(6) of the Act.

    Applicant’s Evidence of Use

18. The relevant provision of section 41(6) of the Act states:

    (6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

    (a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

    (b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

19. Under this section, the applicant must establish that its trade marks do distinguish. The relevant question is whether, on the strength of the applicant’s evidence, the words “Pranic Healing” and “Pranic Energy Healing” are already recognised as denoting the applicant rather than just describing of the type of healing.

20. The applicant has submitted that it first began using the trade marks “Pranic Healing” and “Pranic Energy Healing” in Australia in 1996 for the services of “meditation, education and training of meditation and yoga.”[14] There is, however, little evidence of use of the second trade mark “Pranic Energy Healing” in relation to any of the applicant’s claimed services.

    [14] Statutory declaration of Maria Louisa Choa Uy (paragraph 3).

21. The applicant’s evidence for Pranic Healing includes certificates from the applicant’s “Pranic Healing Course” and advertisements for a “Pranic Healing Clinic.” The claimed trade mark is also featured in a number of brochures, magazines and on various websites (aimed at both the Australian and overseas markets). Certain advertising examples highlight the use of a company logo accompanying the advertisement which appears to act as the applicant’s trade mark[15] instead of the words “Pranic Healing” which describe the services. The remaining advertising material also uses the expression to describe the services offered, rather than as an indicator of the applicant’s trade origin.

    [15] Statutory declaration of Maria Louisa Choa Uy (Exhibits MLCU-3 to 4).

22. There has been an increase in the advertising expenditure for the trade mark from 1998 to 2006, and the total sales revenue (while significant) includes a considerable overseas market. However, the fact that the evidence highlights examples of the mark being used in a descriptive sense for the services weakens the evidence relating to the sales figures from 1998 to 2008. In addition, some of the brochures and websites are international examples, tailored for consumers outside Australia.

23. The attorney for the applicant has submitted that a relevant factor in this consideration is that the applicant operates within the small industry base for alternative forms of medicine. While it is a narrow field of medicine, the relevant test must be whether other traders in that field would ordinarily think of the term and desire to use it legitimately in relation to their services. Consequently, the fact that they are terms used within a small industry base provides little assistance in relation to the outcome of this matter.

24. The New Zealand case of Maharishi's Global Administration Through Natural Law [2005] NZIPOTM 8 (8 March 2005) is analogous to the facts of the current matter. It was found that the expression “Transcendental Meditation” was coined by the applicant in that case and was inherently adapted to distinguish its services. However, this finding was made on the basis of extensive use of the trade mark in that country in a trade sense. Additionally, it included clear evidence that the applicant strictly controlled the practice of the technique in that country, and that no other trader had (at that time) sought to use the same mark in relation to their own services. I am not satisfied that the applicant has established these factors in the current proceedings.

25. The above objection clearly applies to the type of healing offered under the class 44 specification of services. A further consideration is whether the applicant’s trade marks are inherently adapted to distinguish the services of research and development (Class 42) or education and training (Class 41). I find that other traders teaching “Pranic Healing” or “Pranic Energy Healing” would need to use those terms to describe the subject matter of their educational services. Similarly, those traders involved in the research and development of this particular method of healing would also need to use the expressions, particularly as these services are specific to “meditation practices, yoga and non-contact energy transfer techniques.” Accordingly, I am not satisfied that the applicant’s evidence before me is sufficient to establish Pranic Healing or Pranic Energy Healing as expressions originating from one trade source, for any of the classes in the applications.  

26. If the ground for rejection existed under section 41(5) rather than section 41(6) in relation to these particular classes, I would still find the evidence in support of that provision to be insufficient. As I am not satisfied that the applicant has established on the evidence that the trade marks distinguish the relevant services, I find that subsection 41(6) (b) of the Act applies to both trade mark applications.

    Decision

27. Section 33: Application accepted or rejected

    (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

    (a)       the application has not been made in accordance with this Act; or
               (b)       there are grounds under this Act for rejecting it.

    (2)       The Registrar may accept the application subject to conditions or limitations.

    (3)       If the Registrar is satisfied that:
               (a)       the application has not been made in accordance with this Act; or
               (b)       there are grounds under this Act for rejecting it;

    the Registrar must reject the application.

28. I have already said that the trade marks “PRANIC HEALING” and “PRANIC ENERGY HEALING” are devoid of inherent adaptation to distinguish the services claimed in the application, and that I am not satisfied that the evidence provided allows the provisions of subsection 41(6)(a) of the Act to be applied. Accordingly, I reject both trade mark applications no. 1287221 and 1287224.

    Heath Wilson
    Hearing Officer
    Trade Marks Hearings
    19 January 2010