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

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
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.
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.
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.
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.
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”…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Institute for Inner Studies, Inc [2010] ATMO 6
Case: [2010] ATMO 6
Decision Date: 19 January 2010

CaseChat Overview and Summary

The applicant, Institute for Inner Studies, Inc, sought to register the trade marks "Pranic Healing" and "Pranic Energy Healing" for services including meditation, education, and training. The Hearing Officer, Heath Wilson, was required to determine whether these trade marks were capable of distinguishing the applicant's services from those of other persons, as provided for under the *Trade Marks Act 1995* (Cth).

The central legal issue was whether the trade marks "Pranic Healing" and "Pranic Energy Healing" possessed the inherent capacity to distinguish the applicant's services, or if they had acquired distinctiveness through use, pursuant to section 41(6) of the Act. The Hearing Officer considered whether the evidence demonstrated that these terms were recognised as denoting the applicant's origin rather than merely describing the type of healing services offered.

The Hearing Officer found that the trade marks lacked inherent distinctiveness. While the applicant had used the terms since 1996, the evidence of use for "Pranic Energy Healing" was minimal. For "Pranic Healing," the evidence, including course certificates, clinic advertisements, brochures, and websites, often used the terms descriptively. Although advertising expenditure and sales revenue had increased, the Hearing Officer noted that a significant portion of the sales and some advertising materials were international and that the descriptive use of the terms weakened the claim of distinctiveness. Consequently, the Hearing Officer was not satisfied that the applicant had established that the trade marks distinguished their services under section 41(6)(a).

As the applicant failed to establish that the trade marks distinguished their services, the Hearing Officer applied section 41(6)(b) of the Act. Accordingly, both trade mark applications, numbers 1287221 and 1287224, were rejected.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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 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. 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. 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). 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). 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.

Decision

Reasons for decision

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 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. 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 WilsonHearing OfficerTrade Marks Hearings19 January 2010

Ratio Decidendi

Legal Principle Established

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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.