Michael Moshe Friedman, Aaron Strasser and Benyomin Klein v Mordechai Zalman Fixler

[2023] ATMO 214

TRADE MARKS ACT 1995

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

Re:Opposition by Michael Moshe Friedman, Aaron Strasser and Benyomin Klein to registration of trade mark application number 2143003 (41, 45) – CONGREGATION ADASS ISRAEL – in the name of Mordechai Zalman Fixler

Delegate:

Louise Tuohy

Representation:

Opponents: Russell Kenney Lawyers

Applicant: None

Decision:

2023 ATMO 214

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42 58, 60 and 62A – 62A considered – application made in bad faith – registration refused

Background

1. This matter concerns an opposition by Michael Moshe Friedman, Aaron Strasser and Benyomin Klein (‘Opponents’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] to the registration of the following trade mark application (‘Application’) in the name of Mordechai Zalman Fixler (‘Applicant’):

   Trade Mark Number:   2143003

   Trade Mark:  CONGREGATION ADASS ISRAEL (‘Trade Mark’)

   Filing Date:  12 December 2018 (Divisional)[2]

   Lodgment Date:               14 December 2020[3]

   Specification:  Class 41: Preparation and dissemination of religious and educational literature; organizing, conducting and teaching religious and educational classes, seminars and meetings; establishing and operating camps intended primarily for religious training and education purposes, and directing camp activities intended primarily for religious training and education purposes; biblical literature studies; and religious education services; none of the above being the service of directing social activities

   Class 45: Religious services, provided in person directly and through other written and oral media and forms of communication, such as literature and telecommunications, including ritual baths (mikva), marriages, barmitzvas, funeral ceremonies, eiruv; religious activities including prayer, praise and worship; organisation of religious meetings; kosher certification; religious counselling, guidance and advisory services; none of the above being the service of directing social activities (‘Applicant’s Services’)

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

   [2] The Application is a divisional filing from, now withdrawn, application 1974938. As such it retains the filing date of the parent: s 6 (definition of ‘filing date’).

   [3] This being the date the Application was made as divisional application.

2. The application was examined as required by s 31 and advertised as accepted for possible registration on 21 December 2020.

3. On 12 February 2021, the Opponents filed a Notice of Intention to Oppose registration, followed by its Statement of Grounds and Particulars (‘SGP’) on 12 March 2021. On 14 May 2021 the Applicant filed a Notice of Intention to Defend.

4. The Opponents subsequently filed the following declarations as evidence in support:

   • Declaration of Gina Tresidder, Special Counsel at Russell Kennedy Lawyers for the Opponents made on 13 August 2021, with Exhibits GT-1 to GT-3 (‘Tresidder’).

oExhibit GT-1 to Tresidder comprises the Declaration of Bejamin Koppel, one of the trustees of the Congregation Adass Israel Trust and President of the Board of Management of Congregation Adass Israel made on 25 June 2020 with Exhibits BK-1 to BK-86 (‘Koppel’).[4]

[4] Benjamin Koppel was originally recorded as the fourth joint opponent to this Opposition. Benjamin Koppel is now deceased and is accordingly no longer recorded as one of the Opponents – see s 220(b).

1. The Applicant did not file any evidence in answer.

2. Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. Both parties requested to be heard by way of written submissions.  This office set dates for the parties to file their written submissions. The Opponents filed written submissions on 12 October 2023. The Applicant filed its written submissions on 17 October 2023.

3. The matter has been allocated to me, a delegate of the Registrar of Trade Marks to decide based on the SGP, the evidence filed and written submissions.   

Preliminary Issue

1. On 26 September 2023 the Opponents filed further submissions referring to the material filed by the Applicant on 17 October 2023. The Opponents submit that the material is not limited to the Applicant’s written submissions rather it contains a significant amount of evidence that has not previously been lodged in the opposition. This material is both interspersed with the Applicant’s submissions and standalone documents.

2. The Opponents submit that the evidence should not be considered because it is not in declaratory form, it has been filed out of time and that the Applicant sought multiple times to suspend the proceedings or obtain unilateral extensions to the evidence deadlines and IP Australia has already determined there should be no further delays for the Applicant to file evidence.

3. Under reg 21.15(4), the Registrar is not bound by rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. Regulation 21.19 provides the Registrar with a discretion to take into account information that is relevant to proceedings. 

4. Nonetheless, there must be a compelling case for the Registrar to take information into account that is not part of properly filed evidence. In this matter the Applicant had made a series of extension requests to file its Evidence in Answer. Ultimately the Office did not grant those requests and the Applicant failed to file any Evidence in Answer. Now the Applicant has included Exhibits to its written submissions and has not provided a compelling case for it to file evidence, regardless of the relevance, shortly before a hearing.

5. I do not exercise my discretion under regs 21.15(4) or 21.19 to have regard to the evidence of Exhibits attached to the Applicant’s written submissions.

Grounds of Opposition and Onus

1. In the SGP the Opponents nominated grounds of opposition under ss 42, 58, 60 and 62A.

2. The Opponents bear the onus of establishing at least one of the grounds of opposition.[5] The standard of proof is the ordinary civil standard of the balance of probabilities.[6]

Discussion

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

[6] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Section 62A

1. Section 62A provides:

   62A  Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. In the SGP the Opponents particularise the ground of opposition under s 62A as follows:

   At no time was the Applicant authorized by the Board of Management of Congregation Adass Israel to use or apply to register the trade mark. On the contrary, the Applicant is a member of a breakaway group attempting to pass themselves off as Congregation Adass Israel.

   It is apparent that the Applicant accepts that he has no entitlement to use the trade mark, but he believes that if he asserts an entitlement to do so and Congregation Adass Israel commences proceedings against him in a Beth Din (Court of Jewish Law) he will be able to claim the assets of Congregation Adass Israel, and then accept a settlement of that claim, being part of those assets.

   The Opposed Application is a divisional application of Trade Mark Application No. 1974938 (Parent Application). It is apparent that the Opposed Application was filed solely as an attempt to frustrate and delay the opposition against the Parent Application. The Applicant’s Evidence in Answer in the opposition against the Parent Application was due on 29 December 2020. The Opposed Application was filed on 14 December 2020 and divided out all the services of the Parent Application except “directing social activities”. Subsequently, no Evidence in Answer was filed in the Parent Application and the Parent Application has now been withdrawn. As a result, the Opponents have been forced to oppose the Divisional Application in order to maintain their position, and the Applicant has improperly obtained several additional months to prepare his Evidence in Answer.

1. The Act provides no guidance as the meaning of the term ‘bad faith’. The Explanatory Memorandum to the Trade Marks Bill 2006 (Cth) provided that the new ground has been introduced to cater for situations (among others) ‘in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith’.

2. In DC Comics v Cheqout Pty Ltd (‘DC Comics’) Bennett J observed that all of the circumstances surrounding the application to register a trade mark are relevant.[7] Moreover, conduct after the filing of an application can be used to shed light on the Applicant’s subjective intent at the time of filing.[8]

   [7] [2013] FCA 478, [62].

   [8] Ibid, [71].

3. The test for bad faith incorporates subjective and objective elements. That is, I must consider what the Applicant actually knew at the filing date, and then consider whether, armed with that knowledge its decision to file the Trade Mark would be considered to be in bad faith by persons who adopt proper standards of behaviour in business. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’)[9] Dodds-Streeton J made the following comments, quoting from Harrisons’s Trade Mark Application:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton “the Robin Hood test”. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[10]

   […]

   [9] [2012] FCA 81.

   [10] Harrison’s Trade Mark Application [2004] EWCA Civ 1028.

4. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, 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.[11]

   [11] Fry (n 7) [2012] FCA 81, [147], [165]-[166].

5. In Koppel, the declarant Mr Koppel advises that the Opponents are all trustees of the Congregation Adass Israel Trust (‘CAIT’) and that he is a trustee of the CAIT and also the President of the Board of Management of Congregation Adass Israel (‘BoMCAI’).

6. Mr Koppel states that the Congregation Adass Israel (‘CAI’) is an unincorporated association which operates in accordance with a constitution.[12] Mr Koppel states that in approximately 1943, a synagogue known as Beth Ephraim opened at St Kilda, which was attended by a small group of strictly Orthodox Jews. The Beth Ephraim quickly became too small and on 10 May 1950, a contract for the purpose of purchasing a property at Ripponlea was entered into by the trustees of Jewish Congregation Beth Ephraim. On 20 August 1950 at a special general meeting of members the congregation resolved to change its name to CAI.

   [12] Exhibit BK-7 to Koppel comprises a copy of the original constitution of CAI dated 28 November 1945. Exhibit KR-8 to Koppel comprises an undated copy of the current constitution. 

7. Mr Koppel states that on 10 December 1961 an annual general meeting of the members of the CAI was held and resolved that a trust be established to hold the assets of the CAI and elected the initial trustees. In accordance with that resolution and election, on or about 1 June 1962, the CAIT was established pursuant to the Religious Successory and Charitable Trust Act 1953.[13]

   [13] Koppel [49] to [51] Exhibit BK-3. There is no act of any parliament by that precise title. This appears to a reference to the similarly named Religious Successory and Charitable Trusts Act 1958 (Vic).

8. Mr Koppel explains that CAI is a congregation of religious Jewish families which offers member families a range of services needed to maintain their strictly Orthodox lifestyles including but not limited to:

   • The maintenance of a communal centre at its headquarters in Ripponlea, which includes synagogues, learning and teaching facilities, library, mikvah, hall, boardroom, offices, kitchen and dining facilities.[14]

• A school, with secular studies run by Adass Israel School Inc, and religious studies provided by CAI Talmud Torah.[15]

• A burial society, Adass Israel Chevra Kadisha, which operates a funeral parlour and through the Addas Israel Cemetery Trust, owns and operates a cemetery, Adass Israel Public Cemetery.[16]

According to Mr Koppel ‘approximately 15 or more years ago, a group with a different religious philosophy started to prominently emerge as a sub-group (‘SG’) within the community of Orthodox Jews that [CAI] served’. Mr Koppel states that members of the SG have never held positions either as a trustee of the CAIT or as part of the BoMCAI.

[14] Koppel [13] to [16], Exhibit BK-11.

[15] Koppel [73] to [93].

[16] Koppel [99(c)], Exhibit BK-18.

1. Mr Koppel states that although the SG are members of CAI, the SG have progressively separated themselves from the rest of the CAI community. Mr Koppel states by way of example the SG tried to run their own activities within the communal centre, including their own prayer groups and own learning sessions. The SG also introduced separate prayer books. Mr Koppel states that in 2008 members of the SG established their own school called Divrei Emunah, as they were dissatisfied with the education provided by CAI.

2. Mr Koppel states that in 2018 following the death of the Chief Minister Rabbi Beck, an adhoc committee which included one member from the SG began a worldwide search for a new Rabbi. A ‘promising candidate’ for Rabbi was persuaded not to take up the position after representations from members of the SG. After further enquiries a Rabbi from Jerusalem indicated that he might be prepared to led CAI. The new Rabbi was then elected at a Special General Meeting of members of CAI on 2 December 2018. However, the SG boycotted the election for the new Rabbi and organised public prayers of their own at rented premises in Elsternwick.

3. Mr Koppel states that following this split the Applicant took steps to misappropriate the CAI name. Mr Koppel states that on 5 December 2018 the Applicant registered four business names, namely Adass Israel Congregation, Congregation Adass Yisroel, Congregation Adass Israel and Adass Yisroel Congregation.[17] Then on 12 December 2018 the Applicant filed Australian trade mark application number 1974938 for the words CONGREGATION ADASS ISRAEL in classes 41 and 45.

   [17] Koppel [113], Exhibit BK-76.

4. In Tressider, Ms Tressider states that in November 2019 the Opponents and Mr Koppel opposed the registration of 1974938 and Mr Koppel filed Evidence in Support in that matter. Ms Tressider states that the Applicant initially had until 29 September 2020 to file its Evidence in Answer. In August 2020, the Applicant requested and was granted an extension of time to file Evidence in Answer. Ms Tressider states that the Applicant did not file any Evidence in Answer or request a further extension of time. Instead, on 14 December 2020, the Applicant filed a divisional application (the Application), dividing out all the services except for “directing social services” from the parent application into the Application. Ms Tressider states that on 12 February 2021 the Opponents filed a request for a hearing in the 1974938 opposition. On 12 March 2021 the Applicant withdrew the parent application. Ms Tressider states that as a result of the Applicant filing the divisional application, in order to maintain their position, the Opponents have been forced to oppose the Application.

5. The Applicant’s written submissions states:

   …The congregation has existed for over 70 years, but the necessary steps to manage its assets and ensure compliance were not undertaken, including the failure to register a trademark, which should have been their initial action. Furthermore, the congregation's assets are held under various names, and all affiliated organizations maintain different board members who use the name "Congregation Adass Israel". In essence, negotiating the structure of Congregation Adass Israel is challenging because of its various boards and members.

   By registering the Trademark, I aimed to restructure the congregation's assets and establish a fair and transparent structure for everyone. Since Mr Koppel’s passing, Congregation members have begun to understand my objectives and plans, dedicatedly working towards restructuring the whole congregation—aligning all the entity's boards properly and managing its assets fairly, transparently, and compliantly.

   On the 7th of May 2023, a general meeting was called to confirm the incorporation process, and it was decided to proceed. After that meeting, a team of dedicated members gathered to monitor and ensure the incorporation process would be correctly followed through.

   I suggested to the new team overseeing the incorporation process that I would be willing to transfer the Trademark to the newly incorporated entity, which will hold it on behalf of all members of the Congregation Adass Israel.

   Upon completion of this incorporation, individual trustees will no longer be necessary and will be replaced by the incorporated entity with duly elected responsible persons who will ensure compliance, maintain transparency, and protect all members.

   It required years of campaigning and communication to gain support for my goal. I have worked tirelessly and invested large amounts of money to establish a congregation that will operate with transparency, legality, compliance, and fairness for all its members. Consequently, I will not consent to pay any of the opponents’ costs, as my endeavour has been solely to reinstate fairness, honesty, and integrity under the name CONGREGATION ADASS ISRAEL.

   I have not tarnished the name over the years; neither has anyone bothered to register it for the last seventy years. It is being used by many congregations, both worldwide and nationwide. I have maintained it with care and dignity, and my endeavours aim solely to deliver it to the right people.

   I request that the hearing officer dismiss the opposition's contradictory and misleading evidence and preserve the trademark under my registration, this will aid us in achieving our goal of completing the incorporation process professionally, legally, and transparently and protecting all members.

   Regarding costs, I bear no liability and claim costs from the opposition.

6. The arguments put forward by the parties demonstrate a long-standing and complex relationship between the Opponents and the Applicant which appears to have soured.

7. The Opponents’ evidence satisfies me that before the Relevant Date that the name CAI had been in existence for over 60 years and a range of services are provided to CAI members either directly or indirectly under this name. It is also apparent that the Applicant in filing the Application was on notice of the Opponents’ concerns as he was given a copy of the Opponents’ SGP and evidence in the opposition to registration of the parent application. Moreover, the Applicant is a member of the CAI and at the Relevant Date had full knowledge that the name CAI was used by the CAI and its affiliates to provide the same services as those claimed by the Applicant in the parent application and in the Application.  

1. The Applicant, motivated by what he considers is the failure of the CAI board to manage its assets and ensure compliance to its constitution, filed the application for the Trade Mark without CAI board or other executive approval. The Applicant took this step with the aim of bringing about structural reform in the CAI and has no plans to use the Trade Mark. Interestingly the Applicant submits that he will only transfer the Trade Mark to the resultant corporate entity, after the CAI is incorporated.  

2. The Applicant has been very plain in his submissions that this filing was not motivated by plans to use the trade mark, but instead the Application is a bargaining chip to use in an attempt to change what he perceives as structural issues in CAI. That admitted ulterior motive, together with the Applicant’s knowledge of and personal involvement in CAI immediately prior to filing, indicate that the act of filing was in bad faith. As I have noted, the present Application is a divisional of a previously opposed application. This extra step taken by the Applicant has had the effect of protracting the dispute between the parties before this office, adding further colour to the decision by the Applicant to file this second time around.   I find that the Applicant did not demonstrate commercially appropriate behavior in applying for a trade mark and that in all the circumstances surrounding this matter, the Application was made in bad faith.

3. The Opponents have established the s 62A ground of opposition.

Decision

1. Section 55 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 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.

2. The Opponents have established a ground of opposition under s 62A. Accordingly, I refuse to register trade mark number 2143003. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

20 December 2023