Steven Penson v Aquarian Foundation Inc

[2022] ATMO 115

TRADE MARKS ACT 1995

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

Re:Opposition by Steven Penson to registration of trade mark application number 2044021 (Class 45) – Aquarian Foundation – in the name of Aquarian Foundation Inc.

Delegate:	Blake Knowles
Representation:	Opponent: Ms Nancy Lee.   Applicant: Ms Jannifer Werner.
Decision:	2022 ATMO 115 Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pressed under ss 41, 42, 43, 44, 58, 58A, 59, 60 and 62A – no ground established – trade mark to proceed to registration.

Background

1.     This is a decision on the opposition by Steven Penson (‘Opponent’) to the registration of trade mark application number 2044021 (‘Application’) filed by Aquarian Foundation Inc (‘Applicant’) on 16 October 2019 (‘Relevant Date’). The Application is for the trade mark ‘Aquarian Foundation’ (‘Trade Mark’) for Class 45: Conducting religious ceremonies; Ministerial services (religious); Organization of religious meetings; Pastoral care (religious services); Religious services; Spiritual or religious counselling (‘Applicant’s Services’).

2.     The Application was examined and later accepted for registration and advertised for opposition on 4 May 2020. The Opponent filed notice of his intention to oppose the Application on 3 July 2020 and a statement of grounds and particulars (‘SGP’) on 3 August 2020. The Applicant filed a notice of its intention to defend the Application from opposition on 12 September 2020.

3.     The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent did not file Evidence in Support. The Applicant filed Evidence in Answer (‘EIA’) on 23 December 2020. The Opponent filed Evidence in Reply (‘EIR’) on 22 March 2021.

[1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4.     The Applicant subsequently sought to file additional non-declaratory material annexed to a letter dated 15 January 2021. This material was filed after the due date for the EIA and the Applicant made no request for an extension of time, or request to have that information considered under reg 21.15(4) and 21.19. As such, I have not considered this material in reaching my decision.

5.     On 17 August 2021, the Opponent requested to file supplementary evidence, being a declaration by Nancy Lee dated 16 August 2021. The Applicant responded by filing its own additional evidence on 18 August 2021 being a further declaration of Jannifer Werner. On 29 April 2022, the Opponent also requested that I issue a notice requiring the Applicant to produce a broad range of documents. On 10 May 2022, I advised the parties that I did not intend to consider the additional evidence as I was not satisfied that it had sufficient probative value (in the sense that it did not appear to establish any facts relevant to the grounds of opposition). I also declined to issue a notice requiring the Applicant to produce documents on the basis that the information required did not appear to be relevant to the proceedings and that the request amounted to a de facto request for discovery.

6.     Both parties requested to be heard by videoconference. Prior to the hearing, the Opponent filed a written outline of submissions on 31 May 2022. The Applicant did not file a written outline of submissions. The matter was heard before me as a delegate of the Registrar by video conference on 15 June 2022. The Opponent was represented by Ms Nancy Lee. The Applicant was represented by Ms Jannifer Werner. I have decided this matter based on the particulars set out in the SGP, the EIA and EIR, and the submissions of the parties.  

Grounds and onus

7.     The SGP nominates grounds of opposition under ss 41, 42(b), 43, 44, 58, 58A, 59, 60, and 62A.

8.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

9.     The following evidence was filed:

EIA

Declarations of Jannifer Werner, President of the Applicant, made on 22 December 2020, with annexures.

EIR

Declaration of Steven Penson, Opponent, made on 11 March 2021, with annexures A to M.

EIA

10.     Ms Werner declares that the Applicant has distinguished its services and goods as the world-renowned Church of Higher Spiritualism for Higher Spiritualism teachings for the Aquarian Age (i.e. the Age of Aquarius). The teachings of the Applicant came by and through the mediumship of Keith Milton Rhinehart, a world-renowned spiritual leader and teacher.

11.     Ms Werner declares that the Applicant was founded in Seattle, USA, in 1955, and has used the Trade Mark since this time. Ms Werner states that the first use of the Trade Mark in Australia occurred in 1995 (when the Applicant founded study groups) and the Applicant has since established a reputation in the Trade Mark. Ms Werner attaches flyers for a Brisbane study group that display the Trade Mark. The first flyer (marked ‘Copyright 2010’) refers to ‘Aquarian Age Teachings’ and ‘Ancient Wisdom for the enlightenment and upliftment of all humankind’. The second flyer (marked ‘Copyright 2002’) refers to the study of spiritual healing, life after death, spiritual psychical development, guardian angels, meditation, reincarnation, and karma, among other things.

12.     Ms Werner declares that the trade mark is registered in the USA as trade mark number 2379780 (‘US Registration’). Ms Werner annexes a USPTO extract dated 24 October 2020 indicating that the Trade Mark was registered in the USA on 22 August 2000.

EIR

13.     Mr Penson refers to the EIA and makes several criticisms of its content, including that the evidence does not support a claim by the Applicant to common law rights in the Trade Mark and that it does not demonstrate use of the Trade Mark in commerce since 1955. Further, Mr Penson annexes a USPTO extract which indicates that the US Registration, and other trade marks associated with the Applicant, were pending cancellation at the time of his search.  

14.     Mr Penson declares that the flyers included in the EIA displayed no address, and that a phone number appearing on one flyer was unable to be reached. Mr Penson also observes that there is neither a production date for the flyers or a printer’s name, nor has the Applicant provided a receipt to substantiate their printing.

15.     Mr Penson declares that his review of annexed Internet Archive Wayback Machine records for the Applicant’s website ( indicated that it was ‘under construction’ and not operative as of 3 December 2001, although the website did appear to be operative based on the Wayback Machine extract of 8 February 2014.

16.     Mr Penson declares that his search of the Australian Securities and Investments Commission (‘ASIC’) database did not reveal a business entity in Australia under the name ‘aquarian foundation inc’. A printout of the ASIC search is annexed.

17.     Mr Penson declares that the Queensland land title certificate for the address provided by the Applicant for its Brisbane study group and used as its address for service (‘Australian Address’) is held by an individual, and there is no tenancy or lessee shown on the certificate. Mr Penson also found no connection between the Australian Address and the Applicant.

18.     Mr Penson declares that he did not find religious goods or services offered under the Trade Mark by the Applicant in Brisbane or anywhere else in Australia. Mr Penson also declares that his investigation indicates that Ms Werner has no domicile in Australia, or any connection or ties with anyone in Australia.

19.     Mr Penson indicates that the ‘Church of Higher Spiritualism Incorporated’ was previously a registered charity in Australia, but registration as a charity was revoked on 17 March 2016. An extract from the Australian Charities and Not-for-profits Commission database is annexed.

20.     Mr Penson annexes a list of trade marks filed by the Applicant in Australia at the Relevant Date, and an unrelated trade mark filed by a similarly named entity in 1989. Mr Penson raises concerns regarding the use of the Australian Address by the Applicant given the information he found regarding title to the property.

21.     Mr Penson declares that he is the owner of five registrations for the mark ‘AQUARIAN’ (‘Opponent’s Mark’), collectively covering Classes 3, 7, 9, 11, 32, and 35. A table containing details of the registrations is attached as Annexure A (‘Opponent’s Registrations’).

22.     Mr Penson declares that his first use of the Opponent’s Mark occurred before 2010 when he manufactured a drink machine branded ‘AQUARIAN’. Mr Penson explains that he has used the Opponent’s Mark for the goods and services designated in the Opponent’s Registrations as well as other goods and services, in Australia and other countries. Mr Penson opines that it is highly conceivable that goods branded with the Opponent’s Mark were encountered by the Applicant in the USA, which prompted filing of the Application in Australia.

23.     Mr Penson declares that he incurred a significant sum (exceeding the Australian average salary) branding and setting up his business. Mr Penson annexes business name registration certificates, including for ‘Aquarian Australia’, ‘Aquarian Water Company’, ‘Aquarian International’, and ‘Aquarian Foundation’. Mr Penson also annexes a list of ‘aquarian’ formative domain names including aquarianfoundation.com.au, aquarianfoundation.net.au, aquarianfoundation.org.au, and aquarianfoundation.services. I note that the business name ‘Aquarian Foundation’, and domain names containing ‘aquarianfoundation’ as their identifier, were all registered after the Relevant Date.

24.     Mr Penson declares that ‘before long’ he came to form an on-line community named ‘Aquarian Club’ and ‘Aquarian Foundation’, catering for a wide range of interests from business consultancy, intellectual property, counselling, physical/mental wellness, and personal development, with the key focus being for the general good and wellbeing of the AQUARIAN community.  Mr Penson annexes redacted invoices headed with ‘Aquarian Australia’ sent to Australian addresses dated from 2017 which refer to membership in the ‘Aquarian Club’, and entrance to ‘Aquarian Foundation’. Other invoices sent to Australian addresses relate to goods such as bottled water, air conditioners, water dispensers, baby foods, and toiletries.

25.     Mr Penson declares that he has cultivated a premium image for the Opponent’s Mark, and that goods have been placed in high-end retail stores, luxury hotels, and inflight catering with exposure to international travellers and sophisticated customers. Mr Penson refers to the on-line and offline distribution network for goods in Australia and overseas, and sales offices in foreign markets (including USA and Europe). Mr Penson annexes an online marketplace brochure showing some of the goods and services offered under the Opponent’s Mark, including home appliances, baby foods, bottled water, beauty and personal care products, toiletries, diving accessories, and leather goods. Also included in the brochure is very brief information about the ‘Aquarian Foundation Community Online’ which states membership requirements and eligibility, and which states the goal of the Aquarian Club and Aquarian Foundation is to ‘Promote, support and counsel like-minded aquarians in their business and personal endeavours’.

Discussion

Section 44

26.     To establish grounds of opposition under s 44, the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority date of the Application, and which is in the name of a person other than the Applicant. The earlier mark must be filed or registered in respect of services that are similar to the Applicant’s Services, or goods that are closely related to the Applicant’s Services. Further, the earlier mark must be either substantially identical or deceptively similar to the Trade Mark of the Application.

27.     The Opponent relies on the Opponent’s Registrations for the Opponent’s Mark as the basis for the s 44 ground. Each of the Opponent’s Registrations has a priority date that is earlier than the Relevant Date (which is also the priority date of the Application). As such, I must now consider whether the Applicant’s Services are similar to any of the services or closely related to any of the goods covered by the Opponent’s Registrations.

28.     Services will be considered similar to other services if they are either the same or ‘of the same description’.[4] The test for determining whether services are of the same description is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the services, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative. [5]

[4] Trade Marks Act 1995 (Cth), s 14.

[5] Re Jellinek’s Application (1946) 63 RPC 59, 70.

29.     Whether services are closely related to goods involves different considerations. In Kicking Horse Coffee Co. Ltd, Hearing Officer Brown summarised the authorities as follows:

The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:

The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…

In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:

It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’. Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.[6]

[6] [2018] ATMO 193, [19]-[21] (citations omitted).

30.     Turning first to the question of similar services, I note that of the Opponent’s Registrations, only trade mark number 1817930 covers services. These are in the nature of distribution services, advertising and marketing services, business management and administration services, stock and sell services, import export services, and retail services, all falling in Class 35. Each of these services has a different nature and purpose when compared to the Applicant’s Services, which are spiritual and religious in nature. Further, a consumer would not expect the respective services to be provided via the same trade channels. As such, I am not satisfied that the Applicant’s Services are similar to the services covered by trade mark number 1817930.

31.     Turning next to the question of the closely related goods and services, the goods of the Opponent’s Registrations (specifically trade mark numbers 1391575, 1472489, 1574948, and 1680062) can collectively be divided into three broad categories, namely, (i) machines and apparatus in Classes 7, 9, and 11, (ii) toiletries and cosmetic in Class 3, and (iii) beverages and preparations for making beverages in Class 32. With regards to the first category, there is no perceptible link between machines and apparatus mentioned and religious and spiritual services. Religious and spiritual services are not provided by means of the machines and apparatus in question, nor are such services provided in relation to those machines. With regards to the second category, there is no evidence that cosmetics and toiletries are commonly provided as part of religious or spiritual services, or that consumers would otherwise associate such products with the provider of a religious or spiritual service. With regards to the third category, I understand that beverages may be consumed as part of a religious or spiritual service, or that a religious organisation (like other organisations) may provide beverages as a promotional or charitable service or sell beverages in a canteen. However, this link between beverages and religious and spiritual services is not sufficiently strong to conclude that the respective goods and services are closely related. The provision of religious and spiritual services generally does not require the provision of beverages, nor would consumers to my mind perceive a link between such goods and a religious organisation if they encountered the same brand used in relation to both.

32.     As I do not consider the Applicant’s Services are similar or closely related to any of the services or goods covered by the Opponent’s Registrations, the ground under s 44 is not established.

Section 58A

33.     Section 58A is only applicable where a prima facie ground of opposition has been established under s 44, and the Applicant has successfully overcome the ground of opposition by reliance on evidence of prior and continuous use under s 44(4).

34.     The Opponent has failed to establish the ground under s 44. As such, it was not necessary for the Applicant to rely on s 44(4), and the ground under s 58A cannot be established.

Section 58

35.     To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical to the Trade Mark[7] and which has been used for goods or services that are the ‘same kind of thing’ as the Applicant’s Services.[8] The trade mark relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark by the Applicant, whichever is earlier.

[7] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

[8] Re Hicks's Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

36.     The Opponent relies on his use of AQUARIAN and AQUARIAN FOUNDATION as the basis for this ground. As such, I must consider whether the Opponent’s use of those marks is for goods or services that are the ‘same kind of thing’ as the Applicant’s Services.

37.     The test for whether goods and/or services are ‘the same kind of thing’ is a narrower assessment than whether they are goods or services ‘of the same description’ or are ‘closely related’.[9] In the context of a trade mark opposition, the test highlights the significant limitation of ownership of ‘common law’ trade mark rights as compared to ownership of a registered trade mark.

[9] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12]-[13] (Kenny J).

38.     In Colorado Group Ltd v Strandbags Group Pty Ltd (‘Colorado’), Allsop J said:

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical… yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same… though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206).  This approach is conformable with the terms of the 1995 Act.[10]

[10] Ibid, [89].

39.     I have already determined above that the Applicant’s Services are not similar or closely related to the goods and services of the Opponent’s Registrations. It also follows that the respective services and goods are also not ‘the same kind of thing’. As such, I am not satisfied that the ground of opposition is established based on the use of the Opponent’s Mark for any of the goods or services covered by the Opponent’s Registrations.

40.     The Opponent has also alleged use of AQUARIAN FOUNDATION in relation to an on-line community catering for a wide range of interests from business consultancy, intellectual property, counselling, physical and mental wellness, and personal development, with the key focus being for the general good and wellbeing of the community. I note that several of the invoices provided by the Opponent also refer to AQUARIAN FOUNDATION. However, aside from the references on the invoices and the aforementioned online brochure, the evidence otherwise does not give any context to the use of AQUARIAN FOUNDATION by the Opponent. As such, I am unable to determine whether any activities carried on by the Opponent under AQUARIAN FOUNDATION are the same kind of thing as the Applicant’s Services.

41.     As I am not satisfied that any goods or services provided or registered by the Opponent under the Opponent’s Mark or under the trade mark AQUARIAN FOUNDATION are the same kind of thing as the Applicant’s Services, the ground under s 58 is not established.

Section 60

42.     To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.

43.     It is not necessary for the Opponent to establish that the trade mark relied on by the Opponent as the basis for this ground and the opposed Trade Mark are deceptively similar, or that the relevant goods or services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods or services, the more likely the existence of a reputation in the trade mark relied on by the Opponent is to give rise to a likelihood of confusion. 

44.     In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[11]

[11] [2000] FCA 1335, [85]-[86].

45.     In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[12]

[12] [2019] FCA 923, [83] (O’Bryan J).

46.     The Opponent relies on reputation in the Opponent’s Mark as the basis for this ground. However, while I am satisfied that there has been use of the Opponent’s Mark and associated sales of goods and services, the EIR is insufficient to allow me to determine the extent of the use and level of exposure of the Opponent’s Mark in Australia. The Opponent has provided no aggregated revenue or promotional expenditure figures on a year-by-year basis, nor are there any other relevant metrics (e.g. website analytics, social media following etc) from which I can objectively assess the exposure and recognition of the Opponent’s Mark at the Relevant Date.

47.     As I am not satisfied that reputation exists in the Opponent’s Mark in Australia, the ground under s 60 is not established.

Section 42(b)

48. The Opponent under s 42(b) alleges that use of the Trade Mark would constitute a breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’), on the basis that use of the Trade Mark would mislead or deceive consumers.

49. The claim that use of the Trade Mark would constitute misleading or deceptive conduct under the ACL first relies on the Opponent establishing reputation in the Opponent’s Mark. Without reputation, there can be no mistaken belief or assumption on the part of the consumer caused by use of the Trade Mark, and therefore such use cannot be misleading or deceptive.

50.     I have already determined under s 60 that the evidence is insufficient to establish reputation in the Opponent’s Mark in Australia.

51.     In the absence of sufficient evidence of reputation, I am not satisfied that use of the Trade Mark would be contrary to law, and the ground under s 42(b) is not established.

Section 43

52.     To establish this ground, the Opponent must show that there is a connotation within the Trade Mark and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.

53.     In the SGP, the Opponent particularised the ground under s 43 by alleging that use of the Trade Mark would convey that the Applicant has a licence from, or is affiliated with, the Opponent.

54. Section 43 of the Act is concerned with a connotation arising from the trade mark itself, not from a likelihood of deception or confusion arising as a result of similarities between a trade mark and another trade mark.[13] The allegation made by the Opponent is more relevant to ss 42(b), 44, and 60, which have been dealt with above.

[13] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).

55. The evidence does not establish that the Trade Mark contains a connotation that is likely to deceive or cause confusion. Consequently, the s 43 ground of opposition is not established.

Section 59

56.     Section 59 can be established by demonstrating that the Applicant at the Relevant Date did not intend to use, or authorise use of, the Trade Mark in Australia, for the Applicant’s Services.

57.     Applying for registration of a trade mark carries a presumption that the Applicant intends to use the mark.[14] The onus is on the Opponent to displace this presumption by making out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date.[15]  If the Opponent makes out a prima facie case, the evidentiary onus shifts to the Applicant to show its intention to use the trade mark at the Relevant Date.[16] 

[14] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

[15] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).

[16] Suyen Corp v Americana International Ltd (n 3), [190].

58.     The Applicant has filed several flyers which it claims demonstrate actual use of the Trade Mark in Australia. However, the Applicant’s evidence is vague as to when these flyers were published and when and how these flyers were distributed. It appears from the copyright notices appearing on the flyers that they relate to activities occurring many years before the Relevant Date. Further, no information has been provided as to who provides the Applicant’s Services on its behalf in Australia.

59.     However, in order to successfully defend a claim under s 59, it is not necessary to show actual use. A lack of actual use is only one of the relevant considerations in determining whether the Applicant lacked a genuine intention to use at the Relevant Date. Although the Applicant has been economical with the evidence is has chosen to file, I am satisfied on the balance of probabilities it is a provider of spiritual and religious services (for the most part in the USA). Religious organisations often desire to expand their influence and teachings to different countries, particularly countries with cultural and language similarities. It is also common for religious organisations to protect their name as a trade mark. Further, the Opponent’s arguments that the Applicant had some ulterior motive for filing the Trade Mark are purely speculative and not persuasive.  Taking all of these factors into account, I am not satisfied that the Applicant lacked a genuine intention to use the Trade Mark at the Relevant Date.

60.     For the reasons given above, the ground under s 59 is not established.

Section 62A

61.     Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Applications were filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Applications as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[17]  I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

[17] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [165] (Dodds-Streeton J).

62.     The Opponent in the SGP alleges that the Trade Mark was filed in Australia at a time when the US Registration appeared to be expiring. The Opponent also relies on the fact that the Applicant does not own a business entity or non-profit organisation in Australia.

63.     There is no requirement that a foreign applicant for a trade mark in Australia apply for or maintain the same trade mark in their home country. There are many reasons why a trade mark may be cancelled in another jurisdiction, including mere oversight or error on the part of the registered owner. While the cancellation of a foreign trade mark can in some cases have some relevance in determining bad faith (particularly in circumstances where a foreign registration has been successfully challenged by another party claiming prior rights), the mere possible cancellation of the US Registration in this case does not to my mind cast appreciable doubt on the Applicant’s motives for filing the Application in Australia.    

64.     Similarly, the fact that the Applicant has not registered a business name or a business entity in Australia also does not establish an ulterior purpose. Many foreign traders export goods to Australia, or provide services to Australians via the Internet, without registering an Australian business name or creating some form of Australian entity to carry on their business in Australia.   

65.     I am not satisfied that the Applicant had at the time of filing the Application some ulterior or underhanded motive, or that its conduct otherwise fell short of standards of acceptable commercial behaviour. As such, the ground under s 62A is not established.

Section 41

66.     Section 41 requires that the Trade Mark be rejected if I am satisfied that it is not capable of distinguishing the Applicant’s Services from those of other traders. The Trade Mark is to be first assessed under s 41 having regard to its level of ‘inherent adaptation’ to distinguish. If the Trade Mark has sufficient inherent adaptation to distinguish the Applicant’s Services, there will be no grounds for rejection under s 41. If I am satisfied that the Trade Mark does not have sufficient inherent adaptation to distinguish the Applicant’s Services, I must then determine whether it has any inherent adaptation to distinguish. If the Trade Mark has no inherent adaptation, it must be rejected only if I am satisfied that that it does not in fact distinguish the Applicant’s Services based on the extent of its use at the filing date (s 41(3)). If the Trade Mark has some inherent adaptation to distinguish, it must be rejected only if I am satisfied that due to the level of inherent adaptation of the Trade Mark, the extent of use of the Trade Mark at the filing date and/or intended use thereafter, and/or other relevant circumstances, the Trade Mark did not or would not distinguish the Applicant’s Services (s 41(4)).

67.     The test to determine whether a trade mark is inherently adapted to distinguish was set out by Kitto J in Clark Equipment Co v Registrar of Trade Marks:

His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. 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 Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[18]

[18] (1964) 111 CLR 511, 514 (Kitto J).

68.     In Cantarella Bros Pty Ltd v Modena Trading Pty Ltd, a majority of the High Court recognised that the assessment of inherent adaptation involves a two-step process, first (i) determining the ordinary signification of the sign to those who would purchase, consume or trade in the goods or services, and (ii) then having determined the ordinary signification, the likelihood of the sign being desired for use by others.[19]

[19] [2014] HCA 48, [71] (French CJ, Hayne, Crennan and Kiefel JJ).

69.     A word or phrase that is suggestive or allusive in relation to the goods or services will generally not be one that other traders will desire to use. In the TUB HAPPY case, Dixon CJ said:

It is, I think, a mistake first to assume that words like "Tub Happy" do convey a meaning either to people in general or to a particular class of persons and then on that assumption to inquire what exactly the meaning is. Indeed to institute a search for a meaning almost necessarily implies that in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods. And that is true even when to standard English usage is added all the figurative idiomatic and slang phraseology that may be currently in use. Once, however, the question is asked what do the words mean and there is started a search for a meaning, a process of analysis and of reasoning by exclusion of alternatives is begun. No doubt such a search may, without any sacrifice of logic, end in construing the words as meaning that the garments will emerge happily from the washtub. But if they are so interpreted, the interpretation is chiefly the consequence of failure to find another meaning. I venture to think, however, that a man, or for that matter a woman, hearing for the first time the words used in combination and in connection with cotton garments, would not so understand the words at once. Certainly such a person would not so understand them intuitively and without stopping to reflect and ask himself or herself what meaning the words could really possess. [20]

[20] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41, [2] (Dixon CJ).

70.     I understand the word ‘aquarian’ to mean a person who is born under the Astrological sign of Aquarius. This would encompass approximately one in twelve people. The word ‘foundation’ refers to an organisation established for a particular purpose. In combination, and without more, I consider that the trade mark may bring to the minds of some a foundation run by Aquarians, or a foundation run for the benefit of Aquarians. However, I am not satisfied that the potential assumption by some of such a meaning constitutes an ‘ordinary signification’ among those who would trade in or purchase the Applicant’s Services.

71.     I note there is significance attached by some to the ‘Age of Aquarius’, which refers to either the current, or an imminent, astrological age. This significance is a loose body of beliefs relating to the effect of particular astrological ages on human affairs. I also acknowledge Ms Werner’s evidence that the Applicant’s teachings relate to the Age of Aquarius. Therefore, it is arguable (based on the Applicant’s own evidence) that the Trade Mark has an ordinary signification of a foundation that provides teachings relating to the Age of Aquarius.  

72.     However, on balance, I am not satisfied the evidence establishes that the word ‘Aquarian’ generally conveys the meaning of a practitioner or devotee of any particular religious or spiritual belief, or a particular body of belief, at least to the extent sufficient to give rise to an ordinary signification in the Trade Mark. To conclude that the Trade Mark refers to a foundation providing religious or spiritual services associated with the ‘Age of Aquarius’ requires a search for meaning of the kind referred to in Tub Happy. The search for meaning infers that the trade mark is suggestive rather than descriptive.

73.     It is of course possible that I am incorrect and that the term ‘Aquarian’ does have a generally recognised meaning that is more directly referential to religious or spiritual beliefs regarding the Age of Aquarius. However, I am not satisfied on the evidence before me that this is the case, and it is appropriate that any doubt be resolved in favour of the Applicant.

74.     On balance, I am not satisfied that the Trade Mark has an ordinary signification that other traders would legitimately desire to use in relation to the Applicant’s Services. As such, the ground under s 41 is not established.

Decision and costs

75.     The Opponent has not established any of the grounds of opposition. As such, my decision is to register the Trade Mark.

76.     Noting the appeal period, the Trade Mark should proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.

1. The Applicant in the notice of intention to defend requested an award of costs. Costs generally follow the event, and I see no reason to depart from the general rule. As such, I award costs against the Opponent.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   13 July 2022
   

   Annexure A

   ‘Opponent’s Registrations’

TM No.	Trade Mark	Goods/Services	Priority Date
1391575	AQUARIAN	Class 3: Waters and water sprays for cosmetic purposes; toiletries and cosmetics Class 9: Automatic vending machines integrated with a packaging control for the dispensing of water and beverages	31 October 2010
1472489	AQUARIAN	Class 7: Dispensing machines for water and beverages; machines for dispensing drinks; machines for dispensing beverages	31 October 2010
1574948	AQUARIAN	Class 11: Refrigerated beverage dispensing units; apparatus for filtering water; apparatus for purifying water; regulating apparatus for water installations; apparatus for disinfecting water; apparatus for use in the drink industry, namely, ice making machines, and apparatus for cooling, refrigerating and dispensing water and other beverages, for example, beverage cooling and ice dispensing machines, water coolers	31 October 2010
1680062	AQUARIAN	Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages	31 October 2010
1817930	AQUARIAN	Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Advertising; Business management; Business administration; Direct marketing; Stock and station agencies (buying and selling of goods); Discount services (retail, wholesale, or sales promotion services); Import-export agency services; Marketing consultancy; Retailing of goods (by any means)	23 December 2016