24 February 2014

Trade Marks: British Shorinji Kempo Federation v Shorinji Kempo Unity

Two interesting points arose in British Shorinji Kempo Federation v Shorinji Kempo Unity [2014] EWHC 285 (Ch) (17 Feb 2014) in which my colleague Thomas Dillon appeared for the British Shorinji Kempo Foundation ("BSKF") on a pro bono basis. The first was what constitutes genuine use for the purpose of s.6A of the Trade Marks Act 1994. The second was the methodology by which the judge determined whether the mark that had BSKF sought to register was similar to one that had previously been registered by Shorinji Kempo Unity ("SKU") and if so whether there was any likelihood of confusion for the purposes of s.5 (2) of the Act.

The Parties
SKU is an entity whose function is to hold the intellectual property rights of the World Shorinji Kempo Organisation ("WSKO"). WKSO had many branches or affiliated organizations around the world. According to WSKO's website, Shorinji Kempo is a Japanese martial art founded in the town of Tadotsu in 1947. The BSKF is an association of organizations which promote the art in the UK, The BSKF had been affiliated to the WSKO for a number of years but was no longer connected with it.

The Mark in Suit
On 21 Jan 2011, BSKF applied to register the following trade mark shown in respect of the following goods and services:

Class 26: Embroidered badges; badges of textile materials.
Class 35: Advertising, management, administration, office functions.
Class 41: Teaching of martial arts, training in martial arts, instruction in martial art.


The Earlier Mark
SKU opposed the application on the 30 Sept 2011 under s.5 (2), (3) and (4) of the Trade Marks Act 1994. It relied on the registration of the following sign as British and Community trade marks for various goods in classes 14, 16, 25, 28, 35, 37 and 41:



The Opposition
The opposition came on before Mr George Salthouse who dismissed it on the ground that there had been no genuine use of the earlier marks for the purposes of s.6A of the Act (see Re The British Shorinji Kempo Foundation's Application, Shorinji Kempo Unity v British Shorinji Kempo Federation (2013 BL O-258-13 20 June 2013)).

The Appeal
SKU appealed to the court under s.76 (2) of the Act.  The appeal came on before Mr. Justice Warren. The judgment does not mention the grounds of appeal or the respondent's response but it does state that both sides were allowed to adduce additional evidence (paragraph [2]).  His Lordship dismissed the appeal at paragraph [69] but on grounds that were different from those of the hearing officer.  The judge found that there had been genuine use of the earlier mark for the purposes of s.6A but the BSKF mark was not similar to the earlier mark, or if that was wrong, that there was no likelihood of confusion for the purposes of section 5(2) of the Act (paragraph [68 (iii)]).

Genuine Use
SKU relied on the following alleged use:
(i) Use by branches affiliated with BSKF itself of marks not identical to the Earlier mark but said to be use of the Earlier mark, such use, it is submitted, being with the consent of WSKO.
(ii) Use on BSKF's own Website.
(iii) Use by another entity, the United Kingdom Shorinji Kempo Federation ("UKSKF") of certain marks which was formed after BSKF had ceased to be affiliated with WSKO.

On the question of whether there had been any consent SKU argued that any use by the BSKF during its affiliation to WSKO was necessarily with its consent since the BSKF was simply an arm of WSKO until it and many of its branches ceased to be affiliated with WSKO. The judge found nothing in that point (see paragraph [25]). However, there was evidence that SKU had expressly consented to the use of the words Shorinji Kempo by students at Durham University and members of the Harrow Shorinji Kempo branch.

Mr Justice Warren adopted Ms Anna Carboni's summary of the law in Sant Ambroeus [2010] RPC 28:
"(1) Genuine use means actual use of the mark by the proprietor or a third party with authority to use the mark: Ansul, [35] and [37].
(2) The use must be more than merely "token", which means in this context that it must not serve solely to preserve the rights conferred by the registration: Ansul, [36].
(3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin: Ansul, [36]; Silberquelle, [17].
(4) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, i.e. exploitation that is aimed at maintaining or creating an outlet for the goods or services or a share in that market: Ansul, [37]-[38]; Silberquelle, [18].
(a) Example that meets this criterion: preparations to put goods or services on the market, such as advertising campaigns: Ansul, [37].
(b) Examples that do not meet this criterion:
(i) internal use by the proprietor: Ansul, [37];
(ii) the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle, [20]-[21].
(5) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including in particular, the nature of the goods or services at issue, the characteristics of the market concerned, the scale and frequency of use of the mark, whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them, and the evidence that the proprietor is able to provide: Ansul, [38] and 39]; La Mer, [22] - [23].
(6) Use of the mark need not always be quantitatively significant for it to be deemed genuine. There is no de minimis rule. Even minimal use may qualify as genuine use if it is the sort of use that is appropriate in the economic sector concerned for preserving or creating market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor: Ansul, [39]; La Mer, [21], [24] and [25]."
Applying those principles, the judge held at paragraph [55] that the use of the words Shorinji Kempo on clothing for the students and Harrow members by those branches pursuant to SKU's express consent was sufficient for the purposes of s.6A.

Confusing Similarity
At the start of his judgment (between paragraphs [8] and [15]) Mr Justice Warren had considered whether the words Shorinji Kempo were descriptive of shorinji kempo as an activity or whether they referred exclusively to the WSKO. The judge decided that they were descriptive of the activity. Having decided that point it followed that the only distinctive part were the Japanese characters below the words in Latin script. As the BSKF's mark did not include any of those Japanese characters but words that were descriptive it followed that there was no similarity or, if there was similarity, there was no likelihood of confusion on the part of the public that would includes the likelihood of association with SKU's trade mark.

Comment
This is a useful case for practitioners and covers a number of issues other than those upon which I have focused in this case note such as the circumstances in which use of a mark by an agent can satisfy the requirements of s.6A. It contains some useful analysis of a number of decisions of the Court of Justice of the European Union, the English courts and several appointed persons. For that reason the hearing officer's decision is worth reading as well as that of the judge. Probably the best person to discuss this case is Thomas who can be reached on 020 7404 5252 during normal office hours, though I would be happy to discuss it too and can be called on the same number. If you want to discuss this case or any matter relating to IP law, message me through my contact form, twitter, Facebook, G+, Linkedin or Xing.

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