UK Trade Mark Application no. 2569771 British Shorinji Kempo Federation (stylised) in Classes 26, 35 and 41 in the name of British Shorinji Kempo Federation v Opposition No 102471 thereto by Shorinji Kempo Unity

JurisdictionEngland & Wales
JudgeMr Justice Warren
Judgment Date17 February 2014
Neutral Citation[2014] EWHC 285 (Ch)
CourtChancery Division
Docket NumberCase No: CH/2013/0395
Date17 February 2014

[2014] EWHC 285 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY

ON APPEAL FROM THE TRADE MARKS

REGISTRY

Royal Courts of Justice

Rolls Building, Fetter Lane,

London, EC4A 1NL

Before:

Mr Justice Warren

Case No: CH/2013/0395

In The Matter of The Trade Marks Act 1994

In the matter of UK Trade Mark Application no. 2569771 British Shorinji Kempo Federation (stylised) in Classes 26, 35 and 41 in the name of British Shorinji Kempo Federation
Respondent
and
In The Matter of Opposition No 102471 thereto by Shorinji Kempo Unity
Appellant

Thomas Dillon (Pro Bono) for the Respondent

Tom St Quintin ( instructed by Marks and Clerk Solicitors LLP) for the Appellant

HTML VERSION OF JUDGMENT

Hearing date: 3rd December 2013

Mr Justice Warren

Introduction

1

This is an appeal by Shorinji Kempo Unity (" SKU") from a decision of the Hearing Officer, Mr G Salthouse, dated 20 June 2013 (" the Decision"). SKU opposed the application of the British Shorinji Kempo Foundation (" BSKF") to register the trade mark referred to below. SKU relied, in its opposition, on its own earlier registered marks also referred to below. Mr Salthouse held that SKU had failed to prove genuine use of its earlier marks. SKU's opposition under section 5(2)(b) (the only ground eventually relied on) failed at the first hurdle.

2

Before me, both parties applied to adduce further evidence. Neither application was opposed and I acceded to both applications. The approach on an appeal from the Registrar of Trade Marks on findings on a trade mark opposition is well known; it is set out in the decision of Robert Walker LJ in Reef Trade Mark [2003] RPC 5 at [28]:

"…. an appellate court should in my view show real reluctance, but not the very highest degree of reluctance to interfere in the absence of a distinct and material error or principle"

That approach must be tempered by the admission of the new evidence which Mr Salthouse could not, of course, take account of.

SKU's mark and BSKF's mark

3

SKU is registered with two Community trade marks and two UK trade marks on which it relies in opposition. The details are set out in paragraph 3) of the Decision and I do not repeat them here. The actual marks in each registration have the same appearance, as follows:

4

The mark thus consists of two words, in upper case and separated, with the Kanji underneath. I shall refer to it as " the Earlier mark".

5

The mark which is the subject matter of the application (" the BSKF mark") has this appearance:

The parties

6

SKU is an entity whose function is to hold the intellectual property rights of the World Shorinji Kempo Organisation (" WSKO"). WKSO has many branches or affiliated organisations around the world. It is the body, or successor to the body, formed by Doshin So when he brought the art out of obscurity in about 1947.

7

The BSKF is a grouping of organisations within the UK. According to Mr Dunn's evidence, which was not challenged on this point, the first Shorinji kempo branch in the UK was opened in 1974 and by the early 1980s there were about 12 UK branches. Until 1990, BSKF was known as the British Shorinji Kempo Association. It had been in existence using the words Shorinji kempo for over 6 years before it applied to join WKSO. The BSKF as been active in the UK since 1990, promoting the art under a number of marks, the mark applied for being one of them. Many, if not all, of the organisations to which I have just referred to were affiliated to WKSO. They were expelled for reasons which I do not need to go into in 2010. More of the history of WSKO and BSKF can be found in the Decision. Save where it is necessary to refer to certain details, I do not set it out in this judgment.

Shorinji Kempo

8

There is a dispute between the parties about how Shorinji Kempo is properly to be perceived. It can be described as a martial art, having both religious and sporting aspects: that is no doubt both an incomplete and perhaps misleading description but it is adequate for present purposes.

9

The BSKF's position is that the words shorinji kempo are simply the name of the activity which both it and WSKO promote; they are descriptive words. Those words are no different from words used to name other activities such as judo, karate or taekwondo. Mr Salthouse recorded BSKF's evidence about this in paragraph 10) of the Decision. Mr Dunn, a member of BSKF, pointed out that words are both general words which had been in use for hundreds of years. Mr Dunn referred to a number of sources which supported that conclusion. Of particular interest was his reference to an extract from a book written Doshin So in 1970. He was the founder of WSKO. Mr Dillon (who appears for BSKF) has taken me to it. The sleeve notes state:

"Shorinji Kempo is a martial art developed simultaneously with seated Zen meditation for the sake of both self-defense and health by the monks in the temple Shorinji in Hunan Province. It was first introduced into this temple by Bodhidharma, a sixth century Indian monk who travelled to China to spread the Buddhist faith. A profoundly meditative martial regime, Shorinji kempo was for many ages never taught to any but those who entered the Buddhist priesthood…. Unfortunately, however, the international reputation of Shorinji Kempo has heretofore rested on its importance in the early development of karate."

10

In the preface to the book, one finds this:

"Although the name Shorinji kempo often appears in texts of Judo and Karate, until the present, because no one has ever given it an explanation, people have tended to regard it as a legendary martial art. Therefore, I, as the only true successor to the Shorinji tradition have decided to reveal at least some its secrets to the reading public… The Shaolin-ssu (Shorinji in Japanese) temple, located in Honan Prefecture in China, was the site where Bodhidharma, a sixth century Buddhist patriarch, introduced Shorinji kempo to a group of Buddhist priests…. In agreement with this general principle, when I first brought Shorinji kempo to Japan I refused to allow anyone to train who would not enter our group and take a vow to use his knowledge only for good."

Further references are found including in the first charter, explaining the history where reference is made to "The ancient art of Shorinji kempo".

11

Also contained in the evidence before Mr Salthouse was an extract from one of WSKO's own publications, dating from November 1980, titled "A Textbook of Shorinji Kempo for Foreign Branches" (that is to say foreign branches of WSKO). At the beginning, in Part I under the heading General Information, is a paragraph which repeats the extract I have quoted from Doshin So's book down to the words "…a group of Buddhist priests". The text then diverges, but at the end of the paragraph one finds this sentence:

"Other martial arts, however, tend to overemphasize the one or other of these elements [calm and action]."

12

Mr Dunn also said in his evidence – and this is not disputed – that there are other groups not associated with WKSO who practice and teach the Shorinji kempo of Doshin So and include Shorinji kempo in their distinctive marks without any licence to do so from SKU.

13

In contrast, SKU's position is that the words Shorinji Kempo are not generic. They properly refer only to the activities of WSKO, its affiliates and other permitted to use the words in the description of their activities. The words are properly associated with, and only with, those activities when carried on by those entities and persons.

14

Mr Salthouse did not address this area of disagreement specifically. But it is implicit in his approach that he saw the words Shorinji Kempo as a generic description of the activities pursued by WSKO and BSKF. Further, he said this in paragraph 25) of the Decision:

"The words "Shorinji Kempo" simply identify the type of martial art and differentiate it from other forms such as taekwando, karate or judo".

In saying that, he must be taken to have accepted Mr Dunn's evidence, recorded above, that the words "Shorinji Kempo" are generic. In my judgment, it is right to conclude that the words are generic; they are words which identify a particular martial art in the same way as other words (such as those I have already mentioned) describe other martial arts. Although in more recent years, WKSO has sought, now through SKU, to assert its intellectual property rights, it is clear that Doshin So himself considered Shorinji Kempo to be an ancient art and was not attempting to arrogate those words to himself, or the organisation which he founded, to the exclusion of others. Moreover, other organisations have used the words as the description of their activities before the time when SKU become more active in asserting its IP rights. Mr Salthouse was right to say what he did.

15

It follows that the registration of the Earlier mark could not be justified by reference to the words "shorinji kempo" alone. However, there is no challenge to the registration of the Earlier mark so I must proceed on the basis that it is validly registered. It may be that the registration is valid by reference to the Kanji. Thus, even if the Kanji are, like the words in Roman script, purely descriptive to a person able to read them, they may, to a western viewer with no understanding of the Kanji, be viewed as simply a decorative element and capable of giving rise to a distinctive character.

The section 6A issue

16

The issue on which Mr Salthouse rejected the opposition relates to proof of prior use. Under section 6A Trade Marks Act 1994, registration of BSKF's mark is not to be refused by reason of the Earlier mark unless the use conditions are met. In the present case, this means that SKU must prove (and here the onus is on it) that within the period of 5 years ending on 1 July 2011 the Earlier mark has been put to genuine use...

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