British Shorinji Kempo Federation v Shorinji Kempo Unity

Words describing a martial art may remain generic and descriptive even where they appear within a registered composite mark. Registration does not allow the proprietor to appropriate such words alone.

Genuine use may be established by use of a composite mark where the registered mark remains perceptible as an indication of origin, and where the use is commercially genuine and authorised. Similarity and confusion must be assessed globally, but a common generic element cannot ordinarily create similarity or confusion. The distinctive elements and the overall impressions of the marks remain decisive.

Shorinji Kempo Unity appealed from a decision of the Trade Marks Registry concerning British Shorinji Kempo Federation’s application to register a stylised mark. The Hearing Officer had rejected the opposition under section 5(2)(b) of the Trade Marks Act 1994 because genuine use of the earlier marks had not been proved.

On appeal, further evidence was admitted. The issues were whether the earlier mark had been put to genuine use, whether use of composite marks was authorised and sufficient, and whether the applied-for mark was similar to the earlier mark with a likelihood of confusion.

1. The appeal was dismissed. The approach on an appeal from the Registrar required real reluctance to interfere absent a distinct and material error of principle, subject to the effect of the new evidence: Reef Trade Mark [2003] RPC 5.

2. The words “shorinji kempo” were generic and descriptive of a particular martial art. Their use could not be appropriated exclusively by the opponent and its licensees. The registration of the earlier composite mark remained valid, but it had to be assessed as a whole. The Kanji could provide its distinctive element.

3. The court accepted and applied the established principles of genuine use. Use must be actual, non-token use, consistent with the essential function of a trade mark and directed to real commercial exploitation. All relevant circumstances must be considered, and there is no de minimis rule: Sant Ambroeus [2010] RPC 28, reflecting Ansul, Silberquelle and La Mer.

4. Use of the 2007 composite mark on clothing and on the website constituted genuine use of the earlier mark. The words and Kanji remained sufficiently perceptible, and the differences in presentation did not alter the mark’s distinctive character. The analysis required identification of the differences and assessment of whether they altered the distinctive character of the registered mark: BUD and BUDWEISER BUDBRAÜ Trade Marks [2002] EWCA Civ 1534; Re Douglas & Grahame Ltd’s Trade mark BL-061-08.

5. Affiliation with the proprietor did not, without more, establish authorised use. However, the specific permissions granted for the clothing and website uses supplied the necessary consent. The composite-mark principles concerning genuine use were consistent with Rintisch v Eder [2013] ETMR 5 and Colloseum Holdings AG v Levi Strauss & Co [2013] ETMR 34.

6. The marks were not similar for the purposes of section 5(2)(b). The generic words shared by the marks could not generate similarity or confusion. The distinctive Kanji and other elements produced materially different visual, aural and conceptual impressions. In any event, even assuming similarity, there was no likelihood of confusion. The claim that the applied-for mark would be perceived as an outpost of the opponent’s organisation therefore failed.

High Court (Chancery Division): Warren J admitted further evidence, dismissed the appeal and upheld the rejection of the opposition.