Choi Kwang Do Martial Art International Inc v Rod Cook

[2008] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by Choi Kwang Do Martial Art International Inc to registration of trade mark application 1055008(41) - CHOI KWANG DO MARTIAL ART INTERNATIONAL - filed in the name of Rod Cook.

Delegate:

Rachel Dunn

Representation:

Opponent

Thomas Stevens of O’Reilly Stevens Bovey Lawyers

Applicant

No representation or written submissions

Decision:

2008 ATMO 37

Section 52 proceedings. Ground pursuant to section 58 ownership of trade mark established. Costs awarded against applicant.

1. Rod Cook (the applicant) applied to register trade mark 1055008. The relevant details are as follows:

Application No:	1055008
Trade Mark:
Priority Date:	17 April 2005
Class 41: (Services)	Sporting and fitness services
Endorsements:	The applicant advises that the translation of the KOREAN words CHOI KWAN DO appearing in the trade mark is THE ENLIGHTENED WAY OF CHOI.  The word CHOI is a persons name.

1. An adverse first examination report was issued on the basis of a lack of endorsement, a minor problem with the specification of services, and due to a prior existing trade mark which was cited as a barrier to the subject application.  The applicant provided submissions and a declaration claiming use of the trade mark, authority to use and register the trade mark in Australia, and provided the office with expenditure figures for marketing and promotion of the trade mark.  On the basis of this material the citation was reassessed and removed.  The endorsement and specification matters were finalized and the application was advertised as accepted in the Australian Official Journal of Trade Marks on 26 October 2006.

2. Choi Kwang Do Martial Art International Inc, incorporated in the State of Georgia in the United States of America, (the opponent) promptly filed a notice of opposition on 22 November 2006.  After a short extension of time the opponent served and filed its evidence, consisting of a statutory declaration in the name of Thomas Stevens with annexures A to Q. The applicant took no further part in this matter.  No evidence in answer was served or filed, no submissions were received, and the applicant chose not to attend or participate in the hearing.

3. The matter came to be heard before me as a delegate of the Registrar of Trade Marks in Canberra on 19 March 2008. The applicant was represented by Mr Thomas Stevens of O’Reilly Stevens Bovey Lawyers.

4. In his submissions Mr Stevens relied almost exclusively upon the ground of opposition under section 58 of the Trade Marks Act 1995 (the Act), with a mention of reputation and use to establish a section 60 ground. For completion I find the other grounds of opposition cited in the notice have not been established.

Discussion

Section 58

1. Section 58 of the Act provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner. In order to establish this ground it is necessary for the opponent to show that, in the time before filing, the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show, at a minimum, that not only is the subject trade mark substantially identical to the older trade mark, but that it is applied to the same kind of thing: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640.

2. The prior use must be public, commercial use in Australia of the term as a trade mark: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, at 432-4. However, a very small amount of use will suffice: Thunderbirds Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 and Buying systems (Australia) Pty Ltd v Studio SrL (1995) 30 IPR 517.

3. The majority of ownership cases concern competing claims for the exact same trade mark, however if the opposing trade marks are substantially identical the opposition can still be established: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375

4. The goods and services of the prior trade mark must be the same kind of thing as claimed by the opposed application.  The same kind of thing has been interpreted to mean a closer connection that simply ‘goods of the same description’ or ‘closely related goods and services’.  However, the goods and services in question do not need to be identical: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (supra)

5. In this case we can easily dispense with the matters of the trade mark representation and the services involved.  Annexure B of the opponent’s evidence shows that it owns an international registration, number 894994, which consists of the exact same representation of the trade mark that the applicant has sought to register in Australia.  The pictures, the words, the fonts used, and the Korean character are all identical in both of the trade marks. 

6. The statutory declaration of Mr Stevens, as well as several annexures including B, F, I and Q, attest to the fact that the opponent conducts courses, classes and ongoing training in martial arts instruction and fitness services.  These services are certainly ‘the same kind of thing’ as the applicant’s claim of sporting and fitness services.  The only question to answer now is who has first use of the trade mark in Australia.

7. The statutory declaration and annexure C detail the history of CHOI KWANG DO – a system of martial arts focusing on fitness, injury prevention and cure, promotion of health and self-defense rather than simply ‘winning’ in sports events.  Between 1978 and 1987 the system was developed and finalized by Kwang Jo Choi.  Kwang Jo Choi went on to found, and become president, of the opponent corporation.  The statutory declaration attests that he personally conceived the trade mark and designed the logo of the fist in front of the globe.  The opponent has registered the trade mark in many countries it was first used in the United States of America in 1987.  The opponent then began to use affiliates – in essence licensees – to operate courses, classes and training schools in the CHOI KWANG DO method of martial arts and fitness.

8. The submissions given in the hearing, and the opponent’s evidence, establish that the applicant was once an affiliate of the opponent.  This evidence is uncontested and a copy of the affiliate agreement is attached at annexure F of the statutory declaration.  The agreement states quite clearly that ownership of the trade mark resides exclusively with the opponent, and the affiliate has no right, title, or interest in the trade mark.  Exhibits G and H consist of correspondence between the applicant and the opponent detailing the ending of their affiliation and a notice by the opponent to cease using all materials relating to logos and trade marks pertaining to CHOI KWANG DO.  This correspondence was written throughout April and May of 2005 – the application was filed in April 2005.

9. The statutory declaration states that the trade mark was first used in trade and commerce in Australia in 1988.  Annexure D is a sworn affidavit in the name of Kwang Jo Choi stating that CHOI KWANG DO was first used in Australia in 1988.  Other annexures prove use of the trade mark by the opponent in Australia, through its affiliates, at various times between 1993 and 2005.

10. In a response to an examination report the applicant said ‘my trade mark has been in existence in Australia since I first started using it in February 1999’.  The applicant’s only other claim to first use is that he filed first – in April of 2005.

11. I am satisfied that the evidence establishes that the opponent has first commercial use of the trade mark in Australia.  The use shown is in the course of trade, using the exact same trade mark as the subject application, and covering services that are of the same kind of thing as the subject application.

Decision

1. The opponent has established its ground of opposition pursuant to section 58 of the Act – the opponent is the owner of the trade mark. As the opposition has been clearly established on this ground of ownership I will not proceed to discuss the ground of opposition under section 60. The trade mark application is refused in its entirety.

Costs

1. Having been successful the opponent is entitled to its costs.  I hereby award costs against the applicant in accordance with the scale found in Schedule 8 of the Trade Mark Regulations 1995.

Rachel Dunn

Hearing Officer

Trade Marks Hearings

22 May 2008