KE O K KARATE | Decision 2469628 - KAM IV Inc. v. International kenpo karate club

Date Published: Sep 25, 2017

OPPOSITION No B 2 469 628

Kam IV Inc., 1000 S. Euclid Ave., Pasadena California 911064202, United States of America (opponent), represented by Grünecker Patent- Und Rechtsanwälte Partg Mbb, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

International kenpo karate club, Tunnbindaregatan 8, 60221 Norrkoping, Sweden (applicant), represented by Terhaag & Partner Rechtsanwälte, Graf-Adolf-Str. 70, 40210 Düsseldorf, Germany (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 469 628 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 398 169 , namely against all the goods and services in Classes 25, 35 and 41. The opposition is based on the non-registered trade mark  used in the course of trade in Germany in relation to operation and management of karate studios, instruction and teaching and on copyright over the sign. The opponent invoked Article 8(4) EUTMR.

PRELIMINARY REMARKS

In the present case, the notice of opposition was filed by the opponent on 28/01/2015, i.e. within the respective three-month opposition period ending on 28/02/2015. In the notice of opposition the opponent indicated that the opposition is based on Article 8(4) EUTMR and the above-mentioned non-registered trade mark (referred to as ‘the crest logo’ by the opponent) used in the course of trade in Germany. In addition, in the accompanying explanation of grounds of 28/01/2015, the opponent further indicated that the crest logo is also protected under German copyright law and claimed that under German law an opposition can also be based on a copyright, if such has been acquired prior to the date of the applied-for trade mark (section 13, paragraph 2, Nr. 3 German Trademark Act).

In its submission and arguments filed on 14/09/2015, the opponent argues that the opposition is based on the same sign (the crest logo) protected in Germany as a company symbol (section 5, (1) and (2) German Trademark Act), as well as a non-registered trade mark (section 4, No.2 German Trademark Act). Furthermore, the opponent argues that the opposition is also based on Article 8(3) EUTMR. In this regard, however, the Opposition Division notes that the scope of the opposition cannot be extended after the expiry of the opposition period. Therefore, it is considered that the opposition is based only on the earlier rights and grounds invoked within the opposition period.

Lastly, it should be mentioned that part of the opponent’s submissions of 28/01/2015 refer to Article 52(1) EUTMR and the alleged bad-faith behaviour of the applicant in filing the contested trade mark application. The Opposition Division notes that, this cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

For the reasons outlined above, the Opposition Division will then proceed to examine the opposition under Article 8(4) EUTMR only in relation to the invoked copyright and non-registered trade mark used in the course of trade in Germany.

 

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance. This requirement applies for all the rights within the scope of Article 8(4) EUTMR, that is, both to unregistered trade marks and to other trade signs identifying commercial origin.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 23/10/2014. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Germany prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for operation and management of karate studios, instruction and teaching.

On 14/09/2015 and on the opponent filed the following evidence:

• Exhibit 1: (5 pages) Excerpts from 14/09/2015 form the website of IKKA (International Kenpo Karate Association) www.ikkakenpointemational.org and from Wikipedia on the history of ‘American Kenpo Karate’. It is explained, inter alia, that the ‘American Kenpo Karate’ is a martial art and self-defence system that was developed and made popular in 1950 by Ed Parker, the father of the founder of the opponent. According to the information, Mr. Parker changed the ‘Kenpo Karate’ martial art by making it more convenient for modern fighting scenarios; it is mentioned that in 1961 Mr. Parker published a book in which he described the art of ‘American Kenpo’ and founded the International Kenpo Karate Association (IKKA). According to the information in Wikipedia, the design of the International Kenpo Karate Association crest  was completed in 1958 when the art of ‘American Kenpo’ was gaining international notoriety and the crest design was meant to symbolically represent the art’s modernized form while simultaneously acknowledging the roots of ‘American Kenpo’ in traditional Chinese and Japanese martial arts.
• Exhibit 2: (3 pages) Information and several pictures, taken from gottahaverockandroll.de. The pictures show clothing items, related information and pictures of Elvis Presley who became a student of Ed Parker in the 1970’s. The pictures show the crest logo on the guitar of Elvis Presley, which he purportedly used onstage from 1965 to 1976, as well as pictures of Elvis Presley’s karate suit showing the IKKA crest logo.
• Exhibit 3: (5 pages) Copies of US trademark registrations of the opponent, namely ‘INTERNATIONAL KENPO KARATE ASSOCIATION’ (US No 86293993 filed in 2014), ‘IKKA’ (US No 86590872, filed in 2015), ‘ED PARKER’, fig.mark (US No 86529870, filed in 2015) and the crest logo  (US No 77389422, filed in 2008 for goods in Class 16).
• Exhibit 4: (5 pages) Consists of: ‘IKKA Member Price List’ dated March 1996 (showing the crest logo on the letterhead) itemising booklets, bags, photos, posters, sweats, stickers, T-shirts and books (prices are in USD); photographs of the covers of six books by Ed Parker called ‘Infinite Insights into Kenpo’ and ‘Encyclopedia of Kenpo’ displaying the crest logo; and undated photos of several jewellery accessories (a watch, necklaces, pendants) displaying, or, being in the form of the crest logo.
• Exhibit 5: (5 pages) Printout from 14/09/2015 from IKKA’s website www.ikkakenpointemational.org displaying an application form in English for individual certified membership in IKKA and information about other kinds of select memberships. A copy of a form of 1985, in particular ‘IKKA application for school membership’. The forms depict the crest logo.
• Exhibit 6: (17 pages) A list of the names of three karate schools in Germany (‘M.A.X. Dojo Germany e.V.’ in Kaarst, ‘Bushido Esslingen’ in Esslingen and ‘Kenpo 42’ in Willich) certified by the ‘International Kenpo Karate Association’. According to the opponent’s claims, the schools were established in the 1990’s and prior, and are authorized to offer ‘Ed Parker’s American Kenpo Karate’. The exhibit also shows: several pictures of the respective German certified karate schools, some of which are dated in 2014; extracts in German from the website and Facebook page of the ‘M.A.X. Dojo Germany e.V.’ school dated in 2014; extract from the ‘Bushido Esslingen’ karate school website referring to 2009; extract from www.kenpo.de (undated) showing the addresses of six karate schools in Germany; a leaflet in relation to a karate seminar dated November 2007.
• Exhibit 7: (6 pages) Pictures of several flyers, t-shirts and karate players wearing karate suits from German-language sources (undated) showing the crest logo.
• Exhibit 8: (2 pages) Printouts from the websites www.kenpo.de (referring to two events in 2014 and in 2015) and www.kenpo-germany.de (undated).
• Exhibit 9: (1 page) Printout (undated) from the Facebook cover page of the ‘M.A.X. Dojo Germany e.V.’ studio displaying the crest logo.
• Exhibit 10: (5 pages) Excerpts from the applicant’s website www.kenpo.se  from 2004 from the internet archive “Waybackmachine”.

• Exhibit 11: (60 pages) Copy of the German Trademark Act in German.
• Exhibits 12, 13, 14, 15 and 16: (30 pages) Copies of decisions (case-law) and legal literature, such as a decision of the German Federal Court of Justice in relation to a case regarding protection of crests and emblems, a decision of the Higher Regional Court of Karlsruhe, etc.

• Exhibit 17: (13 pages) Business correspondence dated 1982 between the IKKA representative in Germany and the IKKA representative of Ireland displaying the crest logo on the letterheads.
• Exhibit 18: (2 pages) Excerpt from the Irish Patent Journal No.1410 (of 10 February 1982), p.101 and a letter showing that the Irish representative filed a trade mark application for goods in Class 26 for the crest logo in Ireland.

In addition, on 02/05/2016, further to the applicant’s claims that the evidence was insufficient to comply with the provisions of Article 8(4) EUTMR, the opponent submitted the following additional evidence (listed herein below):

• Exhibit A: Declaration dated 01/05/2016 by Darlene Tafua, president of the opponent company, in which she relates the history of the company, the business relations and development since its creation, information about the design, registration, rights and use of the crest logo, etc.
• Exhibit A1: (4 pages) Copies of two US collective membership trademark registrations of the crest logo filed in 1982 in the name of Parker Ed d.b.a. International Kenpo Karate Association. Both printouts indicate that the marks were ‘cancelled’ in 1992.
• Exhibit A2: (18 pages) Copies of nine US trademark registrations in the opponent’s name for marks, such as ‘IKKA’, ‘ED PARKER’ and the crest logo (4 marks of which only one is ‘valid’ and was registered in 2008 for ‘books in the field of karate’).
• Exhibit A3: (5 pages) The same as Exhibit 4 filed on14/09/2015.
• Exhibit A4: (2 pages) A copy of German trademark certificate for the registration of the crest logo in the name of Sven Thiess, Germany. The mark was filed in 2000 and lapsed in 2010.
• Exhibit A5: (13 pages plus 2 pages) The same as Exhibits 17 and 18 filed on 14/09/2015.
• Exhibit A6: (4 pages) Reproduces Exhibit 2 filed on 14/09/2015 and additionally includes one page displaying the ‘IKKA brochure 1985’ and the 3D designs (of a necklace and a pendant) in the form of the IKKA crest (undated).
• Exhibit A7: (2 pages) Search results from the US Copyright Office in relation to titles of works (publications) of Mr. Edmund K. Parker.
• Exhibit A8: (4 pages) Assignment of Copyrights Agreement dated in 2006, in which the opponent is an assignee, in relation to the transfer of the copyrights of the karate books (publications) of Mr. Edmund K. Parker.
• Exhibit A9: (1 page) A copy an ‘Application for school/club licensing’ in English. According to the opponent’s information it is available for download at www.edparkerskenpokarate.com and is the correct form that should replace the one attached as Exhibit 5 of 14/09/2015.
• Exhibit A10: (4 pages) A copy an ‘Application for school/club licensing’ form filled-in on 10/08/2015 by Mr. Joerg Buchmueller, head of J.R.’s Martial Arts school in Düsseldorf, Germany, accompanied by fee confirmation payment of 10 USD and a certificate issued to Mr. Buchmueller by IKKA awarding him a 1st degree black belt in the art of Kenpo Karate in December 2013.
• Exhibit A11: (4 pages) A copy of a form of an ‘Intellectual Property License Agreement’. According to the information provided in the opponent’s observations, schools and groups across Europe sign this agreement with the opponent in order to obtain opponent’s authorisation to offer instruction in American kenpo karate, to use the crest logo and other intellectual property.
• Exhibit A12: (10 pages) A printout dated 27/04/2016 from www.edparkerskenpokarate.com listing the names of licensed Ed Parker Sr. IKKA schools in the world. The names of the following four schools in relation to Germany appear: ‘M.A.X. Dojo Germany e.V.’ in Meerbuch, ‘Bushido Esslingen’ in Esslingen, J.R.’s Martial Arts Düsseldorf and ‘Kenpo 42’ in Willich.
• Exhibit A13: (17 pages) Copies of ‘Intellectual Property License Agreements’ dated 2015 between the opponent and the German schools ‘M.A.X. Dojo Germany e.V.’, ‘Bushido Esslingen’ and ‘Kenpo 42‘ (the last agreement has no date).
• Exhibit A14: (17 pages) The same as Exhibit 6 filed on 14/09/2015.
• Exhibit A15: (9 pages) Copies of 3 rejection notices dated in 2016 sent to persons rejecting their applications for licensing of schools in the IKKA.
• Exhibit A16: (3 pages) Printout from www.edparkerskenpokarate.com showing ‘Ed Parker Sr. Biography’.

In its final observations of 03/04/2017 the opponent enclosed a printout from the applicant’s website http://kenpo.se (Exhibit 2) and a declaration by Darlene Tafua (Exhibit 3) in support of some images depicting use of the crest logo, the use of which dates back to the 1960s and 1970s (Exhibit 1).  

Having examined all the evidence filed by the opponent, including the evidence filed outside the relevant period, the Opposition Division notes that the evidence does not provide a convincing picture of use of the opponent’s sign in the course of trade in Germany at the time of the filing of the contested trade mark.

While the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 43).

In the present case, the relevant date for proving use in the course of trade of
more than mere local significance is 23/10/2014. Many of the documents filed refer to the territory of the USA (for example, Exhibits 3, 4, 5, A1, A2, A7, A8) or cannot be directly linked to the relevant territory. Some of the evidence refers to use in relation to books or other goods and not the relevant activities on which the opposition is based. Furthermore, of the documents that refer to the territory of Germany, many are not dated (such as Exhibit 7 and other pieces of evidence forming part of Exhibits 6, 9 and 8), or refer to periods that are very far apart from the relevant date (for example, Exhibits 17 and 18 referring to 1982, Exhibit 2 referring to the 1970s), or are dated after the relevant date (for example, Exhibits A12 listing the names of the licensed Ed Parker Sr. IKKA schools in the world and Germany, Exhibit A13 with copies of agreements between the German schools and the opponent dated in 2015, Exhibit A10 showing the application form of Mr. Buchmueller for membership dated 10/08/2015, etc.).

The documents that refer to the relevant territory, such as Exhibits 6, 7, 8 and 9 show that, as per the relevant time frame, there were three functioning karate schools in Germany, namely in Esslingen, Willich and Kaarst and that they had websites and one of them, a Facebook profile. The additional evidence referring to the relevant territory, namely Exhibits A10, A12 and A13 all pertain to dates after the relevant date. Nevertheless, they do not add any significant value, as they only confirm that there were three karate schools in Germany and a fourth one was licensed in 2015 (after the relevant date), following an application by Mr. Joerg Buchmueller filled-in on 10/08/2015. The enclosed copy of the lapsed German trademark certificate (Exhibit A4) for the registration of the crest logo in the name of Sven Thiess, Germany has no relevant weight because the existence of a registration certificate (irrespective of the fact in which name it is), does not show any market presence.

The mentioned documents do not provide the Opposition Division with sufficient information concerning the commercial volume, the duration and the frequency of use. There is no information, neither from the opponent nor from its licensees as regards turnover or advertising expenses, advertisements published in print or other media, invoices or other documents indicating that the sign was used to the necessary extent. The opponent has not demonstrated that it had established a significant presence on the German market with the sign by the relevant date. The scarce information in relation to the karate schools only shows that the schools existed in 3 relatively small towns in Germany (with a total population between 40 000 to 90 000). No information is provided on the dimension of the use by these entities, such as the number of members, fees, size of activities, advertising, etc. The evidence only shows that these schools existed and had their own websites, the contents of which show very limited extent of information (pictures of karate players, leaflet for a seminar in 2007 and two events in 2014 and 2015). There is no information or any document on, for example, how many people visited the website and requested teaching/instruction services. The Facebook page of ‘M.A.X. Dojo Germany e.V.’ does not display any number of followers or customers and the printouts from the contents (other than the main page) that display some user comments, are undated.

Therefore, it is not apparent from the evidence that the significance of the sign relied on in the present case is more than merely local within the meaning of Article 8(4) EUTMR. The geographical significance of the use shown is rather limited. As regards the commercial volume and economic dimension of use, they are not clear from the evidence. Although, for example, under certain circumstances, one sole establishment may be of more than local significance because of its geographically widespread clientele and/or because of the reputation it enjoys among the public at a national or even international level (for example, an amusement or theme park or even a famous hotel which is known and promoted outside the area in which it is located and whose clientele is not merely local), this is not the case for the opponent’s sign, or at least there is no evidence to that effect. The opponent has not shown that it had developed any advertising activity to ensure that its activities, namely operation and management of karate studios, instruction and teaching were promoted or widely spread on the territory of Germany to a more than a local dimension.

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Liliya YORDANOVA

Dorothée SCHLIEPHAKE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.