Not much Unity as Shorinji Kempo warriors come to court

One of the most rewarding and educational aspects of living in a multicultural society such as the United Kingdom today is that you get to find out so much about the way others live their lives. Until reading  British Shorinji Kempo Federation v Shorinji Kempo Unity [2014] EWHC 285 (Ch) he had no idea that Shorinji Kempo even existed, and certainly no suspicion that his friends an neighbours might be getting up to it.  Anyway, this decision of Mr Justice Warren in the Chancery Division, England and Wales, has proved to be most instructive.

Both parties in these proceedings were organisations concerned with the practice of Shorinji Kempo, a martial art which had both religious and sporting aspects. Shorinji Kempo Unity (SKU) held the intellectual property rights of the World Shorinji Kempo Organisation (WSKO), whose rather attractive logo appears above, on the right. SKU itself was the proprietor of two registered Community trade marks and two UK trade marks on which it relied and which all looked the same, consisting of the words 'SHORINJI KEMPO', with a row of Japanese kanji underneath. They are portrayed on the left.

The British Shorinji Kempo Federation (BSKF), which was formerly affiliated to the WSKO, applied to register as a UK trade mark a sign consisting of the words 'BRITISH SHORINJI KEMPO FEDERATION', illustrated on the right.  This was not going to please SKU, which was now good friends with the United Kingdom Shorinji Kempo Federation (UKSKF) -- a body formed to replace the BSKF as the British WSKO affiliate.  Anyway, even in the teeth of an opposition filed by SKU, the Hearing Officer (George Salthouse who, as his name might suggest, is a seasoned examiner) held that there was no evidence upon which it could be established that SKU's earlier marks had been genuinely used and that BSKF's mark should be registered. SKU appealed.

What was the basis for the appeal?  Under section 6A of the Trade Marks Act 1994, registration of BSKF's mark could not be refused by reason of an earlier mark, unless, within the period of five years ending on 1 July 2011, that earlier mark had been put to genuine use in the UK by the proprietor or with its consent in relation to the goods or services for which it was registered. Before Warren J both sides applied to submit further evidence and, since neither objected to the submission of fresh evidence by the other, the judge kindly agreed.

Warren J dismissed SKU's appeal. In his view:

* SKU had indeed shown genuine use of its earlier marks, both through use made of it by BSKF and by the UKSKF online and on clothing sold at its branches.  However ...

* the words 'Shorinji Kempo' were generic since they identified a particular martial art in the same way as other words described other martial arts (reference being made to judo, karate and taekwando [which Merpel embarrassingly thought to be a board game]). It was clear that Shorinji Kempo's founder Doshin So had considered Shorinji Kempo to be an ancient art and had not tried to ascribe its name to himself or to the organisation that he had founded, to the exclusion of others.

* since the words 'Shorinji Kempo' described an activity, SKU could not claim to arrogate the right to use those words to itself and its licensees.

* the kanji were the only distinctive element of the earlier mark. This being so, since BSKF's mark didn't have any kanji, the two marks were not similar -- and that was an end to the matter.

The IPKat thinks the result is correct and suspects that, within the world of British Shorinji Kempo practitioners, where loyalties are strong and passions run high, few people will be in any doubt as to which organisation is which.  Merpel thinks this litigation was a waste of time: the two parties could have fought it out, using their finely honed martial skills, with the winner getting to "keep" the mark.