Date: 20061205
Docket: T-2108-02
Citation: 2006 FC 1459
Ottawa, Ontario, December 5,
2006
PRESENT: The Honourable Mr. Justice O'Reilly
BETWEEN:
INTERNATIONAL TAEKWON-DO
FEDERATION
and the CANADIAN TAEKWON-DO FEDERATION
INTERNATIONAL
FEDERATION CANADIENNE DE TAEKWON-DO
INTERNATIONAL
Applicants
and
JUNG
HWA CHOI
and
HUNG HI CHOI and JUNG HWA CHOI, A JOINT
VENTURE TRADING AS I.T.F. TAEKWON-DO and THE REGISTRAR OF TRADEMARKS
Respondents
REASONS FOR JUDGMENT AND JUDGMENT
[1]
The applicants, the International Taekwon-do Federation (ITF) and
its Canadian affiliate, the Canadian Taekwon-do Federation International
(CTFI), argue that certain trade-marks registered by the respondents are
invalid and should be removed from the trade-mark register. The respondents
consist of a former officer of the ITF, Mr. Jung Hwa Choi, as well as a joint
venture between him and his father, Mr.
Hung Hi Choi, the founder and former president of the ITF, now deceased.
The applicants submit that the respondents registered marks that the applicants
had been using for decades, both in Canada and throughout the world. The
respondents did not appear at the hearing, and filed no written arguments.
[2]
I agree that the trade-marks are invalid and I will grant the
applicants’ request to have them struck from the register, pursuant to s. 57 of
the Trade-marks Act, R.S.C. 1985, c. T-13, s. 57 (relevant provisions of
the Act are set out in Annex A).
I.
Issues
[3]
The applicants advanced several grounds for their position. Many of these
grounds are interrelated and can be reduced to the following question: Were the
respondents entitled to register the marks?
II.
Analysis
(a) Factual
background
[4]
Mr. Hung Hi Choi (referred to as General Choi) developed the martial art
of Taekwon-Do in Korea during the 1940s. He established the ITF in 1966 and
acted as its president from then until his death in 2002. Mr. Jung Hwa Choi
(referred to as Master Choi), General Choi’s son, was slated to assume the
presidency after his father, but was expelled from the ITF in 2002. At the
time, he was Secretary General of the ITF.
[5]
The ITF acts as the international governing body for Taekwon-Do. It has
used two main emblems, both created by General Choi, to identify itself: (1) a
crest including a fist and the words “International Taekwon-do Federation”, as
well some Korean characters; and (2) a design resembling a tree, with Korean
characters making up the trunk and the word “Taekwon-Do” forming the crown (the
two designs are shown in Annex B). The ITF and CTFI have used these images on training
uniforms, documents and advertising beginning in 1966.
[6]
The respondent joint venture registered these two images, the fist
design and the tree design, as Canadian trade-marks, in relation to wares in
1998 (trade-marks 500,361 and 500,055 respectively), and for services in 2000 (trade-marks
522,295 and 522,294 respectively). The 1998 marks are currently owned by Master
Choi.
(b) The
respondents’ entitlement to register the marks
[7]
It is clear that the applicants have used the fist and tree designs for
some time. They argue, therefore, that the respondents were not entitled to
register those designs as trade-marks. The joint venture was not created until
the mid-1990s, so it could not have used the marks prior to those dates. By
contrast, the ITF has used the fist design since 1966. The ITF and CTFI have
used the tree design since at least 1986.
[8]
Further, the applicants suggest that the respondents could not register
the marks on their own, given that Master Choi and General Choi were both
officers of the ITF at the time. They had a duty to act in the best interests
of the ITF. Further, their connection to the ITF was comparable to an
agent-principal relationship, in which the actions of the agent should enure to
the benefit of the principal. In other words, the applicants argue that the respondents
could have registered the trade-marks for the benefit of the ITF, but could not
do so independently.
[9]
The applicants also argue that the registered marks lack the essential
criterion of distinctiveness. Given that the identical marks were being used by
the ITF and the CTFI, they could not be said to be distinctive of the
respondents’ wares and services.
[10]
Finally, the applicants submit that the respondents made false
statements in the course of obtaining the trade-mark registrations – in
particular, statements about past or future use of the marks. They argue that the
registrations are invalid on that ground as well.
[11]
I
find that the circumstances in this case are analogous to those described in Citrus
Growers Assn. Ltd. v. William D. Branson Ltd. (1990), 36 C.P.R. (3d)
434, a case involving an agent and principal. Justice Paul Rouleau stated that
“an importer or agent has no right to register a trade mark owned by the
foreign principal, under his own name and for his own benefit” (at p. 438). He
continued:
The cases have reached this conclusion in
a variety of ways: prior use by the foreign supplier in Canada (s. 16(1)(a));
no “use” by the importer/agent in Canada within the meaning of sections 4 and
16, since its use was on behalf of the principal; the mark is not distinctive
of the wares of the respondent (s. 18(1)(b)); and, generally, the respondent is
not the person entitled to registration of the mark, on the grounds of the
fiduciary obligation existing between the agent and his principal. (p. 438)
[12]
The
applicants’ submissions here are much to the same effect: The respondents are
not entitled to register the trade-marks because the images would be confused
with marks that had been previously used by the applicants (contrary to ss.
16(1)(a) and 16(3)(a)) of the Act). Any use of the marks by the
respondents should be interpreted as use on behalf of the applicants, given
that General Choi and Master Choi were officers of the ITF, and had a fiduciary
duty towards it. The registered marks cannot be said to be distinctive of the
respondents’ wares or services, given the applicants’ prior use of the same
marks in relation to identical wares and services (contrary to s. 18(1)(b)).
[13]
Based
on these arguments, I am satisfied that the registered marks are invalid. I
realize that I have not dealt specifically with the applicants’ additional
argument about alleged false statements by the respondents. No direct authority
was cited to me on the point, so I decline to deal with it.
[14]
I
will, therefore, declare that the registered marks (No.500,055, 500,361,
522,294 and 522,295) are invalid and should be struck from the register, with
costs to the applicants. The applicants asked for costs on a solicitor-client
basis, given that the respondents’ conduct involves a breach of a fiduciary
duty. However, I am not satisfied that the circumstances justify such an
extraordinary cost measure.
JUDGMENT
THIS COURT’S
JUDGMENT IS that:
1. The registered marks
(No.500,055, 500,361, 522,294 and 522,295) are invalid and should be struck
from the register, with costs to the applicants.
“James
W. O’Reilly”
Annex “A”
|
Trade-marks
Act, R.S.C.
1985, c. T-13
Registration of marks used or made known in Canada
16. (1) Any applicant who has
filed an application in accordance with section 30 for registration of a
trade-mark that is registrable and that he or his predecessor in title has
used in Canada or made known in Canada in association with wares or services
is entitled, subject to section 38, to secure its registration in respect of
those wares or services, unless at the date on which he or his predecessor in
title first so used it or made it known it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;
…
Proposed
marks
(3) Any applicant who has
filed an application in accordance with section 30 for registration of a
proposed trade-mark that is registrable is entitled, subject to sections 38
and 40, to secure its registration in respect of the wares or services
specified in the application, unless at the date of filing of the application
it was confusing with
(a) a trade-mark that had been previously used in Canada
or made known in Canada by any other person;
When registration invalid
18. (1) The registration of a
trade-mark is invalid if
…,
(b) the trade-mark is not distinctive at the time
proceedings bringing the validity of the registration into question are
commenced, or
Exclusive jurisdiction of Federal Court
57. (1) The Federal Court has
exclusive original jurisdiction, on the application of the Registrar or of
any person interested, to order that any entry in the register be struck out
or amended on the ground that at the date of the application the entry as it
appears on the register does not accurately express or define the existing
rights of the person appearing to be the registered owner of the mark
Restriction
(2) No person is entitled to institute under this section any
proceeding calling into question any decision given by the Registrar of which
that person had express notice and from which he had a right to appeal.
|
Loi
sur les marques de commerce, L.R.C. 1985, ch. T-13
Enregistrement des marques employées ou révélées au
Canada
16. (1) Tout requérant qui a produit une demande selon l’article 30
en vue de l’enregistrement d’une marque de commerce qui est enregistrable et
que le requérant ou son prédécesseur en titre a employée ou fait connaître au
Canada en liaison avec des marchandises ou services, a droit, sous réserve de
l’article 38, d’en obtenir l’enregistrement à l’égard de ces marchandises ou
services, à moins que, à la date où le requérant ou son prédécesseur en titre
l’a en premier lieu ainsi employée ou révélée, elle n’ait créé de la
confusion :
a) soit avec une marque de commerce antérieurement employée ou
révélée au Canada par une autre personne;
[…]
Marques
projetées
(3) Tout
requérant qui a produit une demande selon l’article 30 en vue de
l’enregistrement d’une marque de commerce projetée et enregistrable, a droit,
sous réserve des articles 38 et 40, d’en obtenir l’enregistrement à l’égard
des marchandises ou services spécifiés dans la demande, à moins que, à la
date de production de la demande, elle n’ait créé de la confusion :
a) soit avec une marque de commerce antérieurement employée ou
révélée au Canada par une autre personne;
Quand l’enregistrement est invalide
18. (1) L’enregistrement d’une marque de commerce est invalide dans
les cas suivants :
[…]
b) la marque de commerce n’est pas distinctive à l’époque où sont
entamées les procédures contestant la validité de l’enregistrement;
Juridiction exclusive de la Cour fédérale
57. (1) La Cour fédérale a une compétence initiale exclusive, sur
demande du registraire ou de toute personne intéressée, pour ordonner qu’une
inscription dans le registre soit biffée ou modifiée, parce que, à la date de
cette demande, l’inscription figurant au registre n’exprime ou ne définit pas
exactement les droits existants de la personne paraissant être le
propriétaire inscrit de la marque.
Restriction
(2) Personne n’a le droit
d’intenter, en vertu du présent article, des procédures mettant en question
une décision rendue par le registraire, de laquelle cette personne avait reçu
un avis formel et dont elle avait le droit d’interjeter appel.
|
Annex “B”
Fist
Design Tree
design
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