Australian Trade Marks Law Blog : Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

The World Federation

JKA had sent instructors to overseas countries to establish Japan Karate Association branches since about 1963. In order to regulate the growing number of member countries, JKA established a federation of Japan Karate Associations throughout the world, collectively known as the Japan Karate Association World Federation (“JKAWF”). Member countries are permitted to provide certain JKA goods and services under and by reference to the JKA marks, subject to the authority and control of Japan Karate Association. There are currently  over 110 member countries of the JKAWF and on average each member country has 20 branches. Sometimes, members from around the world would buy goods from the JKA shop in Japan, then return to their home countries where they wore or on-sold the goods.

Use of the JKA marks in Australia

In Australia, the Japan Karate Association of Australia (JKA) Pty Ltd (“JKAA”) was established in or around 1972 when a karate instructor trained and accredited in Japan by JKA moved to OZ and formed JKAA with the approval and sanction of JKA in Japan. Even so, JKA claimed that it had directly and continually used the JKA trade marks in Australia in relation to the staging of international karate events in Australia in 1988 (2^nd World karate-Do Championships) and in 2006 (10^th World Karate-Do championships) and on clothing and equipment to which the JKA marks were applied by JKA, or its licensees, and re-sold in Australia by JKAA so that the marks had become well and widely and favourably known and were associated with the JKA and no other person or entity.

Registration of trade marks in Australia by JKAA

A Trade Marks Search revealed that JKAA appeared on the Australian Register of Trade Marks as the proprietor of Australian Trade Mark Registration No. 1020590 for the “Sun and Moon” device, 1020591 for JKA; J.K.A. series, 1020592 for JAPAN KARATE ASSOCIATION; JAPAN KARATE ASSOCIATION OF AUSTRALIA series and 1054061 for JKAA; J.K.A.A. series (collectively, “the JKAA trade marks”).

The claims by which the JKA sought rectification of the Trade Marks Register

The matter settled before the JKA claims were tested by a Court. For them wot is still interested (hang in there, cobbers, it gets worse), the JKA alleged that the JKAA trade marks were liable to be cancelled, amended or removed from the Register of Trade Marks pursuant to section 88 of the Trade Marks Act 1995 (Cth) (“the Trade Marks Act”) on a number of grounds:

Standing: JKA was aggrieved by the maintenance of the JKAA trade marks on the Register of Trade Marks because it claimed:

1. JKAA was not the owner of the JKAA trade marks, JKA was;

2. JKA uses and intends to continue to use the JKA marks;

3. The representation of the “Sun and Moon” device that the JKAA had registered was an infringement of JKA’s copyright in that design.

Contrary to law: That the JKAA marks infringed JKA’s copyright in the “Sun and Moon” device, and that such use would constitute breach of sections 52 and 53 of the Trade Practices Act and common law passing off.

Ownership: It was alleged that JKAA was not the owner of the JKAA trade marks, pursuant to section 58 of the Trade Marks Act.

Deception and confusion: It was alleged by JKA that the JKAA trade marks were substantially identical with or deceptively similar to the JKA trade marks and, because of the reputation in Australia of the JKA marks, which was acquired before the priority dates of the JKAA trade marks, the use of the JKAA trade marks would be, and at all relevant times would have been, likely to deceive or cause confusion, pursuant to section 60 of the Trade Marks Act. Also, because of the circumstances applying at the time of filing this application, it was alleged that the use of the JKAA trade marks would be likely to deceive or cause confusion, pursuant to section 88(2)(c) of the Trade Marks Act.

No intention to use: JKA alleged that at the time of filing the applications for registration of the JKAA trade marks, JKAA did not intend to use, or authorise the use of, the JKAA trade marks in Australia, or to assign the JKAA trade marks to a body corporate for use by the body corporate in Australia in relation to the services specified in the applications, pursuant to section 59 of the Trade Marks Act.

False representation: JKA alleged that the Trade Marks Registrar had accepted the applications for the JKAA trade marks on the basis that JKAA had falsely represented that it was the owner of the JKAA trade marks in respect of the claimed class 41 services in Australia.

No intention to use in good faith: It was also alleged that the JKAA trade marks were liable to be removed from the Register of Trade Marks pursuant to section 92(4)(a) of the Trade Marks Act 1995 because on the days on which each of  the applications for the registration of the JKAA trade marks were filed, JKAA had no intention in good faith to use or authorise the use of the JKAA trade marks in Australia, or to assign the JKAA trade marks to a body corporate for use by the body corporate in Australia, in relation to the claimed services in class 41 and JKAA had not used the JKAA trade marks in Australia or had not used the JKAA trade marks in good faith in Australia.

Result

Without any admission of liability, JKAA assigned the Trade Marks to JKA and paid JKA a sum of AUD$30,300 and undertook to JKA not to do any act, or to assist any person directly or indirectly to do any act, which would or might:

• invalidate or put in dispute JKA’s title to the Trade Marks;
• oppose any application for registration of the Trade Marks, or invalidate any registration of the Trade Marks in due course;
• support an application to remove any of the Trade Marks as a registered trade mark;
• cause any Registrar of Trade Marks to require a disclaimer of a monopoly in any of the Trade Marks or any part of one or more of them.

JKAA also indemnified JKA from all claims, actions, demands or losses for any past use by JKAA of the Trade Marks in Australia before the settlement date.

In return, JKA released the JKAA and its officers, servants and agents from the claims, and discontinued the Federal Court proceeding. Minter Ellison acted for the JKAA.

It is unusual to air a settled outcome but, in this case, the settlement was deliberately not confidential so as to send a loud signal to other member organisations in the federation of Japan Karate Associations throughout the world to dance nice with the one wot brung ya.

Nick Weston