CANCELLATION No 20 184 C (INVALIDITY)

Jin Mun Hwang, 7 Crest Drive, Randolph (NJ) 07869-4309, United States of America (applicant), represented by Sandra Santos Rodríguez, Alameda San Mamés 43 bis, 3 – 1, 48010 Bilbao (Bizkaia), Spain (professional representative)

a g a i n s t

Federation Belge Francophone De Soo Bahk Do - Moo Duk Kwan Asbl, Avenue Wilmart, 33, 1360 Perwez, Belgium (EUTM proprietor), represented by Pronovem Marks Société Anonyme, avenue Josse Goffin, 158, 1082 Brussels, Belgium (professional representative).

On 27/08/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 5 133 723 (word mark), (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes.

Class 35: Advertising; business management; business administration; office functions.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; courses in Korean martial arts.

The applicant invoked the ground of bad faith under Article 59(1)(b) EUTMR and also a copyright under Article 60(2)(c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that Soo Bahk Do is a martial Art with both Korean and Chinese inspiration and has been developed by the Korean man Hwang Kee bearing the title of "Great Master". Hwang Kee first organized the discipline using the name "Tang So Do, Moo Duk Kwan" and afterwards using the name of "Soo Bahk Do, Moo Do Kwan". Furthermore, the applicant states that the EUIPO had the opportunity to rule on the signs previously when they rejected two EUTM’s as descriptive and lacking distinctiveness in relation to goods and services in Classes 28 and 41, namely, the Examination Division decision of 23/01/2008, in 5 133 376, ‘SOO BAHK DO-TANG SOO DO-MOO DUK KWAN; and of 12/01/2017, in 15 582 125, ‘moo duk kwan’. The applicant claims that the logo used in the contested EUTM was also created by Hwang Kee who died in 2002 but passed the rights to his son Jin Mun Hwang who succeeds him and whose appointment was unanimously accepted by the Board of Directors of the United States as well as the other chapters around the world. Therefore, it claims that the applicant owns the rights to the martial art ‘Soo Bahk Do’ also known as ‘Tango So Do’ and ‘Moo Duk Kwan’ worldwide. The applicant states that the EUTM proprietor was set up in 1985 with the name ‘Tang Soo Do, Moo Duk Kwan’ by several people, in particular Misters Boussalaa and Annatelli, Directors of the Association. The applicant states that in March 1998 Mr Annatelli decided to resign his functions and founded the Association Belge de Soo Bahk Do without the consent of the Great Master Mr Hwang Kee, the father of the applicant and the dispute ended up in the Courts who held in favour of the proprietor as, inter alia, the association was issuing documents with Mr Hwang Kee’s name and signature without his consent. The applicant states that he wrote to the EUTM proprietor on 13/03/2017 to notify them of the immediate termination of their relationship due to their failure to respond to his previous communication of 22/01/2017 and pursuant to their Statement of purpose, objective and intent executed. He further ordered the cessation of use of ‘World Moo Duk Kwan’ trade marks and the cancellation of all the registrations of trade marks ‘SOO BAHK DO’ by the proprietor. On 23/05/2017 the EUTM proprietor filed a notice of opposition against the applicant’s EUTM 16 277 592 ‘MOO DUK KWAN’ (figurative) based on the contested EUTM. The applicant claims that the contested EUTM was filed in bad faith. The applicant claims that the EUTM proprietor knew of the applicant’s mark which was identical or confusingly similar to the EUTM for identical or similar goods and services and that the intention of the EUTM proprietor was to prevent the applicant from continuing to use its sign on the market, as seen in the initiation of opposition proceedings. Therefore, the EUTM was registered in bad faith. The applicant further argues that he is the owner of a US copyright which protects for the life of the creator and endures seventy years after the creator’s death. Therefore, it requests that the EUTM be invalidated in its entirety.

In support of its observations, the applicant filed the following evidence:

• Annex A: Excerpts from Wikipedia concerning the origin and history of this martial art. It further states that Moo Duk Kwan is the trademarked name of a martial art organization founded by Hwang Kee in Korea in 1945, that licensed Moo Duk Kwan schools teach Soo Bahk Do, formerly Tang Soo Do (and earlier 'Hwa Soo Do') and that 'Moo Duk Kwan' translates as ‘School of Martial Virtue’.

• Annexes B and C: Copies of the preliminary and final decisions of the Examination Division in the cases of 5 133 376, ‘SOO BAHK DO-TANG SOO DO-MOO DUK KWAN; and 15 582 125, ‘moo duk kwan’ in French.

• Annex D: Extracts from the webpage moodukkwanhistory.com providing a history of Moo Duk Kwan with photos and articles and indications of when and where the photos or information appeared.

• Annex E: Copy of the judgment of the Court of Appeal of Brussels of 21/02/2006, No R.G. nº 2002/AR/2921, R. nº 2016/1446.

• Annex F: A letter sent by the applicant to the EUTM proprietor dated 13/03/2017 to notify them of the immediate termination of their relationship due to their failure to respond to its previous communication of 22/01/2017 and pursuant to the Statement of Purpose, Objective and Intent executed. It further ordered the cessation of use of ‘World Moo Duk Kwan’ trade marks and the cancellation of all the registrations of trade marks ‘SOO BAHK DO’ by the proprietor.

• Annex G: Copy of the notice of opposition in B 2 899 337 filed by the EUTM proprietor against the applicant’s EUTM No 16 277 592 and the communication from the EUIPO of this notice to the applicant.

• Annex H: Extract from the text of ‘Copyright law of the United States’.

The proceedings were jointly suspended on 25/10/2018 in order to bring about an amicable settlement. However, on 22/01/2019 the applicant notified the Office that it wished to opt out of the suspension as no agreement was possible.

The EUTM proprietor did not submit any arguments in response to the application.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR

General principles

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

The applicant claims that Mr Hwang Kee originated the Soo Bahk Do martial art, which has both Korean and Chinese inspiration, and that this practice has been in place for over seventy years and has extended around the world under the control of Mr Hwang Kee, the ‘great master’ and later, the applicant claims that he inherited the rights through succession.. The EUTM proprietor formed part of the federation but later, after the EUTM proprietor did not reply to a communication from the applicant, the applicant informed the EUTM proprietor that the EUTM proprietor was no longer allowed to be part of the federation and that it must stop using all of the applicant’s signs and cancel trade marks that the EUTM proprietor held. The EUTM proprietor did not cancel its trade marks but instigated opposition proceedings against the applicant in response. The applicant claims that the EUTM proprietor acted in bad faith by filing the EUTM. The EUTM proprietor did not submit any arguments in defence or deny the claims made by the applicant

Assessment of bad faith

One situation which may give rise to bad faith is when a commercial entity has obtained some degree of legal protection by virtue of the use of a sign on the market, which a competitor subsequently registers with the intention of competing unfairly with the original user of the sign.

In such instances, the Court of Justice of the European Union (11/06/2009, C‑529/07, Lindt Goldhase, EU:C:2009:361, § 48, 53) has stated that the following factors in particular should be taken into consideration:

1. the fact that the EUTM proprietor knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the contested EUTM;

2. the applicant’s intention of preventing that third party from continuing to use such a sign;

3. the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought; and

4. whether the EUTM proprietor in filing the contested EUTM was in pursuit of a legitimate objective.

The abovementioned are only examples drawn from a number of factors which can be taken into account in order to determine whether or not the applicant was acting in bad faith when filing the application; account may also be taken of other factors (14/02/2012, T‑33/11, Bigab, EU:T:2012:77, § 20-21; 21/03/2012, T‑227/09, FS, EU:T:2012:138, § 36).

Bad faith might be applicable when the parties involved have or have had any kind of relationship, such as (pre-/post-) contractual relationships, giving rise to mutual obligations and a duty of fair play in relation to the legitimate interests and expectations of the other party (13/11/2007, R 336/2007‑2, CLAIRE FISHER / CLAIRE FISHER, § 24).

Bad faith may apply if it transpires that the EUTM proprietor never had any intention to use the contested EUTM, for example if the EUTM proprietor filed repetitive applications to avoid the consequences of revocation for non-use of its earlier EUTM registrations, whether in whole or in part (03/06/2010, C‑569/08, Internetportal, EU:C:2010:311, § 51; 13/12/2012, T‑136/11, Pelikan, EU:T:2012:689, § 27).

The applicant has submitted evidence that Mr Hwang Kee originated the Soo Bahk Do martial art and that this practice has been in place for over seventy years and has extended around the world under the control of Mr Hwang Kee, the ‘great master’ and later, through succession, by his son, the applicant. The applicant states that all of the federation members worldwide agreed to the succession of the applicant and this has not been denied by the EUTM proprietor. The applicant has also shown that the EUTM proprietor formed part of this martial art federation which was run by the applicant’s father and now by the applicant since 1985. The applicant submitted a judgment from the Belgian Courts which dealt with a dispute between the EUTM proprietor (the federation) and the association which was formed when the partners who established the federation split. In that judgment the Court held that the federation which was established by the applicant had the right to use the sign and prohibit others from using it as it was established by, and associated with, the applicant and the association had no right to use the applicant’s names in its documents as it was not part of that federation. After this judgment there was a disagreement between the applicant and the EUTM proprietor and the applicant ordered the EUTM proprietor to stop using the applicant’s signs and to cancel its trade marks containing these signs. The EUTM proprietor did not cancel the registrations but initiated opposition proceedings against the applicant to prevent it from registering its signs in the EUIPO. The EUTM proprietor has not submitted any observations and as such has not denied any of the allegations of the applicant or put forward any defence.

From the evidence submitted it is clear that the applicant (or his predecessor) has been using the signs ‘Soo Bahk Do’ also known as ‘Tango So Do’ and ‘Moo Duk Kwan’ for over seventy years and that it runs a federation of clubs worldwide using these signs. The EUTM proprietor was established in 1985 with the name ‘Tang Soo Do, Moo Duk Kwan’ with the permission of the applicant. In a letter to the EUTM proprietor dated 13/03/2017, the applicant withdrew from the trustee relationship with the EUTM proprietor and requested it to cease using all of the ‘World Moo Duk Kwan’ trade marks, service marks and other intellectual property and to cancel all of the registrations of these signs by the EUTM proprietor. In response the EUTM proprietor did not cancel the trade marks but initiated opposition proceedings against the applicant.

The evidence submitted shows that the applicant has made prior use of the signs ‘SOO BAHK DO’, ‘TANG SO DO’ and ‘MOO DUK KWAN’ and that it has also shown use of the figurative element of the contested sign which is prior to that of the EUTM proprietor. The applicant did not mention what the Chinese characters mean in the sign but they do appear in some of the evidence of use of the earlier sign. The applicant claims to own registered trade marks in the US but did not submit any proof of same, just the registration numbers, but without printouts from official sources to prove their existence, validity and scope. However, the evidence does show some use of the signs in the course of trade in the US.

However, it has also been established that the EUTM proprietor formed part of the applicant’s federation at the time of filing the contested EUTM. The applicant has not argued that it was unaware of the filing of the contested EUTM or that it opposed the filing at the time. Moreover, the EUTM proprietor has not submitted any observations either in this respect. From the evidence submitted by the applicant, in particular, the termination letter dated 13/03/2017, the applicant was aware of the existence of the EUTM and this was before the EUTM proprietor had filed opposition proceedings against the applicant. It is unclear when or how the applicant became aware of the filing of the EUTM or whether it had actually consented to this registration. Moreover, the applicant has not put forward any arguments that the filing of the EUTM was done without its consent. Indeed the EUTM proprietor formed part of the applicant’s federation from 1985 and was using the sign since then with the consent of the applicant then the EUTM proprietor could have a legitimate interest in registering the sign and may even have done so with the permission of the applicant. It appears that the registration of the EUTM only became an issue after the EUTM proprietor was terminated by the applicant and that as it was no longer a part of the applicant’s federation and the applicant wanted it to cancel the EUTM. However, this does not show that the EUTM proprietor applied for the EUTM in bad faith at the time of filing. What is important is the EUTM proprietor’s intention at the time of filing of the EUTM and both parties are silent on this point. Indeed the applicant may not want the EUTM proprietor to continue using its sign after it is no longer in the federation, but that is a different issue and that would fall outside the scope of the present application.

The fact that opposition proceedings were initiated on the basis of the EUTM is not per se an indication of bad faith.

As the applicant has not put forward any arguments as to the bad intention of the EUTM proprietor at the time of filing the EUTM or evidence to support such a claim, it cannot be determined that the EUTM proprietor acted in bad faith.

Conclusion on bad faith

The Cancellation Division considers that, on the evidence submitted and arguments put forth, that the applicant has failed to prove that the EUTM proprietor filed the contested EUTM in bad faith.

A. COPYRIGHT – ARTICLE 60(2)(c) EUTMR

Pursuant to Article 60(2)(c) EUTMR, an EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the EU legislation or national law governing its protection, and in particular copyright.

The applicant has based its application on a copyright in Austria; Belgium; Bulgaria; Croatia; Cyprus; Czech Republic; Denmark; France; Estonia; Finland; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Luxembourg; Malta; Netherlands; Poland; Portugal; Romania; Slovakia; Slovenia; Spain; Sweden; United Kingdom. In the application form it notes that this copyright is a United States copyright and it also submits an extract of the ‘Copyright Law of the United States’.

The applicant points out that all of the Member States of the EU are bound by the Berne Convention for the protection of Literary and Artistic Works and the Agreement on Trade- Related Aspects of Intellectual Property Rights (TRIPS).

The applicant argues the following in its observations:

“The notion of copyright protection is applicable irrespective of the goods and services the contested mark covers. It merely requires an unauthorized reproduction or adaptation of the protected work or a part there of in the contested mark. It follows, that similarity for the purposes of the assessment of likelihood of confusion is not the relevant test to be applied. In our case, the Applicant owns copyright on SOO BAHK DO TANG SO DO MOO DUK KWAN because of the reasons aforementioned, as legal successor of the Great Master. The legislation applicable is the US Law on Copyright since both the founder and the Applicant live in the USA.

The US law on Copyright, attached as Annex H, states that the duration of copyright subsists from its creation and endures a term consisting of the life of the author and 70 years after the author's death.

Moreover, Annex H claims that Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Hence, it is clear that the Applicant owns copyright on SOO BAHK DO TANG SO DO MOO DUK KWAN and the device of a fist and laurel leaves design the challenged EUTM registration No 005133723 consists of.”

The applicant does not specify on what article of the US Copyright Law that it relies. Moreover, the applicant must put forward cogent arguments as to why the application must be upheld on this ground. The Cancellation Division notes that Section 102 of the US Copyright Law submitted states the following:

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. (emphasis added)

It is unclear for the Cancellation Division what type of copyright the applicant is claiming. The applicant claims that copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

However, a Martial Art practice would be a system or method and would not be specifically covered by the US Copyright law as can be seen in Section 102 (b) above. Moreover, the applicant does not clearly argue what is actually copyrighted and what provision of the relevant law would cover this scenario.

Therefore, the applicant has failed to substantiate this ground. Therefore, the application as based on this ground must be rejected also.

Therefore, the application is rejected in its entirety.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Rhys MORGAN

Nicole CLARKE

Pierluigi M. VILLANI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.