Taekwon-Do marks struck from register

In International Taekwon-Do Federation v Choi, the Federal Court of Canada has struck two trademarks from the Trademarks Register on the grounds that a fiduciary has no right to register, under his own name and for his own benefit, a trademark owned by the entity to which the fiduciary duties are owed.

The case concerned two trademarks originally designed by General Choi, the founder of the International Taekwon-Do Federation (ITF). The ITF and its Canada affiliate, the Canadian Taekwon-Do Federation International (CTFI), had used the marks in Canada and throughout the world for over 20 years when they were registered in Canada by General Choi and his son, Master Choi. At the time of the Canadian registrations in 1998 and 2000, General Choi and Master Choi were officers of the ITF. In 2002, General Choi died and Master Choi was expelled from the organization.

The ITF and CTFI applied to have the marks removed from the Trademarks Register. The court held that the Chois were not persons entitled under the Trademarks Act to register the marks and accordingly struck them from the register.

In arriving at this conclusion, the court held as follows:

• The Chois had been fiduciaries of the ITF at the time of the registrations and so had no right to register the marks under their own names and for their own benefit. In this regard, the court followed the principles set out in Citrus Growers Assn Ltd v William D Branson Ltd, [1990] FCJ 43. That case involved an agent/importer who registered the mark of its foreign principal. The court in that case held that an importer or agent cannot register a trademark owned by the foreign principal by reason of the agent's fiduciary obligations. While most cases applying Citrus Growers have involved an underlying agency relationship (typically a distributor or an importer), the decision in this case illustrates the more general principle that the registration of a mark in breach of a fiduciary duty is a clear ground for expungement under Canadian trademarks law.

As a result of the fiduciary relationship between the Chois and the ITF, the court held that there was no 'use' of the marks in accordance with Section 4 of the Trademarks Act. Section 4 deems use to have occurred where a mark is used on goods or in association with the performance of services. As a result of the Chois' fiduciary obligations to the ITF, the Chois' use of the marks was properly interpreted as being use on behalf of the ITF and the CTFI.

• Furthermore, the Chois had no right to register the marks on account of confusion. Pursuant to Sections 16(1)(a) and 16(3)(a) of the act, the Chois were not entitled to register the marks because they would be confused with the marks of the ITF and the CTFI.
  
  
• Finally, the registration of the marks were invalid under Section 18(1)(b) of the act because the marks were not distinctive. In this case, the registered marks could not be said to be distinctive of the goods and services of the Chois, given the ITF's and CTFI's prior use of the same marks in relation to identical goods and services.

Cynthia Tape, Ogilvy Renault LLP, Toronto