Trade Marks and Passing off: KBF Enterprises Ltd v Singh and others

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Jane Lambert

Intellectual Property Enterprise Court (Recorder Amanda Michaels) KBF Enterprises Ltd v Gladiator Nutrition 3.0Ltd and Others [2018] EWHC 3041 (IPEC)

This was an action for trade mark infringement and passing off.  There was also a counterclaim for a declaration that the trade marks were invalid and for a finding that the claimant was passing itself off as connected with the third defendant, Mr Daniel Singh.

The Dispute
The claimant carried on business as Bodybuilding Warehouse.  It claims to be "the number one bodybuilding supplements website and manufacturer in the UK" and has registered the following word marks:

• WARRIOR SUPPLEMENTS
• WARRIOR BLAZE
• WARRIOR FAT BURNER, and
• WARRIOR.

All of those marks were registered for food supplements and some for foods or other goods.  Bodybuilding Warehouse complained that Mr Singh, Mr John Paul Gardner, the fifth defendant, and the companies that they controlled had infringed those trade marks by marketing and selling food supplements and other goods over the internet under the following sign.:

It also claimed that the marketing and sale of those goods amounted to passing off.

Mr Singh had appeared as a bodybuilder called "The Warrior" in a TV series known as Gladiators where he had made something of a name for himself.  He claimed sufficient reputation in his TV name to resist the claim and justify his counterclaim.

The Pleadings

Bodybuilder Warehouse issued particulars of claim on 21 March 2017 alleging infringement of its marks under all 3 subsections of s.10 of the Trade Marks Act 1994 and passing off.  The defence admitted selling food supplements under The Warrior Project mark but claimed that the defendants were entitled to do so on the grounds that Mr Singh had acquired his reputation in the Warrior nickname before Bodybuilder Warehouse had registered its marks. Mr Singh also relied on the "own name defence" in s.11 (2). He counterclaimed for a declaration of invalidity on the grounds that he had an earlier right to use the Warrior sign and for relief from passing off,  

The Infringement Claim

At a case management conference, Judge Hacon limited the s.10 (3) claim to a complaint that the sale of the Warrior Project's supplements was detrimental to the repute of Bodybuilder Warehouse's marks on the basis that such sales were illegal. The claim under s.10 (1) was not pursued at trial but the claim under s.10 (3) was. Miss Amanda Michaels, the recorder who tried the action and counterclaim, recorded at paragraph [19] of her judgment:

"The claim under sub-section 10(3) was pursued vigorously by the Claimant at trial; indeed, wider points about both unfair advantage and tarnishment were raised in broad and prejudicial terms in the Claimant's skeleton argument despite the narrow scope of the issue defined by HHJ Hacon. A good deal of the evidence and the time taken at the trial related to the allegation of detriment. It was only at the end of its attorney’s closing submissions at trial that the Claimant dropped the claim under sub-section 10(3), conceding that the Warrior mark had not been registered before the relevant date, and that the Claimant had not proved that the Warrior Supplements mark was a mark with a reputation by that date."

In the end, Bodybuilder Warehouse relied on s.10 (2).

S.10 (2) Claim
S.10 (2) of the Trade Marks Act 1994 provides:

"A person infringes a registered trade mark if he uses in the course of trade a sign where because –

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."

In determining whether there is a likelihood of confusion, the learned recorder reminded herself of the summaries of the relevant principles by Lord Justice Kitchin (as he then was) in Specsavers International Healthcare Ltd and others v Asda Stores Ltd  [2012] EWCA Civ 24, [2012] FSR 19, [2012] ETMR 17 and  Maier and another v ASOS Plc and another [2015] FSR 20, [2015] ETMR 26, [2015] EWCA Civ 220, [2016] Bus LR 1063:

"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.”

There was no dispute that the goods sold by the defendants were identical or similar to those for which Bodybuilder Warehouse's goods had been registered but the defendants argued that the word Warrior was insufficiently distinctive to give rise to confusion. The recorder compared each of the claimant's word marks to the defendant's mark applying each of the above principles. She concluded at [52] that there was a likelihood of conclusion between the defendant's mark and the WARRIOR and WARRIOR SUPPLEMENTS marks but not between the defendant's mark and the WARRIOR BLAZE and WARRIOR FAR BURNER marks.

The "Own Name" Defence

S.11 (2) (a) of the Trade Marks Act 1994 provides: 

"A registered trade mark is not infringed by – 

(a) the use by an individual of his own name or address."

Although Miss Michaels was satisfied that Mr Singh had acquired a reputation as a TV star and columnist and that he had promoted some goods under the WARRIOR appellation, she was not persuaded that Mr Singh had been trading under the name Warrior, especially before November 2010. He (and others) made fairly frequent references to his role in the TV show, but the evidence of his use of the name Warrior alone, as a trade name, without use of his full name, was not sufficiently consistent or extensive to show that Warrior was his trade name, even by September 2015. Consequently, the own name defence was not made out.

The recorder also referred to paragraphs [327] to [333] of Mr Justice Arnold's judgment in Sky Plc and others v Skykick UK Ltd and another [2018] EWHC 155 (Ch), [2018] ETMR 23, [2018] RPC 5 and paragraphs [67] to [69] of Lord Justice Lloyd's in Hotel Cipriani Srl and others  v Cipriani (Grosvenor Street) Ltd and others  [2010] RPC 16, [2010] Bus LR 1465, [2010] EWCA Civ 110. Mr Singh had admitted that he was aware of Bodybuilder Warehouse's marks when he chose to market his goods under The Warrior Project sign. In Miss Michael's view, Mr Singh could have exploited his stage persona and any goodwill in the field of martial arts or bodybuilding without choosing a trade mark for his products which was so close to the claimant’s marks. 

The Claim for Passing off

The passing off claim failed because there was no evidence that the claimant had any goodwill in its marks before the defendants started to use theirs,

Liability of Mr Gardner

Mr Gardner was joined as a defendant because he was the sole director and shareholder of Corex Fitness Ltd ("Corex") which had sold Mr Singh's products.  Miss Michaels reminded herself of the Supreme Court'a judgment in Sea Shepherd UK v Fish & Fish Lid   [2015] UKSC 10, [2015] 2 All ER (Comm) 867, [2015] 2 WLR 694, [2015] AC 1229, [2015] WLR(D) 102, [2015] 4 All ER 247, [2015] 1 Lloyd's Rep 593, [2015] 1 AC 1229 and Judge Hacon in Grenade (UK) Ltd v Grenade Energy Ltd and Another : [2016] EWHC 877 (IPEC).  Mr Gardner adduced evidence that Corex was not a “one-man company.” It had an independent management and buying department and the decision to stock the infringing products was taken by those managers and buying staff and not by Mr Gardner. The recorder found that the burden of proving Mr Gardner's liability was on the claimant  It had pleased only that Mr Gardner was a sole director and shareholder,  In the recorder's judgment, that was not enough to discharge the evidential burden.

The Counterclaim

Miss Michaels disposed of this shortly in paragraphs [74] to [77] of her judgment.  In Reckitt and Colman Products Ltd, v Border Inc and others  [1990] RPC 341, [1990] 1 WLR 491, [1990] 1 All ER 873, [1990] UKHL 12, [1990] WLR 491 Lord Oliver had identified three probanda for an action for passing off:

• The claimant’s goods or services must have acquired a goodwill or reputation in the market by reference to a name, logo, get-up or some other distinguishing feature.
• There is a misrepresentation by the defendant (whether or not intentional) in that he adopts a trade name, logo or other inidcia that is the same or similar to the claimant’s that leads or is likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant.
• The claimant loses sales or suffers other damage such as the erosion of his or her goodwill.

In the recorder's view, Mr Singh fell at the first and second hurdles.  There was abundant evidence of his reputation as a TV star but precious little of goodwill in relation to the supply of food supplements under The Warrior Project mark.  Moreover, he had admitted in cross-examination that he had not objected to the sale of the claimant's goods because "what they were doing had no meaning with regard to his career."  The learned recorder that answer to mean that "Mr Singh had some renown as a star of Gladiators but had not by the relevant date acquired goodwill likely to be affected by use of the Claimant’s marks in relation to nutritional supplements."

Judgment
Bodybuilder Warehouse succeeded on its s.10 (2) claim against the first four defendants but not on anything else and the counterclaim failed.  The recorder asked for argument on costs making clear that any order should take account of the late abandonment of the s.10 (3) claim.

Comment

No new law was made in this case but there was a careful and meticulous review of all the relevant authorities on all the points that Miss Michaels had to resolve. That alone makes the case worth reading and citing in skeleton arguments. The case illustrates particularly well the difference between reputation on, say, the stage or screen and goodwill in relation to the supply of goods and services.  Also noteworthy is her application of Sea Shepherd and later cases to director's liability.  There had been a tendency for courts to find against directors and shareholders of "one man companies" simply because they are "one man companies" but there can be exceptions and this was one of them.  Yet another lesson to be drawn is that it would pay to particularize why the director should be jointly and severally liable for his or her company's wrongdoing.

Further Information

Anyone wishing to discuss this case or trade mark infringement or passing off generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.