Trade Mark Infringement and Passing Off - British Amateur Gymnastics Association v UK Gymnastics Ltd and Others

Public Domain, https://commons.wikimedia.org/w/index.php?curid=1228334

Jane Lambert

Intellectual Property Enterprise Court (Judge Melissa Clarks) British Amateur Gymnastics Association v UK Gymnastics Ltd and others [2020] EWHC 1678  (26 June 2020)

This was a claim for trade mark infringement and passing off.  It was brought by the British Amateur Gymnastics Association ("BAGA") which is recognized as the national governing body for gymnastics in the UK. BAGA complained that UK Gymnastics Ltd ("UKG"), UK Gymnastics Affiliation Ltd. ("UKGA") and their director, Christopher Adams ("Mr Adams"), had infringed its national registered trade marks numbered UK00003226097 and UK00003281771 under s.10 (2) and (3) of the Trade Marks Act 1994 and passed off their goods and services as and for those of BAGA. The action was tried by Judge Melissa Clarke on 2 and 3 March 2020 who delivered judgment on 26 June 2020. At paragraph [151] of her judgment in British Amateur Gymnastics Association v UK Gymnastics Ltd and others [2020] EWHC 1678 (IPEC) (26 June 2020), Her Honour found for BAGA in the entirety of its claim.

S.10 (2)
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 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."

BAGA's registered marks appear in the left-hand column and the signs used by  UKG and UKGA appear on the right.

The Trade Marks	The Signs
	UK Gymnastics

The judge found that UKG and UKGA had offered education, providing of training, entertainment, sporting activities in class 41 which were identical to the services for which BAGA's marks had been registered and gymnastics and sporting articles in class 28 which were similar to those for which the marks had been registered to a medium. degree.  She held that there was a medium degree of similarity between the words "UK Gymnastics" and the registered marks and a low degree of similarity between the other signs and the registered marks.  She concluded at paragraph [133]:

"Taking all of the circumstances into account, and on balance, I am satisfied that there is a likelihood of confusion such that those who are paying a lower degree of attention, including child gymnasts, their parents, and spectators at sporting events who see the Word Sign and the Signs will mistakenly take them for that of the only [national governing body] for the sport of gymnastics in the UK, i.e. the Claimant, because ‘there is only one body’."

It followed that the use of the signs infringed the registered marks pursuant to s.10 (2) of the Trade Marks Act 1994.

S.10 (3)

S.10 (3) of the Trade Marks Act 1994 provides:

"A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which -
(a) is identical with or similar to the trade mark,
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

At the case management conference, His Honour Judge Hacon had identified the following issues in relation to s.10 (3) of the Act:

"Have the Defendants infringed the Trade Marks and each of them pursuant to section 10(3) TMA? The Defendants have admitted that the Trade Marks have a reputation in the UK. The following issues remain in dispute:
a) Is there a link between the Signs and the Trade Marks in the mind of the relevant public?
b) Is the use of the Signs by the Defendants detrimental to the distinctive character and/or repute of the Trade Marks and/or does the use create a serious risk of being so detrimental?
c) Does the use of the Signs by the Defendants take unfair advantage of the distinctive character or repute of the Trade Marks or does it create a serious risk of doing so?
d) Does the use of the Signs affect or create a serious risk of affecting or changing the economic behaviour of the average consumer?
e) Is the use of the Signs by the Defendants without due cause?"

As to the first issue, Her Honour said at [135]:

"If I am wrong about likelihood of confusion, I am nonetheless satisfied that the degree of similarity between the Trade Marks and the Signs, plus the enhanced distinctiveness of the Trade Marks, and the reputation that the Defendants have admitted that the Trade Marks each enjoy in the UK, is sufficient to conclude that the relevant section of the public will make a connection or establish a link to the Trade Marks in their mind when they see the Signs."

On the questions of whether the use of the Signs by the defendants was detrimental to the distinctive character and/or repute of the registered trade marks and/or whether such use created a serious risk of being so detrimental, the judge was with BAGA.  She said at [139]:

"The Claimant’s position as the sole, recognised [national governing body] for gymnastics means that it is in a position of considerable responsibility in relation to the sport and the public. Where the use of the Signs gives rise to a link between the UKG Services and the Claimant in the mind of the public, the public may legitimately expect that the UKG Services are provided by the First Defendant to similar a similar quality, safety and scrutiny as comparable services offered by the Claimant. My findings that they are not, means there is a serious risk that use of the Signs would be detrimental to the distinctive character and reputation of the Trade Marks."

Judge Melissa Clarke took issues (c) and (d) together and concluded at [144]:

"The weight of the evidence leads me to conclude that it is more likely than not that the use of the Signs by the Defendants is intended to, and does, take unfair advantage of the distinctive character and repute of the Trade Marks, and that the reason is to drive further business to the First Defendant for its economic advantage, thus changing the economic behaviour of the average consumer."

On the last issue, the judge's findings on the defendants' intentions in relation to issues (c) and (d) meant that she was satisfied that the use of the Signs was without due cause.   It followed that the use of the signs infringed the registered trade marks pursuant to s,10 (3) as well as s.10 (2) of the Trade Marks Act 1994. 

Passing off

Her Honour dealt with this point shortly.  It was beyond dispute, in her judgment, that UKG and UKGA had used their signs and get-up in conjunction with statements on their website that they were a national governing body for gymnastics in the UK.  She held that that was untrue.  She had already found in her discussions on trade mark infringement that the public was likely to believe that there was a connection with BAGA.   As a result, BAGA was likely to suffer damage to its goodwill.  It followed that the claim for passing off succeeded.

Liability of Mr Adams
The judge noted at paragraph [9] of her judgment that the Defendants had admitted joint liability for any acts of infringement and/or passing off which might be found by the court.

Further Information
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