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A battle between two warriors

28 November 2018. Published by Ben Mark, Legal Director and Holly Pownall, Associate

The IPEC has recently considered the protection afforded to trade marks with an average level of distinctiveness.

Background

The Claimant, KBF Enterprises Ltd, manufactured and sold sports nutrition products and supplements. It had used marks including the word WARRIOR since November 2010, and applied to register the following UK marks in Class 5 for nutritional supplements before 2015: WARRIOR SUPPLEMENTS, WARRIOR BLAZE and WARRIOR FAT BURNER. It applied to register the word WARRIOR in 2016.

The Third Defendant, Mr Daniel Singh, was a bodybuilder, fitness instructor and professional wrestler who had performed under the stage name 'Warrior' in episodes of the Sky TV programme 'Gladiators' shown in 2009. Following his appearance in Gladiators, Mr Singh carried on a variety of promotional activities in the UK and abroad. There was a dispute between the parties as to what extent Mr Singh used the name Warrior in relation to his own trading activities. In July 2015, the domain name warriorproject.co.uk was registered in the name of the Fifth Defendant. In October 2015, an application was made to the EUIPO to register the device trade mark 'The Warrior Project' for certain goods, including nutritional supplements in Class 5. In 2015, 'The Warrior Project' ("TWP") and 'The Warrior Project' logo ("TWP logo") started to be used by the Defendants in relation to nutritional supplements aimed at serious bodybuilders.

The Claimant alleged that it had goodwill and reputation in the marks WARRIOR and WARRIOR SUPPLEMENTS and that the Defendants were infringing all four registered marks in breach of s.10(2) of the Trade Marks Act 1994. In addition, the Claimant alleged that the Defendants were passing off their goods as those of the Claimant or as connected with the Claimant by the use of TWP and the TWP logo.

The Defendants alleged that the Claimant's use post-dated the commencement of use of the 'Warrior' name by Mr Singh and relied on the defence under s.11(2) of the 1994 Act of use of Mr Singh's own trade name. The Defendants also counterclaimed for a declaration of invalidity of all four of the Claimant's trade marks by reason of Mr Singh's alleged rights in the 'Warrior' name in connection with fitness and/or bodybuilding activities acquired prior to the Claimant's first use of the marks. They also alleged that the Claimant had been passing off.

Trade mark infringement and passing off

The Claimant argued that 'Warrior' was the most distinctive part of all of the marks, whilst the Defendants submitted that 'Warrior' would not be seen by the public as the distinctive element of any of the marks because it is essentially descriptive or a common element of low distinctiveness, which pointed away from a likelihood of confusion. The Court found that whilst the word 'Warrior' may have some allusive or evocative qualities when used in relation to nutritional goods, those allusions were at too general a level and/or too far removed from the goods to be descriptive or of inherently low distinctiveness. It concluded that the Claimant's mark WARRIOR and the word 'Warrior' used as a part of its other marks and TWP had an average rather than a low or minimal level of distinctiveness.

Whilst noting that it was important not to dissect marks in an artificial way, the Court found that the dominant element of the WARRIOR and WARRIOR SUPPLEMENTS marks was the word 'Warrior'. It was also more dominant than the word 'Project' in the TWP marks. However, the additional words in WARRIOR BLAZE and WARRIOR FAT BURNER led to significant conceptual differences from the TWP marks (although the inclusion of the word 'Warrior' meant that they were not dissimilar). Accordingly, overall, the TWP marks had a high level of similarity to WARRIOR, an average level of similarity to WARRIOR SUPPLEMENTS, and a low level of similarity to WARRIOR BLAZE and WARRIOR FAT BURNER.

The Court went on to find that, taking into account the identical or highly similar goods, there was a likelihood of confusion between WARRIOR and WARRIOR SUPPLEMENTS and the TWP marks. There was no likelihood of confusion with WARRIOR BLAZE or with WARRIOR FAT BURNER.

The Court was not persuaded that Mr Singh was trading under the name 'Warrior' before November 2010. Although he (and others) made frequent references to his role in the TV show in the course of his trading activities, the evidence of his use of the name 'Warrior' alone (without the use of his full name) was not sufficiently consistent to show that 'Warrior' was his trade name. Accordingly, the own name defence was not made out.

Finally, the Court found that the Claimant's evidence was inadequate to prove that it had goodwill in the Warrior marks by 2015, and rejected the Claimant's claim based on passing off.

Counterclaim

The questions of (a) whether the Claimant's registrations were invalid because they had been registered despite Mr Singh's alleged earlier unregistered rights in the Warrior name and/or (b) whether the Claimant was passing off its goods as those of Mr Singh (or as goods connected with him) had to be tested as at the date when the Claimant started to make use of the various Warrior marks in about November 2010. At that date, Mr Singh had completed his appearances as 'Warrior' in the Gladiators and had carried out some other promotional activities.

Whilst being satisfied that Mr Singh believed that he was known to those in the fitness/bodybuilding industry as 'Warrior' or Dan 'Warrior' Singh, the Court found that his evidence fell short of proving that he was known as Warrior before November 2010. It was not satisfied that any reputation that Mr Singh had acquired through appearing on the TV show would have led to him acquiring the goodwill in the name 'Warrior' for fitness and bodybuilding. Accordingly, the Court dismissed the counterclaim. 

Conclusion

The interesting message from this case is that, in relation to a mark deemed to have only an average level of distinctiveness (eg 'Warrior'), the use of that mark in conjunction with other arguably descriptive words (eg 'fat burner') may be sufficient to negate a likelihood of confusion where those additional words are found to create significant conceptual differences.

 

KBF Enterprises Ltd v Gladiator Nutrition 3.0 Ltd & Others [2018] EWHC 3041 (IPEC)