British Gymnastics lands well in trade mark infringement proceedings
The national governing body (NGB) for Gymnastics in Britain has succeeded in trade mark infringement and passing off proceedings against an organisation using the sign “UK Gymnastics”, in a Judgment which is likely to assist several Sport England and UK Sport-funded NGBs. In particular, it shows how to deal with organisations using signs which suggest they are an NGB (when they are not).
Background
The Claimant in this case was the British Amateur Gymnastics Association (“British Gymnastics”) – the UK’s national governing body for gymnastics. It owns registered trade marks for:
- “British Gymnastics, More than a sport”; and
- “British Gymnastics”.
Both trade marks were registered in class 28 (gymnastics and sporting articles) and class 41 (education, provision of training, entertainment, sporting activities).
Sometimes the trade mark “British Gymnastics” was used on its own, and sometimes it was used with “More than a sport” as a strapline.
UK Gymnastics Limited (“UKG”) was offering gymnastic club memberships, competitions and courses under the sign “UK Gymnastics” (sometimes as a pure word sign, other times as a logo combined with an image of the Union Jack).
British Gymnastics brought claims against UKG for trade mark infringement under the Trade Marks Act 1994 (the “Act”), and for passing off.
Decision
Trade mark infringement: Was there a likelihood of confusion?
The Court was asked to decide whether (under s. 10(2)(b) of the Act), UKG’s sign was similar to the British Gymnastics marks, whether it was used in relation to identical or similar goods or services and whether this caused a likelihood of confusion.
The Court decided that there was medium similarity between “UK Gymnastics” as a word sign and “British Gymnastics”. Whilst the words “UK” and “British” were obviously visually and aurally distinct, the conceptual similarity was strong. The two words denote a similar geographical area and convey an official status. When UKG used the logos of the Union Jack with the word sign “UK Gymnastics”, the Court found that the similarity decreased significantly.
In either case, however, the Court relied upon the fact that the services being offered by British Gymnastics and UKG were highly similar. The services in class 28 (gymnastics and sporting articles) were held to be similar, but importantly services in class 41 (education, provision of training, entertainment, sporting activities) were held to be identical.
The Court also placed significant weight on the fact that British Gymnastics’ marks were particularly distinctive given that it had been the sole NGB for gymnastics for many years. UKG tried to argue that it was in fact an NGB, but the Court found that it was not for several reasons – including that there was no real evidence of governance of the sport, no real evidence of UKG acting as either a custodian or guardian of the sport, a lack of rules governing membership until very recently and no governance structure.
British Gymnastics’ status as the sole NGB meant that the average consumer would pay less attention when purchasing or using the relevant services. The Judge also provided a useful reminder that the relevant “average consumer” is fact specific – here, children and parents were the users of the services. Children were likely to have difficulty distinguishing between British Gymnastics and UKG (and parents were likely to pay minimal attention compared with coaches, owners of clubs and other NGBs of international federations).
Overall, the Court found that there was a likelihood of confusion, and therefore the UKG signs did infringe British Gymnastics’ marks.
Trade mark infringement: unfair advantage or detrimental to distinctive character or repute?
When combining the degree of similarity between the marks and signs, the enhanced distinctiveness of the marks resulting from British Gymnastics’ status as the only NGB for gymnastics and its long-standing reputation in the UK, the Court held that the relevant public would establish a link to British Gymnastics when they encountered UKG’s signs.
This link meant that the public would expect a certain quality in the services provided. On the facts, it was found that UKG’s services fell far below the standard of British Gymnastics, causing a detrimental effect to the distinctive character and reputation of British Gymnastics’ marks.
It was also found that UKG knew of British Gymnastics’ reputation and deliberately used similar signs to generate more business, changing the economic behaviour of the average consumer and ‘riding on the coattails’ of British Gymnastics.
Combined, the Court determined that this amounted to a further infringement under s.10(3) of the Act, meaning that British Gymnastics was successful on both counts of trade mark infringement.
Passing Off:
Relying on the same reasons, the Court upheld the passing off claim, concluding that British Gymnastics had established goodwill, UKG’s actions amounted to a misrepresentation that the services were those of British Gymnastics and that this caused damage.
Key comments
The case is important for NGBs, many of whom may have encountered similar issues with organisations using “GB [Sport]” or “UK [Sport]” to sell goods and services.
In this case, the important point was that British Gymnastics was the only NGB for the sport, giving its marks distinctive character. For the few sports where there are multiple NGBs, it would be important to show that those NGBs had clear and delineated roles which were understood.
It was less important that the signs themselves were of medium similarity (or even low similarity when logos were included) – what was vital was that the services were so similar that it created a real likelihood of confusion.
More broadly, the case serves as a useful reminder that even though a mark may appear generic, it can still enjoy a great deal of protection if it has long standing use / its owner occupies a unique position in the field.
British Amateur Gymnastics Association v UK Gymnastics Ltd & Ors [2020] EWHC 1678 (IPEC) (26 June 2020).