Athleta (ITM) Inc. v Sports Group Denmark A/S

Hearing dates: 16, 17 and 19 July 2024 (with further written submissions received on 24 July 2024)

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.

This judgment is to be handed down by the deputy judge remotely by circulation to the parties' representatives by email and release to the National Archives and Bailii. The date for hand-down is deemed to be 30 September 2024. David Stone (sitting as Deputy High Court Judge):

This is my judgment following a three day trial in an action for trade mark infringement and passing off. The Claimant, Athleta (ITM) Inc ( Athleta), part of the Gap, Inc group of companies ( Gap), sells women's clothing, primarily activewear, under the brand ATHLETA. The First Defendant, Sports Group Denmark A/S ( SGD), is a Danish company that designs, produces and distributes clothing, accessories and footwear under a number of brands, including women's activewear which it sells under the brand ATHLECIA. The Second Defendant, Jarrold & Sons Limited ( Jarrold), is a UK retailer which operates a department store and an on-line presence. It sold SGD's ATHLECIA clothing between 30 November 2021 and 24 June 2022. The Defendants admitted for the purposes of these proceedings that SGD is jointly and severally liable for the acts of Jarrold, and Jarrold took no further part in the proceedings (other than providing evidence).

The parties were largely agreed on the law to be applied. This case therefore turns almost entirely on its facts.

Dr Stuart Baran and Dr Richard Darby (instructed by Stephenson Harwood LLP) appeared for the Claimant and Dr Jamie Muir Wood (instructed by Waterfront Solicitors LLP) appeared for the Defendants.

The Parties' Positions in Outline

Athleta is the registered proprietor of two UK registered trade marks (which the parties referred to together as the ATHLETA Marks):

i) ATHLETA, a word mark, filed on 15 September 2008 and registered under number 00907234503 in respect of various goods and services in classes 3, 9, 14, 18, 25, 28 and 35, including for ‘clothing’ in class 25 and ‘bags’ in class 18 (the ATHLETA Word Mark); and

ii)

a, word and device also filed on 15 September 2008 and registered under number 00907234628 in respect of various goods and services in classes 18, 25 and 35, including for ‘clothing’ in class 25 (the ATHLETA Combination Mark).

Athleta also claims to own goodwill in the United Kingdom in the following four signs (referred to by the parties as the ATHLETA Signs):

i) ATHLETA;

ii)

iii)

(the ATHLETA Dark Pinwheel); and

iv)

(the ATHLETA Purple Pinwheel).

SGD admits that it has used the following signs in the United Kingdom (referred to by the parties as the ATHLECIA Signs):

i) ATHLECIA;

ii)

(the ATHLECIA Device);

iii)

(the First ATHLECIA Combination); and

iv)

(the Second ATHLECIA Combination).

SGD also admits that it has used the ATHLECIA signs in the United Kingdom in relation to bags, clothing, headgear and footwear.

Athleta complains that use of the ATHLECIA Signs other than the ATHLECIA Device by SGD amounts to:

i) infringement of the ATHLETA Marks under section 10(2) of the Trade Marks Act 1994 (the TMA); and

ii) passing off in respect of the ATHLETA Signs.

SGD:

i) denies similarity and confusion under section 10(2) of the TMA;

ii) denies passing off;

iii) applies to invalidate the ATHLETA Marks under section 47(1) of the TMA because they are devoid of distinctive character (under section 3(1)(b) of the TMA) and/or consist exclusively of signs which designate the intended purposes of the goods and services for which they are registered (under section 3(1)(c) of the TMA); and

iv) applies to revoke the ATHLETA Marks for non-use. Athleta had originally claimed to use the ATHLETA Marks for a broader range of goods, but, by the trial, had narrowed its claimed use to the following goods:

Class 18 bags;

Class 25 clothing, footwear, headgear and clothing accessories;

Class 35 retail store services in the field of clothing, footwear, headgear, clothing accessories, bags; providing on-line retailing services and on-line ordering services in the field of clothing, footwear, headgear, clothing accessories, bags.

SGD has applied to register UK trade marks for the ATHLECIA Word Mark and the First ATHLECIA Combination: these have been opposed by Athleta and those proceedings are stayed pending the outcome of this judgment.

List of Issues

The parties' agreed list of issues for trial was as follows (I have amended the dates in relation to revocation for non-use to reflect the position reached by the parties by the time of the trial and I have amended some of the definitions to reflect those set out above):

“Trade Mark Infringement

1. Are the ATHLECIA Signs (other than the ATHLECIA Device) or any of them similar to the ATHLETA Marks?

2. If issue 1 is resolved in the affirmative, does there exist a likelihood of confusion (including a likelihood of association) on the part of the relevant public in relation to the ATHLETA Marks resulting from SGD's use of the ATHLECIA Signs (other than the ATHLECIA Device) or any of them?

3. Whether SGD's use of the sign ATHLECIA, the First ATHLECIA Combination and/or the Second ATHLECIA Combination affects or is liable to affect any of the functions of the ATHLETA Marks and each of them.

Passing Off

4. As of 30 November 2021, did Athleta own protectable goodwill under each of the ATHLETA Signs?

5. Does the use of the ATHLECIA Signs (other than the ATHLECIA Device) by SGD in the United Kingdom constitute a misrepresentation?

6. If the answer to issue 5 is yes, is such misrepresentation liable to damage any goodwill found to be owned by Athleta?

Counterclaim

7. Have the ATHLETA Marks or each of them been put to genuine use for all goods and services for which they are registered within:

a. the five-year period 30 November 2016 to 29 November 2021; or

b. the five-year period 12 July 2017 to 11 July 2022?

8. Were the ATHLETA Marks or each of them exclusively descriptive of the intended purpose of the goods and services for which they are registered as at the relevant priority date?

9. Were the ATHLETA Marks or each of them devoid of inherent distinctive character as at the relevant priority date?

10. Have the ATHLETA Marks or each of them acquired distinctive character through use?”

For the purposes of this judgment, I will not take these in the order in which they appear above, but my answers to each question are recorded at the end of this judgment. Instead, I will deal first with the question of validity, and then proceed to examine the question of infringement of such marks as I find to be valid.

Witnesses

Athleta relied on five witnesses, each of whom was cross-examined:

i) Bruno Sidonio Arantes Da Silva is Commercial Director at Sidonios Seamless Tech ( Sidonios) which manufactures garments for Athleta in Portugal, including by affixing the ATHLETA Signs to garments. Mr Da Silva gave his oral evidence in Portuguese by video link from Portugal.

ii) Sara Elizabeth Nichols is a Senior Paralegal in the Intellectual Property Team at Gap. She gave evidence about the sale of goods from the United States to Europe through a company called Borderfree.

iii) Katia Pereira Da Costa Madureira is a commercial officer at Impetus SA ( Impetus) which manufactures garments for Athleta in Portugal, including by affixing the ATHLETA Signs to garments. She gave her oral evidence in English by video link from Portugal.

iv) Patricia Elizabeth Gwillim is Head of Account Management and Planning – Europe, Middle East, Africa, Asia and Pureplay for Gap. She gave evidence about goods (predominantly clothing) bearing the ATHLETA Signs being sold in the United Kingdom and in the European Union, including through John Lewis and Zalando, a German online retailer of shoes, fashion and beauty which is active across Europe.

v) Jaclyn Foster Green is Director of Marketing Strategy and Insights at Gap who gave evidence about the ATHLETA brand. Her evidence was in reply to the witness statement of Anne Gelardi, referred to below.

SGD relied on six witnesses, each of whom was cross-examined:

i) Francesca Allport, an Associate at Waterfront Solicitors who gave evidence about dictionary definitions.

ii) Carolina Katrine Bonde Pedersen, a former employee of SGD, who gave evidence about an email that she sent on 6 October 2020, to which I return below. Ms Pedersen gave her oral evidence in English by video link from Denmark.

iii) Anne Gelardi, the Chief Design and Creative Manager in the performance division of SGD, who gave evidence about the conception and creation of the ATHLECIA brand. I accept Ms Gelardi's statements about her own brand – to the extent she purported to give evidence about the ATHLETA brand, those can only be her personal view, and to the extent those views were contradicted by Ms Green in her reply evidence referred to above, I accept Ms Green's evidence.

iv) Bjarne Jeppesen, the founder and CEO of SGD, who gave evidence about athleisure wear and the creation of the ATHLECIA brand.

v) Jim Stevenson, a Buyer at Jarrold who gave evidence going to the issues of likelihood of confusion and...