British Amateur Gymnastics Association v UK Gymnastics Ltd
| Jurisdiction | England & Wales |
| Judge | Melissa Clarke |
| Judgment Date | 26 June 2020 |
| Neutral Citation | [2020] EWHC 1678 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Claim No: IP-2019-000005 |
| Date | 26 June 2020 |
[2020] EWHC 1678 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
New Fetter Lane
London
HER HONOUR JUDGE Melissa Clarke
Sitting as a Judge of the High Court
Claim No: IP-2019-000005
Miss Victoria Jones (instructed by Howard Kennedy) for the Claimant
Mr Steven Reed (instructed by SP Legal Solutions) for the Defendants
Hearing dates: 2 and 3 March 2020
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
INTRODUCTION
The Claimant is a not for profit private company limited by guarantee, and a National Governing Body (“ NGB”) for the sport of gymnastics in the United Kingdom. It is recognised as an NGB by the Sports Council in the UK, the European Union of Gymnastics (“ UEG”) and the Federation of International Gymnastics (“ FIG”). It was incorporated on 20 April 1982 but has a history which can be traced back to the very beginnings of the sport of gymnastics in the UK with the establishment in 1888 of the ‘Amateur Gymnastics and Fencing Association’. Since around 1997 it has traded and operated under and by reference to the name ‘British Gymnastics’ (“ the Mark”).
The Claimant is the proprietor of the following UK registered trade marks (“ the Trade Marks”), each of which is a series of two marks:
| No | TRADE MARK | FILING DATE | GOODS/SERVICES |
| 1 | UK00003226097  | 20.04.17 | Class 9 Digital photographs; Video recordings. Class 16 Photographs. Class 25 Clothing. Class 28 Gymnastics and Sporting Articles. Class 35 Business administration; Office functions. Class 41 Education; providing of training; Entertainment; Sporting activities. |
| 2 | UK00003281771  | 10.01.18 | Class 9 Digital photographs; Video recordings. Class 16 Photographs. Class 25 Clothing. Class 28 Gymnastics and Sporting Articles. Class 35 Business administration; Office functions. Class 41 Education; providing of training; Entertainment; Sporting activities. |
Since at least 1982 and until circa 1997, all of C's activities were carried out under and by reference to the name ‘British Gymnastics Association’. Since 1997, C has operated at all material times under and by reference to the name ‘British Gymnastics’ (‘ the Mark’). It has also operated under and by reference to certain logos incorporating the words ‘British Gymnastics’ and the following get-up:
i) Since 2011, by reference to the Trade Marks and each of them;
ii) Prior to 2011 the primary British Gymnastics' logo was as follows:
iii) The colours red, white and blue, reminiscent of the Union Jack Flag;
iv) A background image depicting gymnastics motion in the form of coloured swirls in the colours red/white/purple/blue.
(collectively the “ Claimant's Get-Up”)
The First Defendant is a private limited company incorporated on 5 July 2000, with the nature of its business registered as ‘93120 — activities or sports clubs’. The Second Defendant is a private company limited by guarantee incorporated on 14 July 2017 with the nature of its business registered as ‘85510 — sports recreation and education’. The Third Defendant is the founding and sole director and secretary of the First Defendant and an equal shareholder with his father, Brian Adams. He is also the founding and sole director of the Second Defendant and a guarantor of it.
Since at least 2015, the First Defendant has advertised, offered and provided: membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and/or badge/certificate programmes; and/or educational services to coaches and gymnasts (“ the UKG Services”), under and by reference to the sign ‘UK Gymnastics’ in the following logo formats
(collectively “ the Signs”), and associated get-up including the colours red, white and blue and sections or elements of the Union Jack (collectively “ the UKG Get-Up”). The First Defendant organises and administers gymnastics competitions and runs the ‘UK Gymnastics’ website (“ Ds' Website”). The Second Defendant administers the membership of UK Gymnastics, organises courses and runs an online store on Ds' Website. The Third Defendant is the sole director of the First and Second Defendants.
There is also a dispute about whether the Defendants use the sign ‘UK Gymnastics’ in a word format (“ Word Sign”) which I will have to determine. For convenience, I shall refer in this judgment to the Signs and any Word Sign as “the Signs” where the context permits.
On 9 January 2019 the Claimant issued a claim for trade mark infringement and passing off. It seeks, inter alia:
i) an injunction restraining the Defendants from infringing the Claimant's registered trade marks and from passing off its goods and services as being connected with those of the C; and
ii) damages of up to £100,000.
The Defendants defend the claim, inter alia, on the basis that the marks and the Signs used by the First and/or Second Defendants are not similar to the Trade Marks; there is no likelihood of confusion between the Trade Marks and the Signs; and that the activities undertaken by the First and/or Second Defendants do not amount to passing off of the Claimant's business.
The Defendants admit joint liability for any acts of infringement and/or passing off which may be found by the court.
THE ISSUES
At a case management conference on 25 July 2019, His Honour Judge Hacon identified the following list of issues:
i) Have the Defendants infringed the Trade Marks and each of them pursuant to section 10(2)(b) of the Trade Marks Act 1994 (“ the Act”)? The Defendants have admitted that the Trade Marks each enjoy an enhanced distinctive character. The following issues remain in dispute:
a) Have the Defendants used the Word Sign in the course of trade in relation to the UKG Services?
b) Are the Signs similar to the Trade Marks?
c) Does the use of the Signs in the course of trade in relation to the UKG Services result in a likelihood of confusion on the part of the public?
ii) 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?
iii) The Defendants have admitted that the Claimant had at the date when the Defendants commenced the activities complained of, and has, built up and owned valuable goodwill in the UK which attaches to the Mark and/or the Trade Marks and each of them either alone or in conjunction with the Claimant's Get-Up or each element thereof when used in relation to the Claimant's Services and that accordingly when members of the relevant public in the UK see the Mark and/or the Trade Marks and each of them either alone or in conjunction with the Claimant's Get-Up or each element thereof when used in connection with those Services, they would believe them to be those of or connected with the Claimant and no other. The following issues remain in dispute:
a) Whether the Defendants' use of the Signs and/or UKG Get-Up in relation to the UKG Services has led or is likely to lead a substantial number of members of the relevant public or trade in the UK to believe, contrary to fact that:
i) The Defendants and/or the UKG Services are those of or otherwise the subject of some commercial arrangement with the Claimant, and/or
ii) The Defendants and/or the UKG Services are connected with the Claimant in such a way as to cause damage to its goodwill and/or
iii) That the Defendants and/or UKG Services have the status of a National Governing Body conferred upon them by the Claimant.
b) Whether the Claimant has suffered or is likely to suffer damage.
THE TRIAL
The trial was heard over two days on 2 and 3 March 2020. Miss Victoria Jones represented the Claimant and Mr Steven Reed the Defendants. I thank them for their helpful skeleton arguments and oral submissions.
The Claimant relies on two witnesses, Ms Jane Allen, Chief Executive Officer of the Claimant, and Mr Philip John Smith, Director of Sport of the Sports Council of England (“ Sport England”). Both filed a single witness statement, attended court and were cross-examined and re-examined.
The Defendants rely on two witnesses, Mr Christopher Adams who filed a single witness statement and Mr Jason Wise who filed two witness statements. Each attended court and was cross-examined and re-examined.
Ms Allen has been the CEO of the Claimant since 2010 and was previously the CEO of Gymnastics Australia for three years from 2007–2010. She has a total of 37 years' experience of acting in an executive capacity in sports administration. She appeared to me to be a professional witness who came to court to assist it to the best of her ability. She made appropriate concessions where necessary and gave her evidence in a straightforward manner. I found her to be a credible and reliable witness. Mr Reed for the...
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