KBF Enterprises Ltd v Gladiator Nutrition 3.0 Ltd (now dissolved)
| Jurisdiction | England & Wales |
| Judge | Amanda Michaels |
| Judgment Date | 09 November 2018 |
| Neutral Citation | [2018] EWHC 3041 (IPEC) |
| Docket Number | Claim No: IP-2017-000062 |
| Court | Intellectual Property Enterprise Court |
| Date | 09 November 2018 |
[2018] EWHC 3041 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Recorder Amanda Michaels
Claim No: IP-2017-000062
Aaron Wood of Wood IP Ltd for the Claimant
Thomas St Quintin (instructed by Brandsmiths) for the Defendants
Hearing dates: 6 th and 7 th June 2018
Judgment Approved
Miss Recorder
Introduction
The Claimant company KBF Enterprises Ltd runs a retail business under the name Bodybuilding Warehouse and manufactures and sells branded sports nutrition products or supplements, including products bearing its own marks Warrior and Warrior Supplements. The Claimant alleges that the Defendants have infringed four of its UK trade marks which consist of or include the word Warrior and have passed off their goods as those of the Claimant by using the sign ‘The Warrior Project’ in relation to sports nutrition products.
The Third Defendant, Mr Daniel Singh, (“Mr Singh”) performed in the Sky TV programme ‘Gladiators’ under the stage name Warrior. The Defendants say that as a result of that exposure, as well as various additional activities carried out by Mr Singh, Mr Singh has since December 2008 (or some time in 2009) owned goodwill in the name Warrior when used in relation to fitness and body building. In response to the Claimant's claim for trade mark infringement and passing off, they have counterclaimed that the Claimant's trade marks are invalid and that the Claimant is passing itself off as connected with Mr Singh. They deny infringement and passing off.
Background
The Claimant's business and marks
The Claimant was incorporated on 1 June 2007. It was set up by Mr Kieran Fisher and he remains its managing director. In 2008 it began to trade as BodyBuilding Warehouse. Its business includes the distribution and sale of sports nutrition products and accessories on a retail and wholesale basis; customers include gyms, multiples and sports supplement shops. There are also online sales. The goods sold have included a variety of food, mineral or vitamin supplements, some of which are designed to be used by bodybuilders, and more recently the Claimant has had some success in selling energy and protein bars. Some of the goods sold by the Claimant bear third party marks, but the majority now bear the Claimant's own brands. Mr Fisher gave evidence that the Claimant's main own-brand is ‘WARRIOR.’ He said that he chose the name Warrior in 2010 but did not give clear evidence of the date when the Claimant first used any Warrior branding or Warrior alone. The earliest document showing use of Warrior marks was a copy of a page from the Claimant's website dated 13 November 2010, which is headed Warrior Supplements and refers to ‘Warrior’. Mr Fisher said that the first two products sold were Warrior Rage and Warrior Blaze, but the 2010 webpage contained a description of ‘Warrior Supplements’ and offered 3 products for sale: Warrior Rage, Warrior Wrath and Warrior Stack. The earliest document showing use of Warrior Blaze was a page from the Claimant's website dated 31 October 2011. By that date, the Claimant was using the word Warrior in a stylised form (see Annex A) which I shall call the Warrior logo. It relied upon the logo as a form of use of the word Warrior, rather than for its stylisation.
The Claimant produced a number of documents showing the scale of sales and advertising of the range of Warrior products, but, as I explain further below, these did not clarify which Warrior marks had been used nor the scale of use at any specific period. The sales data identified Warrior Supplements as its best-selling brand from 2014 onwards, not Warrior alone. However, many of the documents upon which the Claimant relied, including sales data and web extracts, show use of the Warrior name or logo together with the individual product name, whether a name like Rage or Blaze, or a description of the product. The documents in evidence showed that the Warrior name or logo has tended to be presented in much smaller font than the name of the product (see Annex A). In my view there was a good deal of force in Mr Singh's contention that in more recent iterations, at least, the name of the individual product dominates the Warrior logo.
The Claimant relied in these proceedings upon four registered UK trade marks applied for between 2012 and 2016. The latest of those to be registered, consisting just of the word WARRIOR, was applied for only after the Defendants commenced their allegedly infringing activities:
| Number | Mark | Filing Date | Specification |
| 2621913 | WARRIOR SUPPLEMENTS | 23/05/201 2 | Class 5: Amino acid supplements, vitamin/mineral supplements, food supplements; protein/carbohydrate supplements, protein supplements, vitamin, protein and mineral enriched foods and foodstuffs; all the aforesaid being adapted for increasing muscle size and endurance and health or well-being Class 30: Flapjacks, caramel confectionery and caramel and hazelnut confectionery; nutritional foodstuffs protein-based confectionery, chocolate coated or plain. |
| 3065879 | WARRIOR BLAZE | 25/07/201 4 | Class 5: Nutraceuticals for use as a dietary supplement; Slimming purposes (Medical preparations for -); Slimming pills; Dietary supplements; Dietary supplements for humans and animals; Nutritional supplements. |
| 3065882 | WARRIOR FAT BURNER | 25/07/201 4 | Class 5: Slimming pills; Dietary supplements; Food supplements for dietetic use; Nutritional supplements. |
| 3174979 | WARRIOR | 15/07/2016 | Class 5: Protein dietary supplements; Nutritional supplements; Vitamins and vitamin preparations; Protein dietary supplements. Class 30: Confectionery bars; Flapjacks; Foodstuffs in the form of snack foods; Foodstuffs made from oats. Class 32: Protein-enriched sports beverages; Sports drinks; Sports drinks containing electrolytes. |
The Claimant said that it had made substantial use of the Warrior Supplements and Warrior marks and claimed that those two marks had a reputation in the UK.
The Defendants
The programme Gladiators ran for a number of series on UK television between 1992 and 1997. Contestants who were members of the public undertook challenges of strength, speed and stamina in which they competed against an in-house ‘gladiator.’ The gladiators were chosen for their physical prowess, physique and fitness, some of them were body builders or trained in martial arts, and each of them was given a suitably martial stage-name. Mr Michael Ahearne appeared in some of the original shows under the stage name Warrior. The show was revived by Sky Television with new gladiators and ran for two more series in 2008 and 2009, with some additional one-off shows in 2009. The viewing figures for the programmes in 2009 were 700,000 for episode 1 and over 500,000 for each subsequent episode.
Mr Singh is a bodybuilder, fitness instructor and professional wrestler who, in December 2008, at the age of 21, became one of the gladiators. He appeared in the 12 episode series of Gladiators shown in 2009, and in 2 special shows, under the stage-name Warrior.
Following his appearance in Gladiators, Mr Singh carried on a variety of activities in the UK and abroad. For instance, he worked as an actor in films/television, he promoted or endorsed third party fitness supplements, including by attendance at bodybuilding trade shows, and competed in or commentated upon mixed martial arts and wrestling events. The Claimant accepted that Mr Singh had worked in the fitness and entertainment industry, and in particular that he had endorsed certain third-party brands and supplements. However, there was a dispute between the parties as to the extent of such activities, in particular prior to the commencement of the Claimant's use of any Warrior marks, and whether, how or to what extent Mr Singh used the name Warrior in relation to his own trading activities.
The First Defendant company was incorporated on 16 February 2015. Its directors were Mr Singh and his brother Shaan (who was not involved in these proceedings). The Second Defendant was incorporated on 1 September 2015. Mr Singh is its sole director.
On 14 July 2015, the domain name warriorproject.co.uk was registered in the name of Mr Gardner, the Fifth Defendant. On 6 October 2015 an application was made to the EUIPO to register the device trade mark ‘The Warrior Project’ for goods, including nutritional supplements in Class 5, sports and fitness clothing in Class 25 and cereal bars in Class 30. The device is as follows:
The EUTM application was made in the name of Deep Blue Sports Limited, a company of which Mr Gardner was then the sole director. It was registered on 20 April 2016. Mr Singh and Mr Gardner's evidence was that it was by mistake that the domain name and the trade mark applications were made in those names and said that they should have been registered in Mr Singh's name. Both the domain name and the EUTM were transferred into Mr Singh's name in 2016 following receipt of the letter of claim from the Claimant. I will refer to ‘The Warrior Project’ as ‘TWP’ and to the logo registered as the EUTM as ‘the TWP logo.’
The Fourth Defendant was incorporated on 28 October 2015. Its sole director is the Fifth Defendant, Mr Gardner, and he is the ultimate (but indirect) shareholder of all of its issued shares.
In 2015, TWP and the TWP logo started to be used in relation to nutritional supplements of a kind primarily aimed at serious bodybuilders. There was some promotional activity in around June/July 2015 in which clothing was...
To continue reading
Request your trial