UK Gymnastics Ltd v British Amateur Gymnastics Association
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lord Justice Bean,Lord Justice Lewison |
| Judgment Date | 24 March 2021 |
| Neutral Citation | [2021] EWCA Civ 425 |
| Court | Court of Appeal (Civil Division) |
| Date | 24 March 2021 |
| Docket Number | Case No: A3/2020/115 |
[2021] EWCA Civ 425
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE BUSINESS AND PROPERTY COURT, INTELLECTUAL
PROPERTY ENTERPRISE COURT
Her Honour Judge Melissa Clarke
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Lewison
Lord Justice Bean
and
Lord Justice Arnold
Case No: A3/2020/115
Mark Anderson QC and Steven Reed (instructed by Moore & Tibbits) for the Appellants
Victoria Jones (instructed by Howard Kennedy LLP) for the Respondent
Hearing date: 16 March 2021
Approved Judgment
Introduction
The Claimant (“BAGA”) is a company limited by guarantee which was incorporated in 1982 as the successor to a body that was founded in 1888 as the Amateur Gymnastic and Fencing Association and was renamed in 1963 as the British Amateur Gymnastics Association. BAGA is recognised by the Sports Councils (UK Sport, sportscotland, Sport England, Sport Wales and Sport Northern Ireland), by the European Union of Gymnastics and the Federation of International Gymnastics as a national governing body (“NGB”) for the sport of gymnastics in the UK, and it is the only NGB which is so recognised. Since 1997 BAGA has traded as “British Gymnastics”. It is common ground that BAGA has built up substantial goodwill in that designation.
BAGA is the proprietor of two UK registered trade marks (“the Trade Marks”), each of which is a series of two marks and the details of which are set out below.
| 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. |
The First Defendant (“UKG”) is a company incorporated in 2000. The Second Defendant (“UKGA”) is a company incorporated in 2017. The Third Defendant, Christopher Adams, is the sole director and secretary of UKG and an equal shareholder with his father. He is also the sole director of UKGA.
Since about 2012/13, UKG and UKGA have advertised, offered and provided membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and/or badge/certificate programmes; and educational services to coaches and gymnasts (“the UKG Services”), under and by reference to the words “UK Gymnastics” (“the Word Sign”) and the two logos incorporating those words (“the Logo Signs”) shown below (collectively, “the Signs”).
BAGA contends that UKG and UKGA have thereby infringed the Trade Marks and committed passing off. The Defendants deny infringement and passing off, but admit joint liability for any acts of infringement or passing off. It is therefore not necessary to go into the division of labour between UKG and UKGA, and for convenience I will just refer to UKG. There is no challenge to the validity of the Trade Marks.
HHJ Melissa Clarke sitting in the Intellectual Property Enterprise Court held that UKG had infringed the Trade Marks and committed passing off for the reasons given in her judgment dated 26 June 2020 [2020] EWHC 1678 (IPEC).
The Defendants now appeal on six grounds with permission granted by myself. Although the judge adopted the common practice in cases involving parallel claims for trade mark infringement and passing off of considering BAGA's claim for trade mark infringement first, devoting most of her judgment to it, and only dealt with passing off briefly at the end of the judgment, the Defendants' grounds of appeal addressed the issues in reverse order and that was how counsel argued the appeal. I shall follow their example.
Passing off
Ground 1
BAGA alleged in its Particulars of Claim that it was the sole NGB for the sport of gymnastics in the UK (not just that it was the sole recognised NGB). The Defendants denied this in their Defence and alleged that UKG was also an NGB for the sport of gymnastics in the UK.
BAGA elaborated on its contention at length in its Reply, but in essence it relied upon the Sports Councils' Recognition Policy 2017 (“the Policy”). The key paragraphs of the Policy state:
“1. Recognition is a process … which
(a) Determine(s) the National Governing Bodies responsible for governing the sporting activities that the Sports Councils are willing to consider supporting and working with.
(b) Acknowledges the status of the NGB as a private organisation which governs a particular sport through the common consent of the sport itself.
6. An NGB is an organisation that governs and administers the sport on a national basis, whether that is for the whole of the United Kingdom (i.e. England, Northern Ireland, Scotland and Wales), for Great Britain or for one of the Home Countries individually. … Traditionally, NGBs are described as the custodians and guardians of their sport.
11. Many NGBs originated as a voluntary coming together of sports people (individuals, teams and clubs) with a common purpose; to encourage and enable participants to enjoy and progress in their chosen sport. They evolved into membership organisations and individuals often became members to enable them to compete in their sport and be covered by insurance.
12. … Recognition itself does not bestow any official powers on an NGB to govern its sport – its governance should already be in place; recognition is acknowledging the role played by the organisation.
13. NGBs can exist and operate without being recognised …”
BAGA contended that UKG was not an NGB because (i) it did not carry out the functions of a governing body, (ii) there was no common consent for it to govern or administer the sport and (iii) to the extent that UKG governed and administered the sport, it did not do so for the UK.
The Defendants elaborated on their contention at length in a Rejoinder. The Defendants admitted that BAGA was the only recognised NGB for the sport of gymnastics in the UK, but maintained that UKG was an NGB. The Defendants pleaded in paragraph 6.4:
“… if individuals taking part in gymnastics and their respective clubs are willing and desirous of being governed by or affiliated to a private organisation in accordance with that organisation's rules then, by virtue of that desire and willingness, the private organisation is a governing body for the sport of gymnastics. Further, if such individuals are their respective clubs are situated across, for example, England … then the ‘governing body’ would be a ‘national governing body’ …”.
The Defendants contended that this “definition” was supported by paragraph 11 of the Policy and that UKG complied with it.
Having considered the Policy and various other strands of evidence, the judge found as a fact that UKG was not an NGB for the sport of gymnastics in the UK. The major part of her reasoning is to be found in [90]:
“The difficulty with this submission [sc. the Defendants' submission] is that until very recently, and perhaps prompted by this litigation, there were no rules governing membership of the First Defendant: nothing to tell members what they were getting for their money and what their rights and responsibilities were. Looking at the definition in the Sports Council Recognition Policy 2017, there is, in my judgment, no real evidence of governance of the sport of gymnastics by the First Defendant anywhere, let alone throughout the UK, and no real evidence that the First Defendant is either a custodian or guardian of the sport of gymnastics. I have gone into quite extensive detail about the level and type of governance and stewardship evidenced by the Claimant, as in my judgement it puts into sharp relief the lack of similar processes and procedures by the First Defendant. Neither it nor the Second Defendant have objects of association that one would expect to see in a governing body. There is no transparency in the governance structure, no strength and depth in the board of directors. There is no quality assurance, no external audit or oversight or endorsement in the proficiency awards or coaching certifications that it sells. There are no defined disciplinary procedures. There is no evidence that it seeks to develop or improve the sport or its safety. There are only two employees, and Mr Wise, who is responsible for drafting policies for approval and implementation by the Board, admits he has no experience of doing so. The majority of the policies he has produced are of the type that are found in any organisation, particularly those working with children. The First Defendant has no connection or liaison or relationship with the Sports Councils, other NGBs or international gymnastics organisations. The First Defendant's talent pathway stops when, as Mr Adams states in evidence, gymnasts become ‘too good’ for the First Defendant — when they then have to join the Claimant in order to compete at the top levels, including internationally. This is not conducive to a finding that the First Defendant is an NGB.”
The Defendants challenge this finding. Recognising the difficulty of challenging a finding of fact in...
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