In June 2020, the Intellectual Property Enterprise Court (IPEC) found trade mark infringement and passing off in favour of the British Amateur Gymnastics Association (BAGA), the National Governing Body (NGB) for UK amateur gymnastics. The claim was brought against Defendants offering services to gymnasts, including putting on competitions, under the sign 'UK Gymnastics' (UKG). The case involved a consideration of UKG's use of the sign 'UK Gymnastics' and also of its logos, and associated get-up (including the use of identical colours).
Claimant's Trade Marks
UKG had argued that it was an alternative national governing body, though the IPEC was satisfied that BAGA was the only NGB for gymnastics, and the only one recognised by the relevant authorities. Whilst there was little evidence of actual confusion, the Court found a likelihood of confusion was made out. Those categories of the average consumer who would pay a lower degree of attention – child gymnasts, their parents and spectators at sporting events – who saw UKG's word sign and logos would mistakenly take them for that of the only NGB for UK gymnastics, because there was only one such body. As part of the overall assessment, the Court found that the services were identical or highly similar; there was a medium degree of similarity between BAGA's marks and UKG's word sign (and a low degree of similarity for the logos); and BAGA's marks were highly distinctive. The IPEC also found trade mark infringement on the basis of detriment to the distinctive character and reputation of the marks, and the taking of unfair advantage, as well as passing off.
The dispute has now been determined by the Court of Appeal, following UKG's appeal against the decision. The five grounds considered by the Court were that: i) UKG was a NGB, and the judge was wrong to decide otherwise; ii) the judge fell into error by finding BAGA's third claim for passing off established (namely relating to a representation that UKG had NGB status); iii) the injunction ordered by the judge lacked clarity; iv) the judgment was inconsistent with respect to the assessment of similarity between BAGA's trade mark and UKG's word sign on the one hand (where the judge had found a medium degree of similarity), and the logos on the other (where the judge had found a low degree of similarity); and v) the judge was wrong to find a likelihood of confusion. The Court of Appeal dismissed the appeal, save for grounds ii) and iii), which led to part of the injunction being set aside. Two key points are worth noting in the Court of Appeal's judgment.
Clarity of injunction wording
The judge had granted an injunction against UKG, which restrained it from doing the following acts (emphasis added):
"otherwise pass off any business or goods or services as being the business or goods or services of the Claimant or otherwise associated or connected with the Claimant or otherwise the subject of some commercial arrangement involving the Claimant or otherwise denoting some form of official or approved status upon the Defendants or otherwise asserting to be a National Governing Body contrary to fact".
UKG argued that the last two parts of the injunction should be set aside, since these parts of the injunction extended beyond BAGA's pleaded case, and the wording was ungrammatical and unclear, contrary to the well-established principle that injunctions must be clear as to what the enjoined party can and cannot do. In the absence of a definition of NGB, the scope of the last part of the injunction was uncertain. Counsel for BAGA had 'no real answer' to these points, and Arnold LJ said this part of the injunction should be set aside.
Likelihood of confusion
UKG argued that the judge was wrong to find a likelihood of confusion. It claimed that the judge's conclusion was contradicted by her finding that BAGA had only proved one instance of actual confusion and her acceptance that UKG was not aware of any actual confusion. UKG also argued that one incident of actual confusion was not sufficient given that UKG had run in parallel with BAGA since 2012/2013. However, as has been iterated in many previous cases, it is not necessary to find actual confusion in order for a likelihood of confusion to be established. Whilst the absence of actual confusion may be a more relevant factor the longer the period of parallel trading, the court will also consider the opportunity for confusion to occur and to be detected. Here, whilst UKG had been operating since 2012/13, the judge was entitled to conclude that the small scale of its operations meant that it was very possible that instances of confusion had been 'masked' or not come to BAGA's attention.
The IPEC's decision is an example of a case where the Court found trade mark infringement (and passing off) despite finding there was a low level of aural and visual similarity between the competing marks/signs (albeit with strong conceptual similarity), and also that there was a low similarity between the logos as a whole. The other relevant factors in the likelihood of confusion assessment – and the low degree of attention adopted by relevant consumers - meant that the Court was satisfied that trade mark infringement was made out.