In a recent case before the Intellectual Property Enterprise Court (a division of the High Court which specialises in Intellectual Property claims) the judge found that UK registered trade marks for "British Gymnastics, More than a sport" and "British Gymnastics" (The Trade Marks) (shown on the left hand side of the image below), owned by the British Amateur Gymnastics Association, the UK's national governing body (NGB) for gymnastics, were infringed by the defendants.
The defendants trade as ‘UK Gymnastics' under the Signs shown in the image on the right providing membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and/or badge/certificate programmes; and/or educational services to coaches. The judge found that the defendants' use of these Signs infringed the Trade Marks pursuant to sections 10(2) and 10(3) of the Trade Marks Act 1994 and also amounted to passing off.
A trade mark that is descriptive of the goods or services supplied is only protectable as a registered trade mark where it has acquired a distinctive meaning through its use. In this case the relatively simple British Gymnastics marks had been used by the claimant for so many years to identify the only NGB for the sport of gymnastics in the UK that they had acquired an enhanced distinctive character; a fact that was admitted by the defendants.
It is often more challenging to enforce a descriptive trade mark than a unique and meaningless mark. For example the claimant would not be able to prevent a third party providing gymnastic coaching services using the term ‘Gymnastics' descriptively – there is clearly a legitimate reason for the similarity in the marks. However in this instance, considering in particular the word Sign ‘UK Gymnastics', the judge ruled that although the difference between UK and British would be noted visually, the conceptual similarity was very strong because: (i) ‘UK' and ‘British' are references to similar geographical areas which the public often confuse/use interchangeably and (ii) because of the connotation of a formal or official status to the services provided that the words ‘UK' and ‘British' give. The defendants' logo Signs were also found to be similar, in particular to the coloured Trade Marks (albeit to a lesser extent than the similarity of the word sign).
Taking all circumstances into account, the judge was satisfied that there was a ‘likelihood of confusion' such that child gymnasts, their parents and spectators at sporting events who saw the defendants' signs would mistake them for those of the claimant, the only NGB for gymnastics in the UK.
The judge noted that if she was wrong about likelihood of confusion, she was nonetheless satisfied that the degree of similarity between the Trade Marks and the Signs, plus the enhanced distinctiveness of the Trade Marks, and their reputation was sufficient for the necessary ‘link' between the parties to be made in the mind of the relevant public, and therefore also found for the claimant pursuant to s10(3) Trade Marks Act.
The claimant's position as the sole, recognised NGB for gymnastics means that it is in a position of considerable responsibility in relation to the sport and the public and that it adheres to and adopts the most stringent forms of regulation and governance. There was therefore a serious risk that use of the Signs would be detrimental to the distinctive character and reputation of the Trade Marks as the defendants' services were not provided to a similar quality, safety and scrutiny as comparable services offered by the claimant.
The defendants' attempts to explain that they wanted to distance themselves from the claimant as much as possible was undermined by the evidence before the Court. This included:
- the proficiency badges and use of a ‘swirl' motif on the UK Gymnastics' website and documents which were very similar to those of and used by the claimant;
- the inclusion on the UK Gymnastics website of BBC footage from the claimant's events;
- the inclusion of the claimant's member clubs on the ‘Find a Club' function on the UK Gymnastics' website.
This lead the judge to conclude that the use of the Signs by the defendants was intended to and did take unfair advantage of the distinctive character and repute of the Trade Marks, attempting to drive further business to the first defendant for its economic advantage.
Comment: This case involved considerable discussion over the status of an NGB, including emphasis being correctly made on the important role that a NGB plays in protecting the standards of its sport and accordingly the considerable responsibility placed on the British Amateur Gymnastics Association as the sole recognised NGB for gymnastics in the UK. The claimant's Trade Marks and therefore their protection are critical to maintaining this clear identity to ensure that the public knows who the NGB is, and who to come to for issues of health and safety and safeguarding.
This decision, although not legally ground breaking, is an important example of the power of registered trade mark rights for maintaining a brand, or in this case a NGB's clear identity, and protecting it from encroachment by third parties.
British Amateur Gymnastics Association v UK Gymnastics Ltd & Ors  EWHC 1678 (IPEC) (26 June 2020)
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