High Court cracks down on costs in boxing trademark dispute
In the latest round between Boxing Brands Ltd (BBL), a company associated with the high-profile boxing promoter Frank Warren, and the defendants, all companies connected to the retailer Sports Direct, the High Court has found that the use of the defendants’ QUEENSBERRY device mark on the majority of their sports equipment infringed BBL’s prior marks and ordered an injunction restraining their infringement. Birss J also refused to order an inquiry on the cross-undertaking given by BBL on the basis that he did not accept that the defendants ever intended to sell the non-infringing items as a stand-alone range (Boxing Brands Limited v Sports Direct International Plc ( EWHC 91 (Ch))).
BBL is the proprietor of UK and Community trademarks for QUEENSBERRY and QUEENSBERRY RULES. One of the defendants owned applications and registrations containing QUEENSBERRY. The remaining parties were involved in marketing and selling sportswear and equipment bearing that mark. Since 2008, the parties have been sparring over the QUEENSBERRY trademarks.
In December 2012 BBL succeeded in obtaining an interim injunction against the defendants. Under the terms of the order, the defendants undertook not to launch their Queensberry product range until determination of the issue at trial and BBL, in return, gave a cross-undertaking in damages.
At trial, the court found that BBL’s UK mark QUEENSBERRY for various goods, including clothing, footwear and headgear, was valid and that the defendants’ sale of clothing bearing the mark would constitute infringement. Conversely, Birss J ruled that two later QUEENSBERRY marks registered by BBL were invalid based on their similarity to the defendants’ earlier figurative mark comprising 'Queensberry Boxing 1867' which resulted in a likelihood of confusion.
Much to Birss J’s annoyance, it subsequently emerged that the original trial had not addressed all of the issues necessary to resolve the dispute in its entirety. The two outstanding issues were:
- whether the defendants’ Queensberry sports equipment range infringed BBL’s marks; and
- whether the defendants were entitled to an inquiry on the cross-undertaking of damages, on the basis that the interim injunction had restricted sales of goods other than clothing, which might not have been infringing items and consequently restrained incorrectly.
The defendants served a revised schedule of boxing equipment that they had sold or were intending to sell. Each item was considered by the judge against BBL’s marks. BBL contended that the defendants’ use of the device and its use on the goods listed in the revised schedule were identical to those goods for which BBL’s mark was protected.
With regard to double identity, Birss J found that, although the word 'Queensberry' formed a very prominent element both visually and conceptually, the device also included other elements and was not identical to BBL’s word mark QUEENSBERRY. The judge found that the varying font size of the word, as well as the crown, shield and lions were all visually and conceptually significant, unlike the date “est 1867” which was too diminutive to be important.
Birss J accepted that the defendants used the word 'Queensberry' freestanding from the device in relation to the sports equipment, for example, on their website to refer to goods branded with the device. On this basis, if the goods were sold by the defendants, their use of the word alone would have been identical to BBL’s QUEENSBERRY word mark.
However, Birss J found that there was no overlap between some of defendants’ goods, such as head guards, boxing gloves and jab pads, which fell into Class 28 (sporting articles) and the goods in Class 25 (article of clothing, footwear and headgear) for which BBL’s QUEENSBERRY mark was protected. On this basis, no double identity was found in relation to those goods.
With regard to likelihood of confusion, Birss J found that the use of the word 'Queensberry' alone in connection with specific boxing equipment created a likelihood of confusion, due to the similarity of the parties’ goods and the defendants’ intention to co-brand and sell their products through the same retail channels as the clothing.
Further, when considering the defendants’ device, the word 'Queensberry' was found to lack a high degree of distinctiveness in the realm of boxing and had not acquired this through use. Nonetheless it formed a very prominent part of the device. On this basis, and due to the similarity of the goods, there was a likelihood of confusion between the device and BBL’s QUEENSBERRY marks.
Upon consideration of the boxing specific bags, these were found to be similar to goods in Class 25, as the bags would be used to carry such items. The bags were to be sold through Sports Direct and/or Lillywhites shops and websites which also intended to sell clothing, and probably footwear and headgear within Class 25, all to be branded in the same manner in order to build the QUEENSBERRY brand. As such, the defendants’ use of the word 'Queensberry' or their device in connection with a boxing specific bag created a likelihood of confusion with BBL’s QUEENSBERRY word mark registered in Class 25.
As regards BBL’s QUEENSBERRY RULES mark, Birss J found no infringement under either head due to the differences between the marks in question. Accordingly, the court ordered an injunction in general terms to restrain the defendants from infringing BBL’s QUEENSBERRY mark.
Birss J refused to order an inquiry on BBL’s cross-undertaking, as he was not satisfied that the defendants ever intended to launch boxing equipment as a product range without the clothing range or a range of only non-infringing goods. As such, no real loss was suffered as a result of the interim injunction and an inquiry into damages would be “not worth the candle”. He also noted that, had he found that all or substantially all of the defendants’ boxing equipment range had not infringed BBL’s rights, he may have been more minded to order an inquiry.
It is interesting to note Birss J’s refusal in granting an inquiry into BBL’s cross-undertaking on the basis that the defendants did not intend to sell the non-infringing products as a freestanding range. This decision follows the recent trend by the judiciary to crack down on costs and promote the efficient conduct of litigation. Despite certain non-infringing items being restrained by the interim injunction, the judge assessed the proportionality of an inquiry by comparing the likely costs incurred against the loss suffered. It is also likely that this fight had gone long enough and Birss J decided this hearing would be the final round.
Kavita Mehta, McDermott Will & Emery UK LLP, London
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