High Court rules in favour of claimant in boxing trademark dispute

In Boxing Brands Ltd v Sports Direct International plc ([2013] EWHC 2200 (Ch), July 25 2013), Mr Justice Birss has found in favour of Boxing Brands Ltd, a company associated with the boxing promoter Frank Warren, in a dispute which, at its core, concerned which of the parties was entitled to use the mark QUEENSBERRY in respect of clothing.

Both sides had registered a variety of trademarks featuring the word 'Queensberry' for "all sorts of goods and services" and claimed the right to use the mark in respect of clothing. Birss J held that Boxing Brands’ UK trademark for QUEENSBERRY, which predates the defendants' applications for the same, was valid and would be infringed by the sale of clothing bearing that mark by the defendants (all associated with the sporting retail company Sports Direct). However, Boxing Brands was required to amend the specifications of certain other QUEENSBERRY marks in respect of goods and services where Birss J found that the defendants had priority and that Boxing Brands' subsequent marks would give rise to a likelihood of confusion.

In 2004 Mr La Mura and Mr Goodwin opened a boxing gym in Bedford known as 'Queensberry'. The rights in this name were assigned and/or subsequently licensed to the defendants in this action. 'Queensberry' featured on various items of clothing produced in connection with the gym. Independently, Boxing Brands sought to launch a clothing brand under the trademark QUEENSBERRY and successfully applied for UK registered trademark No 2,485,784, which consists of a series of word marks, on May 8 2008 for goods in Class 25 ("articles of clothing, footwear, headgear") and various services in Classes 35, 41 and 42 of the Nice Classification (the 784 mark).

The parties were known to each other and had discussed the possibility of combining their interests in QUEENSBERRY to develop a clothing brand, but ultimately this did not come to fruition. In November 2012 Boxing Brands became aware that a range of clothing branded QUEENSBERRY was being launched by Sports Direct. Subsequently, Boxing Brands applied for, and obtained, an interim injunction against Sports Direct. As part of the order, both sides undertook not to market goods under the disputed marks until the rightful owners were established.

Sports Direct argued that the sale of QUEENSBERRY-branded clothing before the priority date of the 784 mark rendered Boxing Brands' 784 mark invalid under Section 5(4)(a) of the Trademarks Act 1994, as the application could have been successfully opposed by the defendants under the law of passing off. Sports Direct relied on the sale of t-shirts by La Mura and Goodwin which featured the word 'Queensberry' on a plain background, and the use of a logo featuring the words 'Queensberry Boxing.com' on polo shirts worn by "boxing corner men" at some televised fights. Sports Direct also contended that Boxing Brands' 784 mark was invalid under Section 3(6) of the act, on the basis that the mark had been applied for in bad faith. 

Sports Direct counterclaimed that Boxing Brands' use of the QUEENSBERRY mark amounted to an attempt to pass themselves off as being associated with Sports Direct. The validity of a number of Boxing Brands' other marks was also attacked. The defendants relied on their earlier UK trademark No 2,491,149 (the 149 mark), which consisted of the words 'Queensberry 1867 Boxing' arranged inside a rectangle, applied for on June 26 2008 for, amongst other things, goods in Class 16 and services in Classes 35 and 41, including "provision of training for sports… provision of sporting and cultural activities". Sports Direct contended that Boxing Brands' later marks, the UK word mark QUEENSBERRY, the Community word mark QUEENSBERRY and the UK word mark QUEENSBERRY RULES, were invalid under Section 5(2) of the Act, based on a likelihood of confusion, and under Articles 53(1)(a) and 8(1) of the Community Trademark Regulation (207/2009), insofar as they related to the goods in Classes 16 and 18 (including sports bags, athletic bags) and Class 28 (including gymnastic and sporting articles, equipment and apparatus, sporting articles for use in boxing, gymnastics; balls for use in sports; sports bags). 

Birss J first considered whether use of the 784 mark on clothing would amount to passing off. On reviewing the defendants’ activities under the mark QUEENSBERRY prior to the application date of the 784 mark, Birss J found that the defendants had goodwill in their business activities under the mark to the extent that these were the operation of a gym in the Bedford region but that these rights did not extend any further. He found that the Queensberry t-shirts had only been "sold to persons associated with the gym", namely "friends of Mr La Mura or Mr Goodwin or perhaps friends of friends", as opposed to members of the public. The defendants had no goodwill as a boxing agency and no goodwill in or relating to clothing.

Birss J accepted that, even if the owner of a protectable goodwill had not generated any goodwill outside the sphere of his business, it was possible that usage outside that field could lead to passing off (see Lego Systems A/S v Lego M Lemelstrich Ltd ([1983] FSR 155)). The question in this case was whether the rights La Mura and Goodwin had in May 2008 could have restrained the sale of QUEENSBERRY-branded clothing in May 2008; on the evidence, the answer was no. The goodwill was minimal and was focused on the gym and, at best, a boxing team or stable. In his opinion, "no-one would be likely to be deceived by seeing an item of clothing branded QUEENSBERRY".     

Birss J then considered whether the 784 mark had been applied for in bad faith. He found that, prior to May 2008, Warren was aware that La Mura and Goodwin were using the name Queensberry as a name of a gym and/or a boxing team. This alone, however, was not enough to establish that the 784 mark had been applied for in bad faith under Section 3(6) of the Act. The test under Section 3(6) was summarised by Lindsay J in Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd ([1999] RPC 367) as being conduct involving dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined. In the opinion of Birss J, "the application for the 784 mark was entirely acceptable commercial behaviour"; whether Warren might have thought that there might be a risk that in future that La Mura and Goodwin might diversify into clothing was immaterial as Warren had the idea of using the mark as a clothing mark independently of La Mura and Goodwin, who were not using it as such at the time.

The defendants counterclaimed that any use of QUEENSBERRY in relation to clothing by the claimant would amount to passing off on the basis that the second defendant, being the successor in title to whatever goodwill was generated by La Mura and Goodwin, was the owner of goodwill associated with QUEENSBERRY relating to, amongst other things, "clothing, footwear, and headgear". Birss J found that, even assuming in the defendants favour that the goodwill associated with the Bedford gym continued to this day, it remained the case that the goodwill associated with the gym did not relate to clothing or to the sale of any other related articles. In the opinion of the judge:

"no-one seeing clothing or sports equipment sold by the claimant or its licensees would be likely to consider those goods had anything to do with the gym in Bedford or with the other activities relied on by the defendants".

With regard to the ground of attack under Section 5(2) on the validity of Boxing Brands' other QUEENSBERRY marks and the QUEENSBERRY RULES mark, Birss J found that they covered similar goods and services as the defendants’ 149 mark. On a global assessment, he considered that this would give rise to a likelihood of confusion in respect of the QUEENSBERRY marks. The attack on the QUEENSBERRY RULES mark was rejected, however, as the word 'rules' was sufficient to tip the balance. The Section 5(2) ground was made out for the goods in Classes 16, 18 and 28 registered in relation to Boxing Brands' QUEENSBERRY Community word mark and QUEENSBERRY UK trademark; therefore the specifications of these marks must be amended to remove those goods.

Both parties entered this litigation with the aim of securing the rights necessary to develop a brand of clothing under the mark QUEENSBERRY. This case turned on a complex set of facts and is of interest in respect of the approach taken to assessing the scope of the defendants’ goodwill and the analysis of bad faith. Although Boxing Brands prevailed, the successful attacks on a number of its marks could see the parties clash again as each develops its QUEENSBERRY marks as demarcated by Birss J.    

Leigh J Smith, McDermott Will & Emery UK LLP, London