Burges Salmon LLP - UK
British Amateur Gymnastics Association v UK Gymnastics Ltd & Ors  EWHC 1678 (IPEC) provides a helpful overview of the legal principles of infringement and serves as a reminder that stylised marks, even for arguably descriptive terms, can provide an efficient tool for owners to enforce their rights, particularly if it can be shown that the marks have acquired distinctive character.
The judgment also highlights the pivotal role played by the characterisation of the notional average consumer of the goods and services at issue when assessing the similarity of marks. Brands must consider how their actions will be perceived by all of their consumers, particularly those who are likely to be the least attentive.
The British Amateur Gymnastics Association is the national governing body for gymnastics in the United Kingdom. It is the owner of UK trademark registrations for BRITISH GYMNASTICS and BRITISH GYMNASTICS, MORE THAN A SPORT (see Figure 1) covering various goods and services, including gymnastics and sporting articles in Class 28 and sporting activities and education services in Class 41.
Figure 1. British Gymnastics’s marks
UK Gymnastics (comprising two UK Gymnastics companies and their sole director, Christopher Adams), operating under the name UK Gymnastics and the figurative signs below, offered and provided membership services, competitions, courses, assessments and educational services to coaches and gymnasts.
Figure 2. UK Gymnastics’s signs
In addition to the stylised representations of the UK Gymnastics’s signs (see Figure 2), UK Gymnastics had used the sign UK GYMNASTICS in word format on its website, proficiency badges, coaching certificates and policy documents.
British Gymnastics’s infringement claim relied on Sections 10(2) (likelihood of confusion) and 10(3) (unfair advantage and detriment to distinctive character and reputation) of the Trademarks Act 1994. British Gymnastics also claimed that the signs used by UK Gymnastics amounted to passing off.
Likelihood of confusion – Section 10(2)
The services offered by UK Gymnastics were found to be identical to British Gymnastics’s registered rights for sporting activities and education services in Class 41 and similar to its Class 28 gymnastics and sporting article goods.
When comparing the marks and signs at issue, the judge found the dominant aspect of the British Gymnastics’s trademarks to be the wording and was of the view that, assessed globally, UK Gymnastics’s word sign UK GYMNASTICS shared a medium degree of similarity with British Gymnastics’s marks. While there was a low level of visual and aural similarity, the signs were found to share a high level of conceptual similarity on the basis that the elements ‘UK’ and ‘BRITISH’ referenced similar geographical areas and that use of these terms signified a formal or official status.
With regard to UK Gymnastics’s figurative signs, the heightened visual differences between these and British Gymnastics’s marks were considered to render the degree of similarity to be low overall, although the judge found that the similarity marginally increased in respect of the coloured version of British Gymnastics’s marks.
With regard to the high distinctive character of British Gymnastics’s marks (a point surprisingly accepted without dispute by UK Gymnastics), the lower degree of attention paid by the average consumer – that is, child gymnasts, their parents and spectators at sporting events (again a point not refuted by UK Gymnastics) – and the fact that a lesser degree of similarity between the marks could be offset by a greater degree of similarity between the goods or services led the judge to conclude that consumers encountering UK Gymnastics’s word sign would mistakenly take it for the only national governing body for gymnastics in the United Kingdom (ie, British Gymnastics). This would result in a likelihood of confusion pursuant to Section 10(2).
Detriment to distinctive character or repute – Section 10(3)
In the event that the judge was incorrect in her finding of likelihood of confusion, she was nonetheless satisfied that the degree of similarity between British Gymnastics’s marks and UK Gymnastics’s signs, in addition to the enhanced distinctive character and reputation acquired by British Gymnastics in the United Kingdom, was sufficient to find that the relevant public would make a connection or establish a link between the respective marks and signs.
As the sole-recognised national governing body for gymnastics in the United Kingdom, the judge considered British Gymnastics to hold a “position of considerable responsibility in relation to the sport and the public”. Where the use of UK Gymnastics’s signs gave rise to a link between UK Gymnastics’s services and British Gymnastics in the mind of the public, the public could therefore legitimately expect UK Gymnastics’s services to be of a similar quality, safety and scrutiny as comparable services offered by British Gymnastics. The judge concluded that this was not the case, meaning that there was a serious risk that UK Gymnastics’s use of the signs would be detrimental to the distinctive character and reputation of British Gymnastics’s marks.
The judge considered the evidence (in particular, UK Gymnastics’s near identical copy of British Gymnastics’s proficiency badges, closely styled documents, identical wording used on both websites and the inclusion of British Gymnastics’s member clubs on the ‘Find a Club’ function of the UK Gymnastics website) to show that it was more likely than not that UK Gymnastics’s use of the signs was intended to, and did, take unfair advantage of the distinctive character and repute of British Gymnastics’s marks, in order to drive further business to UK Gymnastics for its economic advantage, thus changing the economic behaviour of the average consumer. UK Gymnastics was found to be acting without due cause and its use infringed British Gymnastics’s marks under Section 10(3).
The judge swiftly concluded that it was beyond dispute that UK Gymnastics had misrepresented itself as an national governing body for gymnastics through its use of the disputed signs and express statements on its website and, given her findings on infringement under Sections 10(2) and 10(3), the relevant public would believe, on seeing UK Gymnastics’s signs, that there was a link between UK Gymnastics and British Gymnastics. Therefore, British Gymnastics was likely to suffer damage to its goodwill.
At first blush, one would assume that British Gymnastics would face an uphill battle in enforcing its rights to prevent third parties from using the word ‘gymnastics’ with a geographical component, where this is arguably descriptive of the location and services provided. However, UK Gymnastics’s express and implied claims of being a national governing body and the evidence showing its use of imagery and wording identical or similar to that used by British Gymnastics on its website and documentation, in combination with the characterisation of the perception of the average consumer, ultimately served to undermine UK Gymnastics’s defence that its signs were descriptive or suggestive of its services and that it had taken steps to distance itself from British Gymnastics.