A recent UK Court of Appeal case has highlighted the importance of assessing the conceptual similarity of marks and not just their aural and visual similarities, when considering a potential trade mark infringement.
The UK Court of Appeal was hearing an appeal from a decision of the Intellectual Property Enterprise Court concerning a claim by the British Amateur Gymnastics Association (“BAGA”) against UK Gymnastics and UK Gymnastics Affiliation (together “UKG”) for trade mark infringement and passing off. BAGA is a not for profit private company and recognised as the national governing body for the sport of gymnastics in the UK. UKG is a gymnastics sporting body that provides: membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and badge/certification programmes among other services.
At first instance, HHJ Melissa Clarke found UKG liable for infringement of BAGA’s trade marks and passing off. UKG were granted permission to appeal on limited grounds which are listed below.
Passing off as a National Governing Body
UKG had previously tried to market itself as a “UK governing body for the sport of gymnastics” and had not been successful at first instance. In the appeal, the Court dismissed UKG’s argument that it was a governing body and determined they were not such an authority under the Sports Council Recognition Policy 2017 and found there was no evidence of the governance of the sport of gymnastics by UKG anywhere, let alone in the UK. Thus finding that the judge at first instanced had been correct in her analysis and dismissing this ground of appeal.
Passing off as connected with BAGA
On the second ground, BAGA alleged passing off by UKG in three ways and that members of the public would believe that UKG:
i) was engaged in some form of commercial arrangement with BAGA to provide its services;
ii) were connected with BAGA in such a way as to cause damage to BAGA’s goodwill; and/or
iii) had a particular status conferred upon them by BAGA.
The judge at first instance had found that BAGA had succeeded on all three items but UKG appealed in relation to the finding on the third item and was successful. The corresponding injunction on this ground was set aside. It was determined by the Court of Appeal that the judge had decided the wrong issue on this third ground and found UKG liable for passing off on the wrong basis.
At first instance the judge granted an injunction against UKG which restrained them from “denoting some form of official or approved status upon themselves or otherwise asserting to be a NGB contrary to fact”. UKG appealed against the last part of the injunction and won, on the basis that the injunction was unclear and ungrammatical, that it extended beyond BAGA’s pleaded case and that the injunction had been uncertain in scope given that there was no clear definition of NGB.
BAGA’s Trade Marks and UKG’s Signs comparison
The fourth ground considered a comparison of UKG’s signs and BAGA’s marks. Despite UKG’s argument that the ‘UK’ was the dominant part of the UKG’s signs and a distinguishing feature from the BAGA’s marks, the judges at first instance and at the Court of Appeal found a medium degree of similarity between the word sign “UK Gymnastics” and the marks including the predominant “British Gymnastics”. A conceptual similarity was found between the word sign and the marks based on:
- the references to the UK and British being references to similar geographical areas;
- the connotation of some sort of formal or official status to the services being provided that those words ‘UK’ and ‘British’ give; and
- the use of red and blue increasing the sense of ‘Britishness’ about the marks and signs.
However, the visual and aural similarity between the logo signs and the marks was considered to be low, concerning the whole “UK Gymnastics” and “British Gymnastics”. In particular the visual differences between the marks and the signs including the different fonts and lower/upper casing being used and the aural sounding of British versus UK.
Ground 5 – Likelihood of Confusion
The judge determined that there was a likelihood of confusion particularly given that the audience for gymnastics would typically pay a lower degree of attention i.e. child gymnasts, their parents and spectators at sporting events. These audience members would take the signs mistakenly for that of BAGA. Other factors that the court considered that helped determine a likelihood of confusion included:
- the similarity/identicality of the services and goods for which the marks are registered;
- the use of identical colours and/or the inclusion of parts of the Union Jack; and
- the enhanced distinctiveness of the marks as a result of their use by BAGA as the national governing body for the UK for gymnastics.
At first instance the judge had made an alternative conclusion in relation to section 10(3) of the Trade Marks Act 1994 (use of a sign which is identical with or similar to the trade mark) but at the Court of Appeal the judge did not find it necessary to consider ground six given the conclusions already reached on likelihood of confusion (ground five) and the trade mark and signs comparison (ground four).
The case stands as a prominent reminder that trade mark protection can be enforced by an overall impression of a mark rather than just its visual or aural perception. Immediately obvious visual and aural differences that can be drawn between marks may not be substantial enough to prevent a finding of infringement particularly when the conceptuality and overall impression of the marks is considered.
The case also highlights the importance of marketing and whether a company is claiming to be something it is not, particularly when another company already owns that space, as this provides an easy line of argument on passing off.