England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT

		Rolls Building 7 Rolls Buildings Fetter Lane London EC4A 1NL
		28/01/2014

Mr Justice Birss :

1. This is a further hearing in the trade mark case about the mark QUEENSBERRY between the claimant (BBL) a company associated with Mr Frank Warren the well known boxing promoter and the defendants, who are all associated with Sports Direct, the well known retailer. I heard the trial in this action in July 2013 and gave judgment on 25^th July 2013 ([2013] EWHC 2200 (Ch)). The major issue at trial was about the rights to QUEENSBERRY as a clothing brand. On that I found for BBL. However I also found that two BBL trade marks (UK mark 2,499,451 and CTM 7,376,395) were partially invalid.
2. The hearing to determine the consequences of the judgment took place on 30^th July 2013. At this stage it emerged that the trial had not addressed all the issues which needed to be resolved in order to decide this dispute as a whole. In particular although the trial had resolved the question of whether the defendants' QUEENSBERRY branded clothing infringed a valid trade mark, the trial had not addressed whether the defendant's QUEENSBERRY sports equipment infringed the claimant's trade mark rights.
3. One question was whether the court should order an inquiry in the defendants' favour on the cross-undertaking given by the claimant in support of the interim injunction granted at the outset. The interim injunction restrained sales of more goods than clothing. If some of the defendants' goods which were restrained did not in fact infringe then the defendants may be entitled to an inquiry. Another question was the proper scope of an injunction to restrain trade mark infringement following the finding that the defendants' clothing did infringe.
4. Each side blamed the other for the predicament. I gave directions for a further hearing to take place to decide those further issues. My judgment on 30^th July 2013 ([2013] EWHC 2784 (Ch)) addressed the scope of the injunction. The full scope of the relief to which the claimant may be entitled was adjourned to this further hearing.
5. In accordance with the directions given on 30^th July, the defendants served a Schedule of Boxing Equipment to identify the equipment they had sold or were intending to sell. The Schedule was amended twice before the hearing. The parties exchanged statements of case, the claimant contending that the various kinds of equipment infringed its various marks, the defendants denying that. The marks relied on by the claimant are:

UK registered trade mark 2,486,784 for QUEENSBERRY,

UK registered trade mark 2,499,451 for QUEENSBERRY,

Community trade mark 7,376,395 for QUEENSBERRY,

UK registered trade mark 2,493,623 for QUEENSBERRY RULES,

UK registered trade mark 2,499,454 for QUEENSBERRY RULES.

6. The full specifications of these marks are set out in the schedule to the main judgment.
7. The form of the sign used by the defendants on the equipment which is alleged to infringe is:

8. BBL's statement of case included allegations that the defendants' goods infringed parts of the specifications which I had held were invalid. The defendants objected to this but the objection is unfounded. If the points had properly emerged during the proceedings as they ought to have done then I would have considered them. BBL may seek permission to appeal the findings of invalidity. Clearly if I find that a particular item of equipment infringes but only based on an invalid part of the specification then no final relief should be granted.
9. BBL's statement of case also included allegations of infringement of parts of its registrations which had not been in issue before. I reject the defendants' argument that BBL is estopped from doing this. Alleging infringement of new elements of the specification was legitimate because it arose from the knowledge of precisely what sorts of goods other than clothing the defendants were relying on.
10. The defendants alleged that these newly relied on parts of the relevant trade mark (395) were invalid. BBL objected to this, contending that the defendants could and should have raised this at trial and also that the court had on 30^th July 2013, made binding declarations as to the validity of the marks in the form accepted at that point. I reject the claimant's objection. If the point had emerged properly during the proceedings as it ought to have done then these issues would have been addressed. A key element of the claimant's case now is that certain goods are identical with or similar to other goods in the specifications. This argument had not been advanced before. It is a material change in the circumstances. It would be unjust to prevent the defendants from arguing the validity case arising as a result. If it means the declaratory relief needs to be changed, then that would be a just result given the change in circumstances.
11. I have not addressed yet which side is to blame for this situation. I think both sides bear responsibility for it and the fair outcome in that case is a decision on the merits, as I shall explain. From 10^th December 2012 each side had the benefit of an undertaking or order preventing their opponent from selling QUEENSBERRY branded goods other than clothing.
12. BBL has always known or ought to have known that the defendants intended to sell goods other than clothing. The terms of the interim injunction bear that out. If it did not know the details of those goods, it could and should have asked. I rather think BBL's analysis was that it decided not to ask because it thought it was in a better position not asking than it would have been if it had asked and been told and then had to do something about it.
13. On the other hand although the defendants knew that BBL must be aware that more goods than clothing were relevant, they also knew or ought to have known that they had not disclosed full details of the goods which they were interested in to BBL. Just as the claimant ought to have asked, so the defendants ought to have at least asked the claimant to clarify its position about whether any other goods were said to infringe. If they had asked this question the response from BBL would have been a request for full details of what the other goods were. The defendants knew or ought to have known that BBL was unlikely to have sufficient information to answer the question otherwise.
14. It seems to have suited each side to stay in a state of ignorance, in order to blame the other side for the ignorance and perhaps win the issue by default at trial. If BBL won then it would seek an injunction in general terms and argue it covered all sorts of other things (just as it did argue on 30^th July). From the defendants' standpoint, unless the claimant advanced a case that other goods infringed, they would seek an enquiry on the cross-undertaking even if they lost on clothing (just as they did on 30^th July).
15. Perhaps I have attributed too much subtlety to the parties' approaches in this litigation but the alternative explanation, that this situation arose through inadvertence, is no more meritorious. If the problem has arisen through inadvertence on the part of one or both sides then that party will suffer no detriment in resolving the issues now on their merits.
16. The fair result, when each side might have won the point by default through a failure to engage properly with the issues, is to decide the point on the merits.

The further hearing

17. The hearing took place before me on 25^th November 2013.
18. The defendants had served two further witness statements for the further hearing: of Xavier Cuadrado and Ian Campbell. Mr Cuadrado is director of product engineering at Everlast Worldwide Inc., a specialist manufacturer of boxing equipment. He explained the specialist nature of boxing equipment and addressed various items in detail. He was not cross-examined. Mr Campbell is employed by Sports Direct as the general manager of the Lonsdale brand. He had provided witness statements at the outset relating to the interim injunction application and had given evidence at the trial. His latest witness statement dealt with the defendants' Schedule of Boxing Equipment. He was cross-examined. Counsel did not criticise his evidence. He gave it fairly.
19. In essence the court's task on this occasion is to work through the list of boxing equipment and decide whether each item infringes the claimant's trade mark rights. The claimant relies on infringement under section 10(1)/Article 9(1)(a) [double identity] and pursuant to section 10(2)/Article 9(a)(b) [likelihood of confusion].
20. Before embarking on the detailed task there are some points which can be addressed generally.

Average consumer

21. The defendants described the equipment as high end, specialist equipment and relied on Mr Cuadrado's evidence that safety and performance considerations make boxing equipment a very specialist product area. For many of the goods there are complex technical considerations. The average consumer will be an amateur or professional boxer and maybe a trainer. I accept these submissions for most of the goods but not for sports/kit bags, which are general consumer items. The average consumer of the specialist equipment will pay close attention to the technical qualities of what is being bought but I am not convinced this means they will pay any more or less attention to the brand under which they are sold than would a general consumer.

The word QUEENSBERRY

22. The key common element between BBL's marks and the defendants' goods is the word QUEENSBERRY. In the main judgment I held (paragraph 145) that the word, when connected with boxing, does not have a high degree of inherent distinctiveness. In making that finding I was accepting a submission of BBL. In this judgment I am not asked to nor would I be prepared to revisit that finding.
23. The defendants pointed out that there has been no use of the marks relied on to support an argument for acquired or enhanced distinctiveness. That is correct.

Double identity

24. Two different points arise from BBL's case under section 10(1)/Article 9(1)(a), that is the provisions which require double identity (identical sign and identical goods).
25. The first point is the argument that use of the defendants' device is identical to the word mark QUEENSBERRY. I reject that. The word forms a very prominent aspect of the device but the device has other elements as well. It is not identical (CJEU Case C-291/00 S.A. Société LTJ Diffusion v Sadas Vertbaudet S.A (Arthur et Félicie)).
26. The second point is BBL's argument that the defendants did use or would have used the word alone, separately from the device, in relation to the goods in issue. BBL referred to the use of the word QUEENSBERRY alone on the defendants' website while offering clothing branded with the device in issue; to the use of the word alone in various emails, woven labels, invoices and purchase orders and to the use of the word alone on a base card mock up for a 12 oz boxing glove. The glove is branded with the device but the card claims that the word alone is a trade mark of the defendants. I accept BBL's submission. If the defendants had started selling the various goods in issue, they would have used the word QUEENSBERRY alone in relation to those goods. In that case the use would be of a sign identical to the 784, 451 and 395 marks. It is not a sign identical to QUEENSBERRY RULES.

What goods were the defendants going to sell?

27. In the original Schedule of Boxing Equipment which was served by the defendants divided the goods into three groups: A – "items ordered prior to the injunction", B – "items which the defendants intended to order", and C – "additional items that the defendants envisage ordering in the future". Group C had thirteen kinds of goods in it. The schedule was amended. In the Amended Schedule the name of group C was changed to "Additional items that the defendants intended to order" and the kinds of goods reduced from thirteen to four. Nothing turns on the Re-Amended Schedule.
28. BBL contended that it was entitled to seek quia timet relief in relation to all the goods in the original schedule. The defendants contended that the only relevant goods were those in the Amended (or strictly the Re-amended) Schedule.
29. In cross-examination Mr Campbell was asked about the changes between the Schedules. He thought that goods had been removed because they were not in class 28 and were not boxing equipment but he explained that the lawyers had prepared the schedules. He was not in a position to explain further.
30. I infer that the items in the original Schedule group C are goods which the defendants have actively contemplated launching sometime albeit not necessarily before trial. The fact that some goods are not in class 28, which is the ostensible reason for removing them from the Schedule, does not undermine that conclusion. BBL invites me to grant a general injunction to restrain infringement of the claimant's trade marks. If sale of these goods branded like the others would infringe then sale would be prohibited by the injunction and it makes sense to decide the issue here and now.
31. I will consider all the goods, including all the goods in the original list with two exceptions. The "novelty range" (Item 24) is too vague to be meaningful and "female ranges of the above items" (item 25) do not raise any separate issues. Any female ranges stand or fall with male or unisex ranges of goods.
32. If any of the goods in the Schedule are held not to infringe then the defendants seek an enquiry on the cross-undertaking. However BBL submitted that the real dispute between the parties always was concerned with clothing (which BBL has won) and the defendants never intended to launch a boxing equipment range if they could not launch a clothing range.
33. The defendants pointed out that one could not fairly draw that inference from the fact that consignments of boxing equipment had remained in India and not been imported since the dispute began. I agree that it would not be fair to draw such an inference from the consignment(s) of goods remaining abroad.
34. Nevertheless I am not satisfied that the defendants ever really intended to launch a boxing equipment range as a free standing product range. I infer from the way in which these proceedings have been conducted and from the defendants' stance generally that they regarded the ability to sell QUEENSBERRY clothing as vital. That is what this dispute was about. It was a necessary part of the defendants' commercial plans. The idea of selling equipment without selling clothing has only arisen because the defendants have lost the main trial. I will take this into account when I come to decide whether to order an enquiry on the cross-undertaking.

QUEENSBERRY RULES and the defendants' own QUEENSBERRY BOXING device mark

35. I remind myself that I drew a distinction between BBL's QUEENSBERRY RULES mark (454) and the QUEENSBERRY marks (451 and 395) in relation to the same goods when considering them over the defendants' prior mark 2,491,149 (QUEENSBERRY BOXING 1867 device). That device is:

36. I held that the QUEENSBERRY marks were invalid for certain goods whereas the QUEENSBERRY RULES mark was not.

The defendants' device

37. The word QUEENSBERRY is a very prominent element of the defendants' device both visually and conceptually. The word is used alone (unlike in say QUEENSBERRY RULES or QUEENSBERRY BOXING 1867). Orally and aurally the device would naturally be referred to as "Queensberry". Nevertheless the device has other elements. The varying font size of the word is notable. The crown, shield (with a heraldic Q) and lions are visually and conceptually significant also and have a regal concept, echoing QUEENSBERRY itself. The Q on the shield echoes the word QUEENSBERRY too. The words "est 1867" are barely visible even on the large versions of the device I have been shown on the products handed up to the court. Insofar as they are visible they allude to the idea of a heritage.
38. The defendants argue that the crown, coat of arms and date are important elements, I agree the crown and shield with the coat of arms and the lions are important but not the date. The date is tiny. The defendants also argue that these elements dominate the sign, but I disagree. I would not go as far the other way to say that the word QUEENSBERRY is dominant but the word is a very prominent element of the sign. Singling out either the word or the crown/shield etc. as dominating over the other would not be right.
39. The device is a sign which is similar to the claimant's marks QUEENSBERRY and QUEENSBERRY RULES. Whether there is a likelihood of confusion is something I will consider in the context of the detailed comparison below.

Detailed comparison of the defendants' goods and marks

40. I will run through the goods listed in the defendants' Schedules in its various forms. The numerals refer to the original unamended Schedule.

Head guard (item 1)

41. The item is a head guard worn by a boxer. I accept the defendants' submission that a boxing head guard is not headgear within class 25. Rather it is a sporting article for use in boxing within class 28 (Caremix [2002] RPC 34). However I think these boxing head guards are similar goods with respect to articles of clothing and headgear within class 25. They are items which are worn, albeit a boxing head guard is worn for a specific purpose and in a specific context. The goods were to be sold through the Sports Direct/Lillywhites stores and website, which were also going to sell clothing and, I infer, headgear within class 25. The goods were all to be branded in the same way with a view to building QUEENSBERRY as a premium brand. Customers are familiar with the idea of a brand with an apparent sporting heritage being used for both sporting goods and general clothing and headgear.
42. Thus for the 784 mark there is no double identity under s10(1)/Art 9(10(a). There are two cases to consider under s10(2)/Art 9(1)(b) [likelihood of confusion]:

a) with similar goods with an identical mark, i.e. the word QUEENSBERRY albeit not used directly fixed to the goods; and

b) with similar goods and comparing the device to the word mark.

43. I find that case (a) is an infringement. In other words use of the word QUEENSBERRY alone in connection with a boxing head guard creates a likelihood of confusion with the 784 mark registered for headgear.
44. I find case (b) is also an infringement. Although the word QUEENSBERRY does not have a high degree of inherent distinctiveness when connected with boxing and has not acquired distinctiveness through use, it does possess some distinctiveness. It is a very prominent element of the defendants' device. Given the similarity of the goods as well, there is a likelihood of confusion.
45. For the 451 mark, the goods are identical to the invalid part of the 451 specification (class 28 sporting articles for use in boxing). For that (invalid) part of the specification there would have been infringement both in relation to the use of the word alone and in relation to use of the device.
46. For the 395 mark the goods are identical to the same invalid part of the 395 specification as for the 451 mark and they are similar to the following newly considered parts of the 395 specification: headgear in class 25 and protective clothing, face guards in class 9. There will be infringement based on the newly considered part of the specification. There would have been infringement for the invalid part.
47. However I do not accept the defendants' argument that the newly considered goods in the specification for the 395 mark (protective clothing) are invalid over the defendants' earlier mark 2,491,149 (QUEENSBERRY BOXING 1867 device). The question of validity of parts of the 395 mark over the 149 device mark is not a mirror image of the question of infringement of the 395 mark by these goods bearing a different device. I have found infringement because there is a likelihood of confusion for head guards branded with the device with a very prominent word QUEENSBERRY alone over a registration for the word alone for similar goods. Conversely I do not see a likelihood of confusion between the services for which the QUEENSBERRY BOXING 1867 device is registered, branded with that device and protective clothing or face guards branded QUEENSBERRY on the other.
48. For the 623 and 454 marks (QUEENSBERRY RULES) I find there is no infringement either on case (a) or case (b).

Boxing gloves, jab pads and bag gloves (items 2, 3, 4 (pads), 6 (training gloves), 7 (bag gloves), 13 (wider range of gloves and pads)

49. Boxing gloves need no explanation. Jab pads (or hook and jab pads) are pads worn as gloves by a boxing trainer which the boxer can punch. Bag gloves are boxing gloves worn by a boxer to use when punching a punch bag instead of a person.
50. I accept the defendants' submission that boxing gloves, pads and bag gloves are not articles of clothing within class 25. They are (at least) sporting articles for use in boxing within class 28.
51. However I think boxing gloves and pads are similar goods to articles of clothing (class 25). They are gloves (or fit on the hand) albeit the function is different. They were to be co-branded with and sold though the same channels as clothing.
52. Thus for the 784 mark there is no double identity under s10(1)/Art 9(1)(a). There are again the same two cases under s10(2)/Art 9(1)(b) to consider. Case (a) (similar goods identical mark used in connection with the goods but not on them) and case (b) (similar goods and similar mark).
53. I find that case (a) is an infringement. In other words use of the word QUEENSBERRY alone in connection with a boxing glove, pad or bag glove creates a likelihood of confusion with the 784 mark registered for clothing.
54. I find case (b) is an infringement for the same reasons as for head guards.
55. The same conclusions for 451 and 395 marks follow as I held for head guards. On 451 there would have been infringement but only based on the invalid part of the specification. For the 395 mark boxing gloves and pads are similar goods to protective gloves and there will be infringement in relation to that valid part of the 395 specification.
56. The same conclusion about validity of the protective gloves aspect of the 395 mark follows over the QUEENSBERRY BOXING 1867 device service mark 149. It is valid.
57. I reject the case based on 623 or 454.

Groin protector (item 5)

58. The conclusions for the groin protector are the same as the ones for the boxing gloves. It is similar to clothing (class 25) and to protective clothing (class 9) and will infringe the valid 784 and 395 marks.

Punch bag (item 8, 17 (wider range) 18 (punch bag utilities))

59. Punch bags need no introduction. Punch bag "utilities" are the chains, wall hanging brackets and ceiling hangers for the punch bags.
60. Punch bags are sporting articles for use in boxing within class 28 (marks 451 and 395). The same conclusions follow for punch bag utilities (or else they are very similar to sporting articles). I do not accept that either punch bags themselves or the utilities are similar to leather goods in class 18 either or to any of the other goods in the claimant's 395 mark.
61. On both case (a) and case (b) the punch bag and utilities would infringe the invalid part of the specification for the 451 and 395 mark but not the marks in their valid form on my findings in the main judgment.
62. BBL relied on the 454 mark QUEENSBERRY RULES for sporting articles for use in boxing within class 28. I reject that infringement case on either case (a) or (b), the differences between the marks are too great.

Corner pads and boxing rings (items 9, 15)

63. Corner pads fit in the corners of boxing rings. Boxing rings include padded ring rope covers, canvas, ring stairs, corner stools and turnbuckle covers. These goods all stand or fall with punch bags and utilities. On both cases (a) and (b) they would infringe the invalid part of the specification for the 451 and 395 mark but not the marks in their valid form. I reject the case based on the 454 mark.

Hand wrap (item 10, 23 (hand wrap gloves))

64. Hand wraps and hand wrap gloves are the wrappings used by boxers to wrap around their hands. They stand or fall with boxing gloves above. In other words they infringe the 784 mark on cases (a) and (b). They will infringe the same valid part of the 395 mark. They would only infringe the invalid part of the 451 mark.

Boxing specific bags (item 11)

65. The example of a boxing specific bag given by the defendants is a boot bag, i.e. a bag for boxing boots.
66. Considering the 784 mark, these would be similar to articles of clothing, footwear and headgear in class 25. They are used to carry such articles. The goods were to be sold through the Sports Direct/Lillywhites stores and website, which were also going to sell clothing and, I infer, footwear and headgear within class 25. The goods were all to be branded in the same way with a view to building QUEENSBERRY as a premium brand. Customers are familiar with the idea of a brand with an apparent sporting heritage being used for both sporting bags and general clothing, footwear and headgear.
67. Thus for the 784 mark there is no double identity under s10(1)/Art 9(1)(a). There are the familiar two cases under s10(2)/Art 9(1)(b) to consider. Case (a) (similar goods identical mark used in connection with the goods but not on them) and case (b) (similar goods and similar mark).
68. I find that there is infringement on both cases (a) and (b). In other words use of the word QUEENSBERRY or the device in connection with a boxing specific bag creates a likelihood of confusion with the 784 mark registered for clothing, footwear and headgear.
69. Considering the 451 mark these would be within the invalid element of that specification as "sports bags" within class 18 and "sporting articles for use in boxing" (within class 28).
70. BBL contended these would be within various elements of the 395 specification which had not been ruled upon at the main trial such as "luggage, bags, holdalls, articles of luggage" in class 18 and other parts of the specification for class 18 and class 9. The defendants' case was that sports bags cannot be identical to these goods but if they are held to be identical goods then the reasoning which led to the finding of invalidity of "sports bags" in the 395 mark in the main judgment must apply to these goods as well.
71. I accept BBL's submission that boxing specific bags are identical goods to luggage, bags, holdalls and articles of luggage in class 18. However I also accept the defendants' submission that this necessarily means that the conclusion I reached before, that the 395 registration for sports bags (and so on) was invalid as a result of the defendants' prior UK registered trade mark 2,491,149 (QUEENSBERRY BOXING 1867) also applies to that class.
72. BBL's submission, that boxing specific bags are identical goods to luggage, bags, holdalls, articles of luggage in class 18, is a material change in the circumstances as compared to the position on 30^th July 2013 and the rulings and declarations made on that occasion about the proper scope of the 395 mark have to be revisited.
73. Thus I conclude that boxing specific bags would infringe the (wholly valid) 784 mark. They would also infringe invalid parts of the 451 and 395 marks on both cases (a) and (b) but not those marks in their valid form. The specification of the 395 mark will need to be further amended and I will hear the parties on the proper scope of that amendment.
74. I reject the case based on the 623 or 454 marks (QUEENSBERRY RULES).

General sports/kit bags (item 12)

75. General sports/kit bags includes e.g. holdalls, back packs and barrel bags. BBL's case on general sports/kit bags must be at least as strong, if not stronger, than its case in relation to boxing specific bags. Thus they would infringe the 784 mark. They would only infringe invalid parts of the 451 and 395 marks. They would not infringe the 623 or 454 marks (QUEENSBERRY RULES).

Shields protectors (item 14)

76. These include mouth guards, gum shields, body shields and protectors and knuckle protectors.
77. I reject the claimant's argument that they are identical to articles of clothing or headgear in the 784 mark but they are similar to such articles. On the 451 mark they are identical to the (invalid) sporting articles. On the 395 mark they are identical to the (invalid) sporting articles but similar to various (newly considered) parts such as face guards and clothing.
78. These articles would infringe the 784 mark and the newly considered parts of the 395 mark on cases (a) and (b) for the same reasons as before. The newly considered parts of 395 are valid. They would also infringe the (invalid) parts of the 451 and 395 marks. I reject the case on the 623 and 454 marks.

Gym fitness training equipment (item 16)

79. These items include skipping ropes, exercise mats, medicine balls, kettle bells, weighted vests, ankle resistance bands, weight lifting belts, weight lifting gloves and weight lifting benches.
80. In my judgment they stand or fall with punch bags. They would only infringe invalid parts of the 451 and 395 marks. They do not infringe any valid parts of the claimant's registered trade marks.

Water bottles (item 19)

81. These are identical to invalid parts of 451 and 395. I accept the claimant's case that they are similar to a newly considered part of 395 – mineral drinks (medicated); vitamin drinks; preparations for dietary use; dietetic substances adapted for medical use (class 5).
82. I find they would infringe the newly considered part of the 395 mark. That newly considered part is valid. Water bottles would also have infringed on the invalid elements of 451 and 395. I reject the case on the 623 and 454 marks.

Tote buckets (item 20)

83. A tote bucket is a special bucket used in boxing with two parts, one for ice and one for water. They are not similar to the goods covered by the 784 mark. Beyond this and although tote buckets are quite different from punch bags, in my judgment the conclusions are the same. The only goods which tote buckets are similar to or identical with in the 451 and 395 marks are in the invalid parts. They would infringe but for the invalidity. I reject the case on the 623 and 454 marks.

Training towels (item 21)

84. The only goods which training towels are similar to or identical with in the 451 mark are in the invalid part (sporting articles). They are similar to but not identical with goods in a newly considered part of the 395 mark (in class 24, textile goods not included in other classes). They would infringe the 395 mark. That newly considered part is valid. But for invalidity they would infringe 451. They would not infringe 623 or 454.

First aid kits (item 22)

85. The 395 mark includes "first aid kits containing medical preparations". These are identical goods. These goods would infringe that mark. It would not infringe any of the others. That aspect of 395 is valid.

Summary

86. I find that the following items would infringe at least one of the claimant's trade marks which was held valid in my main judgment or has been held valid now:

a) Head guard (item 1)

b) Boxing gloves, jab pads and bag gloves (items 2, 3, 4 (pads), 6 (training gloves), 7 (bag gloves), 13 (wider range of gloves and pads)

c) Groin protector (item 5)

d) Hand wrap (item 10, 23 (hand wrap gloves))

e) Boxing specific bags (item 11)

f) General sports/kit bags (item 12)

g) Shields protectors (item 14)

h) Water bottles (item 19)

i) Training towels (item 21)

j) First aid kits (item 22)

I find that the following items would have infringed one of the claimant's marks but only in a respect in which I have found that mark to be invalid. Thus on my findings they would not infringe. They were:

a) Punch bag (item 8, 17 (wider range) 18 (punch bag utilities))

b) Corner pads and boxing rings (items 9, 15)

c) Gym fitness training equipment (item 16)

d) Tote buckets (item 20)

Should I order an enquiry on the cross-undertaking?

I have found that seven kinds of items from the defendants' original list of goods would not infringe the claimant's trade mark rights as I have determined them to be in the combination of the main judgment and this judgment.

Of these seven items only punch bags and corner pads are items the defendants contend, based on part A of the Re-Amended Schedule, that they had actually ordered prior to the interim injunction being imposed. The defendants had also ordered head guards, boxing gloves in different colours, pads, groin protectors, bag gloves and hand wraps. However all these items would infringe.

Based on parts B and C of the Re-Amended Schedule (part B), the defendants also intended to order six kinds of further items but of these six only boxing rings and gym fitness equipment have been found not to infringe. The other four items (boxing specific bags, general sports/kit bags, shields/protectors and hand wrap gloves) would have infringed.

The other three items from the group of seven kinds of goods found not to infringe valid rights were in the defendants' original Schedule but were not listed in the Re-amended Schedule at all. I infer the defendants did not intend to order those during the period covered by the interim injunction.

The court has a discretion whether to order an inquiry on a cross-undertaking.

I am not prepared to order such an inquiry in the present circumstances. As I have said already I am not satisfied the defendants ever really intended to launch a boxing equipment range as a free standing product range. Still, if I had found that all or substantially all of the defendants' boxing equipment range would not have infringed any of BBL's rights, I might have directed an inquiry to take place albeit with misgivings about its proportionality.

However the conclusion I have reached is that goods such as boxing gloves and bags, which the defendants had actually ordered before the injunction or intended to order, would have infringed. I am quite satisfied that the defendants had no intention, before I discharged the interim injunction in July 2013, of launching a range consisting only of the rather narrow group of goods which I have found do not infringe a valid trade mark. Since they were not going to sell those goods on their own, they have suffered no real loss at all caused by the interim injunction. An inquiry would be costly and not worth the candle.

Even if it were to be the case that following my main judgment, the defendants would like to sell the narrow range of goods I have found do not infringe, that would be a new idea and is no justification for an inquiry.

What final relief should I order?

The specification of the 395 mark will need to be amended to reflect this judgment. The declaration I made in July 2013 concerning the 395 mark will need to be set aside and replaced with a declaration referring to the correct specification.

I have held that the 784 and 395 marks would be infringed by the acts the defendants intended to carry out. I will order an injunction in general terms restraining infringement of those marks (Specsavers v Asda [2012] EWCA Civ 494). In the light of my judgments each side knows where they stand in relation to those injunctions.

I will not order an injunction on the 451 mark because I have found no infringement of it in its valid form.

Conclusion

Most of the kinds of goods the defendants' intended to sell would have or did infringe valid trade mark rights held by the claimant but some did not. I will order suitable injunctions and declarations. I will not order an inquiry on the cross-undertaking.