Intellectual Property Enterprise Court

i)                    Since 2011, by reference to the Trade Marks and each of them;

ii)                 Prior to 2011 the primary British Gymnastics’ logo was as follows:

iii)              The colours red, white and blue, reminiscent of the Union Jack Flag;

iv)               A background image depicting gymnastics motion in the form of coloured swirls in the colours red/white/purple/blue.

(collectively the “Claimant’s Get-Up”)

(collectively “the Signs”), and associated get-up including the colours red, white and blue and sections or elements of the Union Jack (collectively “the UKG Get-Up”). The First Defendant organises and administers gymnastics competitions and runs the ‘UK Gymnastics’ website (“Ds’ Website”). The Second Defendant administers the membership of UK Gymnastics, organises courses and runs an online store on Ds’ Website. The Third Defendant is the sole director of the First and Second Defendants.

i)                   an injunction restraining the Defendants from infringing the Claimant’s registered trade marks and from passing off its goods and services as being connected with those of the C; and

ii)                 damages of up to £100,000.

THE ISSUES

i)                   Have the Defendants infringed the Trade Marks and each of them pursuant to section 10(2)(b) of the Trade Marks Act 1994 (“the Act”)?  The Defendants have admitted that the Trade Marks each enjoy an enhanced distinctive character. The following issues remain in dispute:

a)                 Have the Defendants used the Word Sign in the course of trade in relation to the UKG Services?

b)                 Are the Signs similar to the Trade Marks?

c)                  Does the use of the Signs in the course of trade in relation to the UKG Services result in a likelihood of confusion on the part of the public?

ii)                 Have the Defendants infringed the Trade Marks and each of them pursuant to section 10(3) TMA? The Defendants have admitted that the Trade Marks have a reputation in the UK. The following issues remain in dispute:

a)                 Is there a link between the Signs and the Trade Marks in the mind of the relevant public?

b)                 Is the use of the Signs by the Defendants detrimental to the distinctive character and/or repute of the Trade Marks and/or does the use create a serious risk of being so detrimental?

c)                  Does the use of the Signs by the Defendants take unfair advantage of the distinctive character or repute of the Trade Marks or does it create a serious risk of doing so?

d)                Does the use of the Signs affect or create a serious risk of affecting or changing the economic behaviour of the average consumer?

e)                 Is the use of the Signs by the Defendants without due cause?

iii)              The Defendants have admitted that the Claimant had at the date when the Defendants commenced the activities complained of, and has, built up and owned valuable goodwill in the UK which attaches to the Mark and/or the Trade Marks and each of them either alone or in conjunction with the Claimant’s Get-Up or each element thereof when used in relation to the Claimant’s Services and that accordingly when members of the relevant public in the UK see the Mark and/or the Trade Marks and each of them either alone or in conjunction with the Claimant’s Get-Up or each element thereof when used in connection with those Services, they would believe them to be those of or connected with the Claimant and no other. The following issues remain in dispute:

a)                 Whether the Defendants’ use of the Signs and/or UKG Get-Up in relation to the UKG Services has led or is likely to lead a substantial number of members of the relevant public or trade in the UK to believe, contrary to fact that:

i)                   The Defendants and/or the UKG Services are those of or otherwise the subject of some commercial arrangement with the Claimant, and/or

ii)                The Defendants and/or the UKG Services are connected with the Claimant in such a way as to cause damage to its goodwill and/or

iii)              That the Defendants and/or UKG Services have the status of a National Governing Body conferred upon them by the Claimant.

b)                 Whether the Claimant has suffered or is likely to suffer damage.

THE TRIAL

i)                   whether the consumer is confused if there is more than one NGB for a sport;

ii)                 whether UK gymnastics is an NGB or acting as an NGB;

iii)              whether the public would be confused into thinking that the First Defendant is the recognised NGB or has a connection with the Claimant as the recognised NGB; and

iv)               whether the use of ‘UK’ in the First Defendant’s name would cause the public to think that the First Defendant is the recognised NGB or an NGB.

“11. It is well established that evidence of a conviction is inadmissible in civil proceedings (Hollington v F Hewthorn and Company Ltd [1943] 1 KB 587).

EVIDENCE

The Claimant’s evidence

i)                    at paragraph 1, that the process of recognition as an NGB “determine(s) the National Governing Bodies responsible for governing the sporting activities that the Sports Councils are willing to consider supporting and working with” and “acknowledge[s] the status of the NGB as a private organisation which governs a particular sport through the common consent of the sport itself”;

ii)                 at paragraph 6, the role of an NGB (whether recognised or not):

“An NGB is an organisation that governs and administers the sport on a national basis, whether that is for the whole of the United Kingdom (i.e. England, Northern Ireland, Scotland and Wales) … Traditionally, NGBs are described as the custodians and guardians of their sport”;

iii)              at paragraph 9, what functions as a recognised NGB is expected to deliver within its area of jurisdiction;

iv)               at paragraph 10, what activities a recognised NGB is expected to undertake;

v)                 at paragraph 11, acknowledges that “Many NGBs originated as a voluntary coming together of sports people (individuals, teams and clubs) with a common purpose; to encourage and enable participants to enjoy and progress in their chosen sport. They evolved into membership organisations and individuals often became members to enable them to compete in their sport and be covered by insurance”;

vi)               at paragraph 22, that “the aim of recognition is to identify sporting activities, and a single lead NGB structure ideally (or joined up structure with clear lines of communication and responsibility at the very least) operating at UK, GB or Home Country level…”

vii)            at paragraphs 40 to 56, the recognition application process;

viii)          at paragraph 45(d), dealing with pre-applications for recognition as an NGB, that the NGB “must demonstrate that it is affiliated to the UK (GB or Irish) NGB for its sport, and the international governing body for its sport (where this exists)”;

ix)               at paragraph 45(e), that only one NGB can be recognised for a specific jurisdiction.

“Sport England invest in recognised national governing bodies, including [the Claimant], in order to ensure their governance of the sport and to help make sure that people are taking part in their sport, their chosen activity, in a safe regulated environment. That governance function usually requires staff and resources and that's why Sport England invest for that function to be performed. It usually can be argued that it's the body's position and influence in the sport that makes it relevant for us to invest and provide that function.

By way of example, if you were only responsible for a small number of clubs, or a relatively small proportion of the sport, you cannot provide that governance function across the country and therefore Sport England wouldn't partner with you to do so.”

i)                   to develop and expand their sport to new audiences and to grow the number of people that are interested in, engaged in and doing gymnastics; and

ii)                 to govern the sport in its competitive forms and to ensure that people taking part in gymnastics do so in a safe and enjoyable way.

i)                   To act as a governing body for gymnastics in the UK;

ii)                 To develop and implement a strategy for the development of gymnastics in the UK;

iii)              To make rules for persons participating in gymnastics in the UK;

iv)               To develop a commercial marketing and public relations programme for gymnastics in the UK;

v)                 To develop a competition programme in the UK;

vi)               To select representative teams to represent the UK in international events;

vii)            To consult and nurture relationships with other organisations operating in gymnastics and sports councils, including the British Olympic Association and relevant Commonwealth Games councils;

viii)          To support, set up and administer charities for the benefit of gymnastics; and

ix)               To take such action as the Board may consider for the benefit of gymnastics and the members of the Association.

i)                   That the Claimant, its representatives and associated delivery centres must conduct their activities in an appropriate manner, which would not seriously prejudice the standing or reputation of the UKCC or its principles;

ii)                 Any changes to the submission that alter the nature of the qualification, and may be deemed to change the emphasis, must be authorised by sports coach UK;

iii)              The Claimant, its representatives and associated delivery centre must remain committed to the sharing of good practice, continue to review the ongoing relevance of the coach education programme in the context of the participants and performers needs, champion the UKCC as a development framework based on good practice delivery in adult education, continue to commit to an inclusive approach which embraces diversity.

i)                   the Articles of Association of the Claimant which, inter alia, require it to conduct AGMs and publish the minutes of such meetings for the purposes of public transparency;

ii)                 its suite of Board approved policies reviewed and updated every three years, covering such subjects as Safeguarding, Complaints, Conduct and Disciplinary, Anti-Doping, Manipulation of Competitions;

iii)              its Membership Rules (version 4.0 of 31 August 2018 is exhibited to her witness statement), which run to 23 pages and are comprehensive in nature, setting out specific rules for Coach, Assistant Coach, National/Brevet Judge, Judge, Club Official, Competitive Gymnast, Gymnast Pre-school, Honorary Life and Complimentary memberships as well as Registered Clubs); and

iv)               handbooks for each of the different gymnastic disciplines, which include the protocol, governance and requirements of participation in each type of event. She exhibits to her witness statement the 2019 Women’s Artistic Competition Handbook v. 1.4 of 16 October 2019, and the 2019 Gymnastics for All GymFusion Handbook v 1.1, which I have looked at.  Once again, these are comprehensive documents running to 44 and 23 pages respectively and covering all aspects of eligibility, competition entries, and technical information, as well as relevant contact information and competition calendars.

 “The new function came to my attention via one of the Customer Relationship Managers, following a conversation with a British Gymnastics registered club appearing on the UKG site. The club had contacted UKG to demand that their details were removed and were advised by UKG that the content was in the public domain and they would not remove it. The club, Leeds Gymnastics Club, are considering taking legal action. The site appears to be listing all [British Gymnastics] registered clubs across England, Scotland Wales and Northern Ireland. The huge majority of these clubs will have no relationship or affiliation whatsoever with UKG. The site doesn't have any wording to clarify that they are UKG clubs, but neither does it have anything to say they aren't. This is extremely confusing to anyone using that function and poses the following issues:

1. Clubs that have no affiliation with UKG may get members that have found the club via the UKG site. This is extremely confusing for the member and difficult for the club to explain.

2. For clubs that are new or not associated with BG or UKG, their exploratory searching could suggest that UKG are considerably more successful in their club network than they are and could be viewed as disingenuous at best.

3. There could be impact on the natural listing on search engines that we work extremely hard to develop - a member searching for a club may be served the UKG search option rather than ours as the club would be listed in both

4. It could be a tactical ploy to try to create a circumstance where UKG can claim to be generating members for a BG club, to attempt to gain leverage to create a relationship with that club.

The whole situation is extremely confusing for clubs and members comment particularly given that this is on top of a number of other attempts to great gain credibility through pulling through our website content onto their site, running video news footage from our championships and international competitions, and overtly advertising in social media for BG tutors to run UKG courses.”

“Welcome

We are here to help, support and advise you at every stage of your membership, whether you are just getting started or already involved in this exciting sport.

Membership is vital in ensuring that British Gymnastics can continue to help and support you as a valued member and also positively contributes to the growth of the sport. Interest in the sport has never been stronger and we are fully committed to helping everyone achieve their full potential. We are a membership organisation - you are the lifeblood of the sport and we recognise that the gymnastics community continues to develop, grow and be successful through the contribution that you make. If you are excited about the possibilities of gymnastics, we can offer you the opportunity to be part of a large and growing community that shares your excitement.

Our pledge to you is that we will work with you to help you achieve your ambitions in gymnastics, whatever they are. In particular, we will:

·         Respond constructively to your queries and requests

·         Keep communications clear and precise

·         Treat you with courtesy fairness and respect…”

The Defendants’ evidence

i)                   Dealing with current and prospective members’ enquiries by telephone and email;

ii)                 Issuing certificates;

iii)              Processing memberships and orders;

iv)               Communicating with suppliers and purchasing products and equipment;

v)                 Meeting with insurers;

vi)               Maintaining Ds’ Website (including designing documents and website elements such as the competition artwork);

vii)            Communicating with current and prospective tutors of the First Defendant;

viii)          Managing accounts;

ix)               Drafting policy documents for approval at meetings; and

x)                  Chairing such meetings.

“Criteria: The organisation must be able to evidence a current membership level (individual members) in excess of the following thresholds dependant on the jurisdiction:

·         UK: 1,650

·         Britain: 1,500

·         England: 750

·         Scotland: 500

·         Wales: 250

·         Northern Ireland: 150”  

IS THE FIRST DEFENDANT AN NGB?

THE LAW

Trade Mark Infringement

“(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because -

(a)               the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b)              the sign is similar to the trade mark and is used in relation to goods or services identical or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3) A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which -

(a) is identical with or similar to the trade mark,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”

Likelihood of Confusion/Average Consumer

Section 10(3) trade mark infringement - Link in the mind of the average consumer

Issue (i)(b) - Are the Signs similar to the Trade Marks?

Comparison of services

Comparison of marks - Claimant’s submissions

i)                   The logos both use red and blue for the words which remain clearly legible and which remain the dominant aspect of the signs. The colours and in particular the shades of red and blue are identical or highly similar to those used in the Trade Marks;

ii)                 The inclusion within the logos of imagery of the Union Jack renders the Defendants’ logos even more conceptually similar to the earlier marks in the series (which include marks coloured in red and blue);

iii)              The Claimant’s inclusion in one of its series of marks of the words ‘more than a sport’ is ancillary to the dominant aspect of those marks being the words ‘British Gymnastics’ and will not affect the overall impression and similarity between the logos and the Trade Marks;

iv)                The Defendants’ second logo places ‘UK’ above ‘Gymnastics’ and both of them are clearly to be read, spoken and viewed as UK preceding the word gymnastics.

Comparison of marks - Defendants’ submissions

i)                   the visual similarity is limited to the word ‘Gymnastics’ and the use of the colours red and blue;

ii)                 The dominant elements of the Defendants’ Signs are the Union Jack abstracted as a smear of paint from a paint brush and, in particular, the large block font letters ‘U’ and ‘K’ in red;

iii)              The Claimant’s marks are in equal font size, use thin rounded letters and have no accompanying image;

iv)               The aural similarity is limited to the component ‘Gymnastics’. The beginning of the Trade Marks and the Signs, which according to Warsteiner Brauerei is of greater importance, are not at all similar: the sound ‘B’ or ‘BR’ for the Trade Marks and the “more striking” ‘U’ for the Signs. The end of the first component of the Trade Marks ends in the soft and elongated ‘ISH’ whereas the end of the first component of the Defendants’ Signs ends in the hard and clipped ‘K’;

v)                 The only conceptual similarity is arguably in the use of the word ‘gymnastics’ with a geographical component, however any such conceptual similarity is not substantial and does not play a substantial part.

Discussion and determination

Issue (i)(c) - Does the use of the Signs in the course of trade in relation to the UKG Services result in a likelihood of confusion on the part of the public?

i)                   Identicality of the services and/or similarity between the services and goods for which the Trade Marks are registered and the UKG Services, as I have found;

ii)                 The nature of each of the Trade Marks and Signs as indicating a national and/or official status and reach of the services provided, as I have found;

iii)              The enhanced distinctiveness of the Trade Marks as a result of their use by the Claimant in relation to its function as the NGB for the UK, which the Defendants have accepted;

iv)               The use of identical colours and/or the inclusion of parts of the Union Jack will result in the average consumer believing that the UKG Services have the same origin as the goods and services provided under the Trade Marks by the Claimant (direct confusion), or at the very least there is some sort of economic link between them (indirect confusion). In relation to this submission I am not entirely with the Claimant.

 “16. Although direct confusion and indirect confusion both involve mistakes on the part of the consumer, it is important to remember that these mistakes are very different in nature. Direct confusion involves no process of reasoning - it is a simple matter of mistaking one mark for another. Indirect confusion, on the other hand, only arises where the consumer has actually recognized that the later mark is different from the earlier mark. It therefore requires a mental process of some kind on the part of the consumer when he or she sees the later mark, which may be conscious or subconscious but, analysed in formal terms, is something along the following lines: “The later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earlier mark”.

17. Instances where one may expect the average consumer to reach such a conclusion tend to fall into one or more of three categories:

(a)  where the common element is so strikingly distinctive (either inherently or through use) that the average consumer would assume that no-one else but the brand owner would be using it in a trade mark at all. This may apply even where the other elements of the later mark are quite distinctive in their own right (“26 RED TESCO” would no doubt be such a case).

(b)  where the later mark simply adds a non-distinctive element to the earlier mark, of the kind which one would expect to find in a sub-brand or brand extension (terms such as “LITE”, “EXPRESS”, “WORLDWIDE”, “MINI” etc.).

(c)  where the earlier mark comprises a number of elements, and a change of one element appears entirely logical and consistent with a brand extension (“FAT FACE” to “BRAT FACE” for example).”

Defendants’ submissions

Discussion and determination

Conclusion on issue (i)

Issue (ii) - Section 10(3) Trade Mark Infringement

Issue (ii)(a) - Is there a link between the Signs and the Trade Marks in the mind of the relevant public?

Issue (ii)(b) - Is the use of the Signs by the Defendants detrimental to the distinctive character and/or repute of the Trade Marks and/or does the use create a serious risk of being so detrimental?

Submissions

Discussion and Determination

Issue (ii)(c) and (d) - (c) Does the use of the Signs by the Defendants take unfair advantage of the distinctive character or repute of the Trade Marks or does it create a serious risk of doing so? (d) Does the use of the Signs affect or create a serious risk of affecting or changing the economic behaviour of the average consumer?

Submissions

Determination

Issue (ii)(e) - Is the use of the Signs by the Defendants without due cause?

Submissions

Determination

Conclusion on Issue (ii)

Issue (iii) - Passing off

Issue (iii)(a) and (b) - (a) Whether the Defendants’ use of the Signs and/or UKG Get-Up in relation to the UKG Services has led or is likely to lead a substantial number of members of the relevant public or trade in the UK to believe, contrary to fact, that:

i)                     the Defendants or the UKG Services are connected with the Claimant or there is otherwise some commercial arrangement between them and the Claimant; and/or

ii)                  that the Defendants and/or the UKG Services are connected with the Claimant in such a way as to cause damage to its goodwill; and/or

iii)                that the Defendants and/or UKG Services have the status of a National Governing Body conferred upon them; and

(b) Whether the Claimant has suffered or is likely to suffer damage?

SUMMARY

Annex 1