Sport England and UK sport-funded National governing bodies (NGBs) in sport will be comforted by the fact that the British Amateur Gymnastics Association (British Gymnastics) has claimed victory in trade mark and passing off proceedings against defendant UK Gymnastics Limited, in a judgment made in the High Court in June this year.

Background

British Gymnastics holds figurative trade marks for ‘British Gymnastics’ and ‘British Gymnastics – More than a sport’, registered since 2017:

The classes protected include class 41 for education, providing of training, entertainment and sporting activities.

Since at least 2015, the defendant had been advertising, offering and providing membership services to individual gymnasts and clubs, as well as competitions and coaching services in gymnastics under the sign ‘UK Gymnastics’. The figurative element of the mark is promoted in red and blue and features a Union Jack:

In January 2019, British Gymnastics issued a claim for trade mark infringement and passing off, seeking an injunction and damages as a result of the defendant taking unfair advantage of its marks and benefiting from the status and reputation that British Gymnastics has as the sole governing body in the UK for gymnastics.

Trade mark Infringement

The Court concluded that although the parties’ respective signs are not identical in word form, the conceptual similarity are similar to a strong degree due to the terms ‘UK’ and ‘British’ describing a similar geographical area and conveying an official status. This led to a medium similarity being found overall. In addition, the services being sold under the respective signs were held to be almost identical (especially class 41).

The court assessed this case with consideration of the fact that the Claimant is the sole NGB (and has been for many years), which increases its marks’ distinctiveness significantly. The Defendant’s argument that it was also an NGB, was unsurprisingly rejected by the court.

This fact also alters the level of attention that the relevant public would take in distinguishing the marks; the court found that as a result, there is a likelihood of confusion between the signs as the relevant public were unlikely to pay much attention and assume that UK Gymnastics was associated with British Gymnastics.

Passing Off

The court also found that UK Gymnastics would cause detriment to the repute of British Gymnastics as its services fell below the NGB standard, therefore the passing off claim was also successful.

This case is encouraging for NGBs that face infringement by a third party using identical or similar marks without their consent. Due to their very nature, NGBs have a strong advantage by occupying a unique position in their field, and holding a certain standing and reputation. You can bet that any threats made to their intellectual property, therefore, will not be taken lightly.

Read the full Judgment here.

Originally published at Kermanco.com prior to the firm’s combination with Armstrong Teasdale in early 2021.