Brand Monopoly & ManagementA National Governing Body (“NGB”) for gymnasticssued a newer, smaller organization claiming to be an NGB and offering similar services, for infringement of its trademark.
British Amateur Gymnastics Association (“BG”) was the NGB for gymnastics in the UK, providing coaching, management and other services. BG was the registered holder of the following trademarks
UK Gymnastics Limited (“UKG”)provided similar services, albeit on a much smaller scale. UKG had been using the following signs commercially (“Signs”):
BG claimed that UKG had infringed its trademark by using highly similar Signs in its business.
BG stated that it was the sole NGB for gymnastics in the UK recognised by the Sports Council of England and had acquired substantial reputation. UKGfalsely portrayed itself as another NGB for gymnastics while using Signs that were highly similar to the Trademarks, on its website and merchandise.This was likely to cause confusion among the public.BG also claimed that UKG was “passing off” its services as those provided by BG, which were better-known, reputed and trusted.
UKG conceded BG’s status as an NGB for gymnastics but asserted thatit was also an NGB, though unrecognised. It also admitted that the Trademarks had acquired substantial reputation. However, it argued that neither were the Signs similar to the Trademarks nor was there any likelihood of confusion.UKG denied that it was passing off its services as BG’s.
The Court had to decide if UKG had infringed the Trademarks with its Signs. In addition, althoughimmaterial to the dispute, the Court took to deciding if UKG was an NGB for gymnastics in the UK.
On UKG’s claim of being an NGB, the Court found that although UKG offered similar services as BG, it lacked certain features which an NGB ought to have. There was no transparency about members’ rights, rules or staff having expertise to run an NGB. Even externally, there was no certification of quality, fitnessor expertise in gymnastics, all of which BG had. Thus, the Court held that UKG was not an NGB for gymnastics in the UK.
On infringement, the Court noted that a primary test to decide infringement is likelihood of confusion to the public who would ordinarily consume the goods/services concerned. The consumers of the services offered by both BG and UKG would range from child gymnasts to international coaches.
The Court noted that in the Trademark, the colour scheme resembled the Union Flag and the stylisation was minimal, so the dominant and distinctive component was“British Gymnastics”. Thus, the Trademark and the Sign ought to be differentiated between the words ‘British’ and ‘UK’, instead of their colour patterns, fonts or styles.The Court found that the words ‘British’ and ‘UK’ had distinct pronunciations and thus, only a medium degree of similarity existed between the Trademarks and Signs.
The Court acknowledged that on a global level, people often get confused between ‘Great Britain’, ‘UK’ and ‘England’ and even use them interchangeably. Also, there is conceptual closeness between ‘British’ and ‘UK’ and thus, an inattentive consumer is likely to mistake one for the other.
On passing off, as it had already been found that there was some similarity and likelihood of confusion between the Trademarks and Signs, the Court held that UKG was passing off its services as if they were offered by BG.
Thus, BG’s claim succeeded entirely.
A trademark is often the biggest guardian of a business’s reputation. It is important to stop others from copying it and taking the ‘shortcut’ to success!
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