Trade Mark Success For The Gymnastics National Governing Body

• Published date: 18 September 2020
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Charles Russell Speechlys LLP
• Author: Ms Olivia Gray

In a recent case before the Intellectual Property Enterprise Court (a division of the High Court which specialises in Intellectual Property claims) the judge found that UK registered trade marks for "British Gymnastics, More than a sport" and "British Gymnastics" (The Trade Marks) (shown on the left hand side of the image below), owned by the British Amateur Gymnastics Association, the UK's national governing body (NGB) for gymnastics, were infringed by the defendants.

The defendants trade as 'UK Gymnastics' under the Signs shown in the image on the right providing membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and/or badge/certificate programmes; and/or educational services to coaches. The judge found that the defendants' use of these Signs infringed the Trade Marks pursuant to sections 10(2) and 10(3) of the Trade Marks Act 1994 and also amounted to passing off.

A trade mark that is descriptive of the goods or services supplied is only protectable as a registered trade mark where it has acquired a distinctive meaning through its use. In this case the relatively simple British Gymnastics marks had been used by the claimant for so many years to identify the only NGB for the sport of gymnastics in the UK that they had acquired an enhanced distinctive character; a fact that was admitted by the defendants.

It is often more challenging to enforce a descriptive trade mark than a unique and meaningless mark. For example the claimant would not be able to prevent a third party providing gymnastic coaching services using the term 'Gymnastics' descriptively - there is clearly a legitimate reason for the similarity in the marks. However in this instance, considering in particular the word Sign 'UK Gymnastics', the judge ruled that although the difference between UK and British would be noted visually, the conceptual similarity was very strong because: (i) 'UK' and 'British' are references to similar geographical areas which the public often confuse/use interchangeably and (ii) because of the connotation of a formal or official status to the services provided that the words 'UK' and 'British' give. The defendants' logo Signs were also found to be similar, in particular to the coloured Trade Marks (albeit to a lesser extent than the similarity of the word sign).

Taking all circumstances into account, the judge was satisfied that there was a 'likelihood of confusion' such that child gymnasts, their parents and spectators...