In its recent decision in UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association, the Court of Appeal upheld the ruling in the IPEC that the Defendants’ use of ‘UK Gymnastics’ infringed the Claimant’s rights in ‘British Gymnastics’. The case represents an interesting of example of circumstances in which trade mark infringement and passing off can be found notwithstanding fairly low similarity between the marks and an absence of evidence of actual confusion despite numerous years of parallel trading. In its unanimous judgment, the Court of Appeal maintained HHJ Clarke’s ruling, but accepted the Defendants’ appeal to slightly narrow the scope of the injunction granted against them.
The Claimant, British Amateur Gymnastics Association (BAGA), is a not-for-profit National Governing Body (NGB), being the only recognised NGB for gymnastics in the UK. It had traded under the name ‘British Gymnastics’ since 1997 and had built substantial goodwill in that designation (which was not contested by the Defendants). BAGA owns a series of two registered UK trade marks since 2017 and 2018, shown below (Claimant’s UKTMs).
The Defendants consist of UK Gymnastics Ltd (UKG), UK Gymnastics Affiliation Limited and the sole director of both companies. Since 2012/2013 and under the word and logo signs for ‘UK Gymnastics’ shown below (Defendants’ Signs), the Defendants had offered and sold various membership, competition, certification and other services to gymnasts, gymnastics clubs and coaches.
UK Gymnastics (word)
BAGA was successful in bringing an action in the IPEC against the Defendants for (1) trade mark infringement for likelihood of confusion or, in the alternative, detriment to the distinctive character of or taking unfair advantage of the reputation of the Claimant’s UKTMs and (2) for passing off. The IPEC granted an injunction restraining the Defendants from infringing the Claimant’s UKTMs and from passing off its good and services as being connected with those of BAGA’s.
The Defendants appealed against the IPEC’s findings on passing off on the basis that the IPEC had come to the wrong conclusion in finding that UKG, which holds itself out as a NGB but not a ‘recognised’ NGB, was not a NGB for gymnastics in the UK. The Court of Appeal rejected this ground as the essence of the IPEC’s decision was that UKG did not comply with the definition of a NGB in the Sports Councils Recognition Policy 2017 nor did it comply even with UKG’s own definition of a NGB.
More significantly, the Defendants also argued that one of the three passing off claims brought by the Claimant should not have succeeded and that the IPEC had erred by ruling in favour of the Claimant. This claim related to the allegation that the Defendants had caused a substantial number of the relevant public in the UK to believe, contrary to the fact, that the Defendants or its services have a particular status conferred upon them by the Claimant. As the IPEC found in favour of passing off under this claim on the basis that the Defendants were misrepresenting themselves as a NGB when, in fact, the Claimant’s claim was that the UKG and UKGA were misrepresenting themselves as having a status conferred upon it by BAGA, the Court of Appeal agreed that the IPEC had found passing off under this claim on the wrong basis.
Whilst this did not affect the overall finding of passing off against the Defendants, by accepting this ground of appeal the Court of Appeal ordered that the parts of the injunction restraining the Defendants from “otherwise denoting some form of official or approved status upon the Defendants or otherwise asserting to be a National Governing Body contrary to fact” be set aside. This ultimately narrowed the scope of the initial injunction granted by the IPEC.
Trade mark infringement
The IPEC found that the Defendants’ word sign had a low degree of visual and aural similarity but a strong conceptual similarity, leading to a medium similarity with the Claimant’s UKTMs. However, it found that the Defendants’ logo sign was also visually and aurally dissimilar with the same level of conceptual similarity as the word marks and the IPEC held that this instead had a low similarity. For both marks, the IPEC ruled that there was identical or a high degree of similarity in the services. The IPEC ultimately ruled that there was likelihood of confusion between the marks.
The Defendants argued that IPEC should have reached the conclusion that both of the Defendants’ Signs had a low degree of similarity as the assessment for both signs was the same. In addition, the Defendants appealed that there should have been no finding of likelihood of confusion in any case as:
The Claimant only proved one instance of actual confusion and the IPEC had already accepted that the Defendants were not aware of this confusion. The Defendants did not deem this instance to be of probative value as they had operated in parallel with the Claimant since around 2012/2013, relying on Stichting BDO v BDO Unibank Inc that absence of evidence of confusion becomes more significant the longer the period of parallel trade.
The IPEC failed to consider the matter from the perspective of the average consumer and was wrong to accept the Claimant’s argument that it had a monopoly as the sole NGB for gymnastics in the UK, meaning that the average consumer paid little attention when using or paying for services related to a gymnastics NGB.
Both grounds of appeal were dismissed by the Court of Appeal. Upon reading the judgment as a whole, the Court of Appeal was satisfied that the IPEC had correctly considered the differences between the Defendants’ Signs. In any event, this would not have changed the IPEC’s final assessment on likelihood of confusion, given the finding that there was a likelihood of confusion even where the similarity of the signs was low. The Court of Appeal also confirmed that the IPEC had considered the level of attention of the average consumer correctly in pointing out that children (i.e. competitors) and spectators at sporting events were likely to pay a low degree of attention whereas coaches, owners of sports clubs and NGBs or federations would pay a high degree of attention.
In relation to the absence of actual confusion, the Court of Appeal confirmed that none is required for a case to be made for likelihood of confusion. Its accepted the Claimant’s argument that the court must consider what opportunity there had been for confusion to occur and what opportunity there was to detect it, citing Samuel Smith Old Brewery (Tadcaster) v Lee. Here, the small scale of UKG and UKGA’s operations meant it was very possible that instances of confusion had been "masked" or not brought to the Claimant’s attention.
This case serves as a reminder that the overall balancing act conducted by the court takes into account the offsetting of a lower degree of similarity in the marks against the high degree of similarity in services and other factors, particularly in relation to the degree of attention by the average consumer.
The Court of Appeal has also reiterated the fact that evidence of actual confusion will be relevant even where such evidence is old, so long as it allows the court to consider whether the use of the mark provided an opportunity for such confusion to occur. It also confirmed the position under case law that no evidence of actual confusion is required to establish a claim under section 10(2) for likelihood of confusion.
UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association  EWCA Civ 425
British Amateur Gymnastics Association v UK Gymnastics Ltd & Ors  EWHC 1678
Stichting BDO v BDO Unibank Inc  EWHC 418 (Ch),  FSR 35 at 
Samuel Smith Old Brewery (Tadcaster) v Lee  EWHC 1879 (Ch),  FSR 7 at