The National Law Review reports…
A recent UK Court of Appeal case has highlighted the importance of assessing the conceptual similarity of marks and not just their aural and visual similarities, when considering a potential trade mark infringement.
The UK Court of Appeal was hearing an appeal from a decision of the Intellectual Property Enterprise Court concerning a claim by the British Amateur Gymnastics Association (“BAGA”) against UK Gymnastics and UK Gymnastics Affiliation (together “UKG”) for trade mark infringement and passing off. BAGA is a not for profit private company and recognised as the national governing body for the sport of gymnastics in the UK. UKG is a gymnastics sporting body that provides: membership services to individual gymnasts, gymnastics clubs and coaches; competitions; courses and badge/certification programmes among other services.
At first instance, HHJ Melissa Clarke found UKG liable for infringement of BAGA’s trade marks and passing off. UKG were granted permission to appeal on limited grounds which are listed below.
Passing off as a National Governing Body
UKG had previously tried to market itself as a “UK governing body for the sport of gymnastics” and had not been successful at first instance. In the appeal, the Court dismissed UKG’s argument that it was a governing body and determined they were not such an authority under the Sports Council Recognition Policy 2017 and found there was no evidence of the governance of the sport of gymnastics by UKG anywhere, let alone in the UK. Thus finding that the judge at first instanced had been correct in her analysis and dismissing this ground of appeal.
Passing off as connected with BAGA
On the second ground, BAGA alleged passing off by UKG in three ways and that members of the public would believe that UKG:
