Boxing Brands Ltd v Sports Direct International Plc & Ors

Goodwill generated by a small, local boxing gym did not extend to clothing merely because the name appeared on garments worn by gym members or boxing participants. Use of a sign on clothing does not automatically amount to trade mark use for clothing.

For bad faith, knowledge that another party uses a sign is insufficient by itself. The court must assess the applicant’s intention and the objective circumstances, including the nature and legal protection of the other party’s use. A prior local right supports a defence only where it applies to the relevant goods or services. Acquiescence and estoppel require more than cooperation during negotiations which never produced a binding agreement.

Boxing Brands Ltd claimed infringement of its registered QUEENSBERRY trade mark against companies associated with Sports Direct. The defendants challenged the validity of the claimant’s mark under sections 5(4)(a), 3(6) and 46 of the Trade Marks Act 1994. They also relied on the section 11(3) defence, acquiescence and estoppel, and brought counterclaims concerning passing off and copyright.

The dispute concerned whether the defendants’ earlier use of QUEENSBERRY for a local boxing gym, boxing activities and limited branded clothing had generated protectable goodwill in clothing or other goods, and whether later dealings between the parties affected the claimant’s rights.

1. Validity and passing off. The defendants had sufficient goodwill to prevent another boxing gym opening in Bedford under the name QUEENSBERRY. That goodwill was very small and local. It did not extend to a boxing agency, clothing, footwear, headgear, sports equipment or related goods. The claim under section 5(4)(a) of the Trade Marks Act 1994 therefore failed.
2. The appearance of QUEENSBERRY on gym members’ shirts, corner-men’s polo shirts and boxers’ shorts did not establish use as a clothing trade mark. The garments identified membership of a gym or boxing team, rather than the commercial origin of the clothing. The limited exposure at boxing events did not create national goodwill.
3. Bad faith. The claimant’s principal had known that the defendants used QUEENSBERRY, but that knowledge alone did not establish bad faith under section 3(6). The claimant had independently conceived the clothing-brand idea, and the defendants were not using the name as a clothing brand when the application was filed. Registration was acceptable commercial behaviour.
4. Section 11(3). The defendants’ earlier right was not an earlier right in relation to clothing. The locality defence could not assist them against the clothing infringement claim.
5. Later conduct. The parties’ negotiations and limited cooperation did not create an unconscionable basis for acquiescence or estoppel. No binding agreement was concluded, the later use was limited, and the claimant’s March 2012 letter terminated any permission or acquiescence. The section 46(1)(d) challenge also failed because the relevant use was either without consent or too limited to render the mark misleading.
6. Other claims and later marks. The copyright claim failed because the defendants had shown no intention to use the winged logo. The passing-off counterclaim failed because the defendants’ goodwill remained confined to the local gym and minimal associated activities. The claimant’s 2,499,451 and Community Trade Mark 7,376,395 were invalid for specified goods in classes 16, 18 and 28 because the earlier device mark created a likelihood of confusion. The challenge to the 2,499,454 mark failed.
7. Orders. The claimant’s 2,485,784 mark was valid and its proposed clothing use would infringe. The copyright and passing-off claims were dismissed. The specifications of the 2,499,451 mark and Community Trade Mark 7,376,395 were amended to remove the specified goods.