Boxing Brands Ltd v Sports Direct International Plc & Ors

Trade mark infringement is assessed by comparing the sign and the goods identified in the relevant registration. A device containing a prominent word is not identical to the word mark where the device includes other significant elements. Use of the word alone may nevertheless constitute use of an identical sign. Similar goods, an identical or similar sign, and some distinctiveness may establish a likelihood of confusion even where the mark has limited inherent distinctiveness and no enhanced distinctiveness through use. An inquiry on a cross-undertaking is discretionary. It may be refused where the restrained goods were substantially infringing and the defendant suffered no real loss. Final relief must reflect the valid scope of the relevant registrations.

The claimant, associated with the QUEENSBERRY boxing brand, brought trade mark infringement proceedings against companies associated with Sports Direct. At the earlier trial, the claimant succeeded on the principal clothing dispute, but parts of two registrations were held invalid: UK marks 2,499,451 and 2,499,454? The present hearing addressed boxing equipment which had not been considered at trial, including whether the equipment infringed the claimant’s marks, whether the specification of mark 2,499,451 required further amendment, whether the defendants were entitled to an inquiry on the interim injunction cross-undertaking, and the appropriate final injunctions.

The central issues were whether the defendants’ device or the word QUEENSBERRY constituted an identical or similar sign, whether the goods were identical or similar, and whether there was a likelihood of confusion.

1. The court considered the defendants’ specialist boxing equipment separately from general sports and kit bags. Specialist equipment was ordinarily purchased by amateur or professional boxers or trainers, who would pay close attention to technical qualities. That did not mean they paid more or less attention to branding than general consumers.

2. The court reaffirmed its earlier finding that QUEENSBERRY had no high degree of inherent distinctiveness when connected with boxing. There had been no use sufficient to establish acquired or enhanced distinctiveness.

3. The defendants’ device was not identical to the word mark QUEENSBERRY because, although the word was prominent, the device also contained significant elements including a crown, shield, heraldic Q and lions. The court applied C-291/00 S.A. Société LTJ Diffusion v Sadas Vertbaudet S.A (Arthur et Félicie).

4. The defendants would have used the word QUEENSBERRY alone in relation to the goods. That would have been an identical sign for the claimant’s QUEENSBERRY registrations, but not for QUEENSBERRY RULES.

5. Head guards, gloves, pads, groin protectors, hand wraps, bags, shields and protectors, water bottles, training towels and first aid kits would infringe at least one valid registration. The court treated several goods as similar to clothing, footwear or headgear, and applied the likelihood-of-confusion analysis under section 10(2) and Article 9(1)(b). Boxing-specific bags were identical to specified luggage and bag goods, but the corresponding part of one registration was invalid.

6. Punch bags, corner pads, boxing rings, gym fitness equipment and tote buckets would infringe only invalid parts of the relevant registrations and therefore did not justify final relief. The court also rejected the claims based on QUEENSBERRY RULES for those goods.

7. An inquiry on the cross-undertaking was discretionary. It was refused because the defendants had intended to launch a wider range, much of which would have infringed, and had suffered no real loss caused by the injunction.

8. The specification and declaration for the relevant registration were to be amended. General injunctions were ordered for the validly infringed registrations, but no injunction was ordered on mark 2,499,451 because infringement of that mark in its valid form had not been established. The cross-undertaking inquiry was refused.

The judgment records earlier stages in the same first-instance proceedings:

• High Court (Chancery Division): trial judgment dated 25 July 2013, [2013] EWHC 2200 (Ch).
• High Court (Chancery Division): judgment on the scope of the injunction dated 30 July 2013, [2013] EWHC 2784 (Ch).
• High Court (Chancery Division): the present judgment determined the outstanding infringement, relief and cross-undertaking issues.