KBF Enterprises Ltd v Gladiator Nutrition 3.0Ltd & Ors

Trade mark infringement under section 10(2) is assessed globally, through the eyes of the relevant average consumer and at the date the defendant’s use commenced. Composite marks must be considered as wholes, although an element may retain an independent distinctive role. The absence of actual confusion is relevant only in light of the opportunity for confusion to occur and be detected. An own-name defence requires use in accordance with honest commercial practices; adoption of a new trading name which conflicts with an existing mark is unlikely to satisfy that requirement. A sole director or shareholder does not automatically bear an evidential burden to disprove joint tortfeasance. A claimant relying on passing off must prove goodwill at the relevant date.

The claimant sold sports nutrition products under four UK marks containing or consisting of Warrior. The defendants sold nutritional supplements under The Warrior Project and related signs. The claimant alleged infringement under section 10(2), passing off and related personal liability. The defendants relied on an own-name defence and counterclaimed that the marks were invalid because Mr Singh had earlier goodwill in Warrior.

The issues included likelihood of confusion, the relevant distinctiveness of Warrior, the own-name defence, goodwill and passing off, joint tortfeasance, and the alleged earlier rights.

1. Likelihood of confusion. The relevant date was when use of the defendants’ signs commenced, in about September or October 2015. A change from silver to black packaging was not material, so it did not create a new relevant date.
2. The court applied the established global assessment, considering the marks and goods as a whole, the relevant average consumer, imperfect recollection, visual, aural and conceptual similarity, distinctiveness, and the context of sale. Warrior had an average level of distinctiveness. The goods were identical or highly similar. The Warrior and Warrior Supplements marks had sufficient similarity to The Warrior Project signs to create a likelihood of confusion. The differences in Warrior Blaze and Warrior Fat Burner prevented such a likelihood.
3. The absence of reliable evidence of actual confusion did not determine the issue. Its significance depended on the scale and duration of the parallel trading and the opportunity for confusion to occur and be detected.
4. Own-name defence. Mr Singh had not established that Warrior was his trade name. In any event, his use was not in accordance with honest commercial practices. He adopted The Warrior Project in knowledge of the claimant’s marks, without evidence of clearance or steps to distinguish the products, and had insufficient justification for using a closely similar sign.
5. Passing off and earlier rights. The claimant had not proved goodwill or an enhanced reputation by the relevant dates for its passing-off and enhanced-distinctiveness cases. Mr Singh likewise failed to prove earlier goodwill in Warrior for fitness or bodybuilding, and the counterclaim for invalidity and passing off failed.
6. Joint tortfeasance. The mere fact that Mr Gardner was sole director and indirect sole shareholder did not shift the evidential burden. The Fourth Defendant was not a one-man company, and the claimant failed to prove that Mr Gardner acted pursuant to a common design.
7. The claim succeeded under section 10(2) against the Second, Third and Fourth Defendants in respect of Warrior and Warrior Supplements. The counterclaim failed. The court was to hear counsel on the appropriate order, taking account of the late abandonment of the section 10(3) claim.