British Amateur Gymnastics Association v UK Gymnastics Ltd & Ors

A sign may infringe under section 10(2) where the goods or services are identical or similar, the marks have sufficient overall similarity, and the global assessment shows a genuine likelihood that the public will believe the undertakings are economically connected. Mere association is insufficient.

Under section 10(3), a link between the marks, together with a serious risk of detriment or unfair advantage, may establish infringement without proof of actual loss. Passing off requires goodwill, misrepresentation and damage. The court may assess confusion in light of the claimant’s recognised status, reputation, the attention likely to be paid by different consumers, and the overall context of use.

The claimant, the recognised national governing body for gymnastics in the United Kingdom, brought claims for trade mark infringement and passing off against organisations using “UK Gymnastics” signs and related get-up.

The defendants disputed similarity, likelihood of confusion, the existence of a link for section 10(3), detriment, unfair advantage, due cause and misrepresentation. The central issues included whether the first defendant was itself a national governing body and whether the signs would lead the relevant public to believe that the defendants’ services were connected with the claimant.

1. National governing body. The first defendant was not an NGB. The evidence showed no real governance or stewardship of gymnastics throughout the United Kingdom, no adequate transparency, quality assurance, external oversight, disciplinary framework or international connection, and no effective talent pathway. The claimant was the only NGB, and the only recognised NGB, for gymnastics in the United Kingdom.
2. Section 10(2). The court applied the global assessment required by Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24. The services were identical or highly similar. “British Gymnastics” and “UK Gymnastics” had medium conceptual similarity despite low visual and aural similarity. The claimant’s enhanced distinctive character, its longstanding sole-NGB status, imperfect recollection and the varying attention of consumers were relevant. There was a genuine likelihood that lower-attention consumers would believe the signs denoted the claimant or an economically connected undertaking. The use therefore infringed section 10(2).
3. Section 10(3). The signs created a link with the trade marks. Because the defendants’ services were not provided with comparable quality, safety and scrutiny, there was a serious risk of detriment to distinctive character and reputation. The evidence, including near-copy proficiency badges, similar motifs, copied website wording, use of event footage and inclusion of the claimant’s clubs, established that the signs were intended to and did take unfair advantage. The use was without due cause. Section 10(3) infringement was established.
4. Passing off. The claimant had goodwill. The defendants’ representation that they were an NGB was false and amounted to a misrepresentation. The same likelihood of public belief in a connection with the claimant established likely damage to goodwill. The passing-off claim succeeded.
5. The claimant succeeded in the entirety of its claim.