UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association

In a passing-off claim, the court must determine the misrepresentation actually pleaded. A finding that a defendant falsely claimed a status does not establish a different allegation that the claimant conferred that status. An injunction must correspond to the pleaded case and define with sufficient clarity what is prohibited.

Likelihood of confusion in trade-mark infringement is a multifactorial evaluation. On appeal, intervention requires an error of principle. Similarity may be assessed differently for word and logo signs where additional visual elements justify it, and low similarity does not preclude confusion. The assessment may consider differing consumer attention, opportunities for actual confusion to occur and be detected, and an effective monopoly which may lead consumers to assume that there is only one provider.

British Amateur Gymnastics Association owned trade marks and goodwill in British Gymnastics. UK Gymnastics Ltd, UK Gymnastics Affiliation Ltd and Christopher Adams used UK Gymnastics signs for gymnastics-related services. The claimant alleged trade-mark infringement and passing off.

HHJ Melissa Clarke held the defendants liable for trade-mark infringement and passing off: [2020] EWHC 1678 (IPEC). The defendants appealed, challenging the finding that UK Gymnastics Ltd was not a national governing body, the passing-off analysis, parts of the injunction, and the assessment of similarity and likelihood of confusion. The central issues were whether the pleaded misrepresentation had been decided, whether the injunction was certain and within the pleaded case, and whether the trade-mark assessment involved an error of principle.

Lord Justice Arnold gave the leading judgment. Lord Justice Bean and Lord Justice Lewison agreed.

1. National governing body. The judge was entitled to find that UK Gymnastics Ltd was not an NGB for gymnastics in the UK. She did not need to choose expressly between competing definitions because the defendants’ own definition was not satisfied. Reading the judgment as a whole, she preferred the approach in the Sports Councils’ Recognition Policy and distinguished being an NGB from being recognised as one.
2. Passing off. The pleaded third case concerned a misrepresentation that BAGA had conferred NGB status on the defendants. The judge instead found that the defendants had falsely represented that they were an NGB. That decided a different issue and did not establish the pleaded misrepresentation. The appeal was therefore allowed on the third passing-off claim. The first and second passing-off claims were not disturbed. The court did not need to consider a possible extended passing-off claim, which had not been pleaded.
3. Injunction. The parts restraining conduct denoting official or approved status and asserting NGB status contrary to fact were outside the pleaded case. They were also unclear and uncertain, particularly because NGB had not been defined. Those parts of the injunction were set aside.
4. Trade-mark infringement. The claims under sections 10(2) and 10(3) of the Trade Marks Act 1994 had both succeeded below. The section 10(2) assessment was multifactorial, so appellate intervention required an error of principle. The judge was entitled to assess the word sign as more similar than the logo signs because the latter contained additional typography and flag elements. Even low similarity could coexist with a likelihood of confusion. Actual confusion was unnecessary; its absence had to be assessed alongside the opportunities for confusion and detection, as explained in Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch) and Samuel Smith Old Brewery (Tadcaster) v Lee [2011] EWHC 1879 (Ch). The judge properly considered differing levels of consumer attention. It was also legitimate, applying Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341, to take account of an effective monopoly and the assumption that there was only one body. Grounds 4 and 5 failed. Ground 6, concerning section 10(3), did not require determination.

The appeal was allowed in part. The third passing-off finding and identified injunction terms were set aside. Otherwise, the appeal was dismissed.

• Court of Appeal (Civil Division) — In [2021] EWCA Civ 425, the appeal was allowed in relation to the third passing-off claim and identified parts of the injunction; otherwise it was dismissed.
• Business and Property Court, Intellectual Property Enterprise Court — HHJ Melissa Clarke held that the defendants had infringed the trade marks and committed passing off in [2020] EWHC 1678 (IPEC).