Athleta (ITM) INC. v Sports Group Denmark A/S & Anor

Trade mark infringement and passing off depend on the evidence in the particular case. For online use to count as genuine use of a UK trade mark, mere accessibility to UK consumers is insufficient. The evidence must show targeting of consumers in the relevant jurisdiction.

A coined mark which alludes to a characteristic of the goods may nevertheless be distinctive, but its common allusive element may receive limited protection. Similarity between signs must be assessed globally, taking account of visual, aural and conceptual similarity, imperfect recollection, the goods and the distinctive character of the earlier mark.

Genuine use and goodwill are distinct inquiries. A variant may support continued registration, but goodwill accrues only in a sign actually used. The claims succeeded only in relation to one composite sign used on clothing.

Athleta owned UK registrations for the word mark ATHLETA and a composite word-and-device mark. Sports Group Denmark used ATHLECIA signs on clothing, bags, headgear and footwear, and Jarrold retailed those goods in the United Kingdom.

Athleta claimed infringement under section 10(2) of the Trade Marks Act 1994 and passing off. Sports Group Denmark counterclaimed for invalidity under sections 3(1)(b) and 3(1)(c), and for revocation for non-use.

The central issues were the validity and scope of the ATHLETA registrations, whether genuine use and UK goodwill had been proved, whether the signs were confusingly similar, and whether the use constituted passing off.

1. Validity. The ATHLETA marks were neither descriptive nor devoid of inherent distinctive character at the relevant application date. The invalidity counterclaim under sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994 therefore failed. The court did not need to decide acquired distinctiveness.
2. Genuine use and revocation. Genuine use is assessed by reference to actual commercial exploitation, the relevant market, the nature and scale of use, its frequency, territorial extent and the goods or services for which the mark is used. Use of a variant counts only where the differences do not alter the distinctive character of the registered mark. The ATHLETA Combination Mark had been genuinely used only for clothing. The ATHLETA Word Mark had been genuinely used for bags, clothing and headgear. The remaining goods and services were revoked for non-use.
3. Online and internal use. Foreign websites and social-media postings do not constitute relevant UK or EU use merely because consumers can access them. Targeting of consumers in the relevant jurisdiction is required. Manufacturing in the United Kingdom for export can constitute genuine use where the use is directed towards finding a market abroad.
4. Infringement. The six conditions for section 10(2) infringement were applied. ATHLETA and ATHLECIA were highly similar in visual, aural and conceptual terms, but the common element ATHLE was weakly distinctive and the word mark was therefore entitled to only a narrow scope of protection. There was no likelihood of confusion between the word marks. The similar roundels materially increased the likelihood of confusion between the ATHLETA Combination Mark and the Second ATHLECIA Combination, but only for identical clothing. The essential functions of the composite mark were consequently affected.
5. Passing off. Athleta established UK goodwill in ATHLETA for clothing, but not in bags or the composite signs. The use of ATHLECIA did not amount to a misrepresentation because a substantial proportion of consumers would not believe that the defendants’ goods were Athleta’s goods. The passing-off claim therefore failed.
6. The trade mark infringement claim succeeded in part. The invalidity counterclaim failed. The passing-off claim failed. The ATHLETA registrations were revoked to the extent stated in the judgment.