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

A weakly distinctive trade mark has a narrower scope of protection, but remains capable of being infringed by a sufficiently similar sign. Similarity and confusion must be assessed globally.

For composite marks, changing the spatial arrangement of identical word and device elements may not materially reduce similarity where consumers may imperfectly recollect the arrangement. For variant use, the question is whether the difference alters distinctive character, not merely whether it is noticed.

Website advertising constitutes territorial use only where the site is objectively targeted at consumers in the territory; accessibility alone is insufficient. Advertising alone will rarely prove genuine use. Retail displays and swing tags denoting trade origin may contribute to goodwill.

Athleta appealed against findings made by David Stone, sitting as a Deputy High Court Judge, in [2024] EWHC 2449 (Ch). The High Court dismissed the invalidity counterclaim, partially revoked two comparable UK trade marks for non-use, found limited infringement of the ATHLETA Combination Mark, and dismissed the passing-off claim.

The appeal concerned genuine use of the Combination Mark for bags and headgear, the distinctiveness and scope of protection of the ATHLETA Word Mark, the visual similarity and variant use of composite marks, and goodwill in the ATHLETA Dark Pinwheel. The central questions were whether the judge had made appealable errors in assessing genuine use, likelihood of confusion, and goodwill, and what consequences followed for infringement and passing off.

Arnold LJ gave the judgment of the court, with Miles and Singh LJJ agreeing. The appeal was allowed in part and otherwise dismissed.

1. Appellate review. Findings of fact could be disturbed only if rationally insupportable. A multifactorial evaluation could be revisited only for an error of law or principle, including a gap in logic, inconsistency, or failure to take account of a material factor: Volpi v Volpi and Lifestyle Equities CV v Amazon UK Services Ltd.
2. Genuine use and targeting. Under the Trade Marks Act 1994, the proprietor bears the burden of proving genuine use by solid and objective evidence. Mere accessibility of a website is insufficient; targeting is assessed objectively from the perspective of the average consumer by evaluating all relevant circumstances. The US-facing website showed some targeting of UK and EU consumers, but the evidence of Combination Mark use for bags and headgear was sparse, there was no evidence concerning visits to the relevant pages, and there was little or no evidence of actual sales. Ground 1 therefore failed. No impermissible de minimis rule had been applied.
3. ATHLETA Word Mark. The judge was entitled to treat ATHLETA and ATHLECIA as weakly distinctive in relation to activewear because ATHLE was allusive of athlete or athletic. The differing suffixes could be considered despite the overall similarity of the marks. There was no error of principle in finding no likelihood of confusion. A contrary decision of a foreign court did not establish an appealable error.
4. Combination Mark. The judge’s conclusion that the position of the roundel made the First ATHLECIA Combination materially less similar than the Second was inconsistent with his assessment that the difference was not significant. The constituent elements were identical, such arrangements commonly vary, and consumers could imperfectly remember their spatial arrangement. Both combinations therefore gave rise to a likelihood of confusion and infringed the Combination Mark for clothing. The correct variant-form test was whether the difference altered distinctive character, not whether consumers noticed it. Both pinwheel forms constituted use of the Combination Mark, although this did not alter the revocation outcome.
5. Passing off. The finding that use of the ATHLETA Dark Pinwheel in John Lewis stores did not generate goodwill was rationally insupportable. The displays and swing tags denoted trade origin and contributed to goodwill. Applying the judge’s contingent findings on misrepresentation and damage, passing off was established for clothing in relation to both ATHLECIA Combination signs, but not ATHLECIA alone. The novel question whether variant forms can independently generate goodwill was left undecided.

1. Court of Appeal (Civil Division): Appeal allowed to the extent of reversing the findings that the First ATHLECIA Combination did not infringe the ATHLETA Combination Mark and that the First and Second ATHLECIA Combinations did not constitute passing off. The appeal was otherwise dismissed.
2. High Court, Intellectual Property List (ChD): David Stone, sitting as a Deputy High Court Judge, decided the claim and counterclaim in [2024] EWHC 2449 (Ch). The invalidity counterclaim failed; the marks were partially revoked for non-use; limited infringement was found; and passing off was dismissed.