British Gymnastics sticks landing on appeal, but wobbles on injunction

Last year, we reported that the Intellectual Property Enterprise Court (IPEC) had found in favour of national governing body (NGB) British Amateur Gymnastics Association (British Gymnastics), following its trade mark infringement and passing off claims against UK Gymnastics Ltd (UKG). You can read our detailed analysis of the case, which concerned use of word and device marks for 'UK GYMNASTICS', here.

Following an appeal by UKG, the Court of Appeal (CoA) has now upheld the IPEC's decision through a unanimous judgment. The scope of the injunction granted in favour of British Gymnastics at first instance has however been narrowed. 

The Competitors

The Claimant, British Gymnastics, is the only recognised NGB for gymnastics in the UK. As outlined in our previous blog, British Gymnastics has traded under the name ‘British Gymnastics’ and built substantial goodwill in that name since the mid-nineties. In 2017 and 2018, British Gymnastics registered a series of two UK trade marks for 'British Gymnastics, More than a sport' and 'British Gymnastics' (Claimant’s TMs).

Since about 2012, UKG has advertised, offered and provided membership, education and competition services to individual gymnasts, gymnastic clubs and coaches under both word and logo signs for ‘UK Gymnastics’ (Defendants’ Signs).  

The Appeal (grounds)

The Defendants challenged the IPEC's finding on the following grounds:

1. the IPEC erred in its finding that UKG was not an NGB;
2. the IPEC specifically erred in its finding that UKG had passed off that a particular status had been conferred on it by British Gymnastics;
3. at least part of the injunction granted to British Gymnastics should be set aside;
4. the IPEC erred in its assessment of the level of similarity between the Claimant's TMs and the Defendants' Signs; and
5. the IPEC was wrong to find that there was a likelihood of confusion with the Claimant's TMs.

The Appeal (the outcome)

NGB status and passing off (appeal grounds 1 and 2)

The CoA rejected the first NGB related ground but found that HHJ Clarke had erred in her finding of one of the three counts of passing off (ground 2). 

In relation to NGB status, the IPEC’s decision was found to be correct: not only did UKG not comply with the definition of an NGB in the Sports Councils' Recognition Policy 2017, it didn't even comply with its own definition.

In relation to UKG's appeal against the IPEC's finding that it had passed itself off as having a particular status conferred on it by British Gymnastics, the CoA found that the IPEC had made an error and allowed the appeal on that ground.  This was because British Gymnastics had not pleaded that UKG had misrepresented that it was an NGB for the sport of gymnastics. Rather, it had pleaded that UKG had misrepresented that NGB status had been conferred on it by British Gymnastics. As the IPEC had not tried the issue as pleaded, the CoA held that that finding of passing off had been made in error. However, the CoA did find passing off on other grounds, including that UKG had misrepresented that the services it provided were connected to British Gymnastics, when, in fact, they were not. 

Injunction (appeal ground 3)

As a result of the finding on appeal ground 2, the CoA set aside part of the injunction that had been granted by the IPEC, in particular the prohibition on UKG passing off any goods or services as "otherwise denoting some form of official or approved status upon the Defendants or otherwise asserting to be a National Governing Body contrary to fact". 

It was accepted by the CoA that these words extended beyond what British Gymnastics had pleaded in its case. Furthermore, the wording was ungrammatical and unclear, and the scope of the last part of the injunction was uncertain as "National Governing Body" was not defined. Consequently, that part of the injunction was discharged and the part that remained was limited to: "otherwise pass off any business or goods or services as being the business or goods or services of the Claimant or otherwise associated or connected with the Claimant or otherwise the subject of some commercial arrangement involving the Claimant." 

Trade mark infringement (appeal grounds 4 and 5)

In relation to the IPEC's decision on trade mark infringement, UKG argued that the IPEC: 

• should have reached the conclusion that both of the Defendants’ Signs had a low degree of similarity as the assessment for both signs was the same; and 
• should not have made any finding of a likelihood of confusion between the marks in question. 

Both grounds of appeal were dismissed by the CoA. The CoA was satisfied that the IPEC had correctly considered the differences between the Defendants’ Signs. Furthermore, even if a low degree of similarity had been found, this would not have altered the IPEC’s assessment on likelihood of confusion.  

The CoA also confirmed that the IPEC had considered the level of attention of the average consumer correctly by pointing out that children and spectators at sporting events were likely to pay a low degree of attention to the marks in question. On the other hand, coaches, sports club owners and NGBs would pay a high degree of attention to the marks in question. Both categories of consumers needed to be considered. 

The Judging Panel: Final Comments 

This case neatly demonstrates the Court's approach in offsetting a low degree of similarity in two marks against a high degree of similarity in services. It also sheds light on the fact that there may be more than one 'level' of attention that should be considered when assessing the relevant average consumer. In this instance, the wide scope of who the average consumer was meant that both a high and low degree of attention would be paid to the marks in question.  

The case is also a timely reminder of the well-established principle that injunctions need to be drafted precisely enough so as to be clear as to what the defendant can and cannot do.

The full decision can be read here: UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association [2021] EWCA Civ 425 (24 March 2021)