The Court of Appeal has upheld a finding of trade mark infringement, but overturned a passing off finding, in a case concerning two UK trade marks for British Gymnastics. The Court’s judgment in UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association  EWCA Civ 425 was published on 16 March 2021.
The dispute was between British Amateur Gymnastics Association (BAGA), proprietor of two UK trade marks for British Gymnastics, and UK Gymnastics (UKG), which uses both the word UK Gymnastics and logos incorporating those words.
At first instance, HHJ Melissa Clarke found there was trade mark infringement and passing off and granted an injunction. She concluded that the word sign UK Gymnastics had a medium degree of similarity to the trade marks but that the logo had a low degree of similarity.
On appeal, UK Gymnastics argued that this finding was inconsistent. But writing the judgment for a unanimous Court, Arnold LJ said: “I think it is reasonably clear why the judge considered that there was a difference between the Word Signs and Logo Signs which meant that the latter were less similar than the former to the Trade Marks.” Notably, he said that the logos included visual elements which were not present in the Word Sign, namely typography (block capitals and in one case the letters “UK” being more prominent) and the flag elements. “In those circumstances I consider that it was open to the judge without erring in principle to make a differential assessment of the level of similarity,” he said.
He also rejected the argument that the judge was wrong to find that there was a likelihood of confusion, saying she correctly stated that it is not necessary to find actual confusion in order to establish likelihood of confusion and she had correctly considered the level of attention paid by the average consumer.
Overturning part of the passing off claim, Arnold J agreed with the appellants that the judge had found passing off on the wrong basis:
“It was not BAGA’s pleaded case that it was passing off actionable at the suit of BAGA for UKG to misrepresent that it was a [national governing body] for the sport of gymnastics in the UK contrary to the fact. Rather, BAGA’s case was that UKG was guilty of a misrepresentation that that status had been conferred upon it by BAGA. The judge did not consider whether UKG had made that misrepresentation, still less give any reasons for concluding that it had.”
The Court therefore set aside those parts of the injunction related to this claim.