Perfect Landing For British Gymnastics In Trade Mark Infringement Case

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British Amateur Gymnastics (“British Gymnastics”) has succeeded in trade mark infringement and passing off proceedings against an organisation using the sign “UK Gymnastics”.

Background

The claimant, British Gymnastics is a National Governing Body (“NGB”) for gymnastics in the UK, with the remit of governing and administering the sport at national level. It owns registered trade marks in the UK for “British Gymnastics, More than a sport” and “British Gymnastics” under which it operates, both of which include education, training, entertainment and sporting activities.

UK Gymnastics (“UKG”), trading as “UK Gymnastics”, offer membership, organise gymnastic competitions and provide training and education to coaches and gymnasts.

Trade Mark Infringement

The Intellectual Property Enterprise Court found that use of the sign “UK Gymnastics” by UKG would cause a likelihood of confusion and be detrimental to the distinctive character and reputation of British Gymnastics’ registered trade marks. Accordingly, UKG was found to have infringed sections 10(2) and 10(3) of the Trade Marks Act 1994.

Passing Off

For the same reasons, the Court concluded that British Gymnastics had established goodwill, and that UKG’s actions constituted misrepresentation and caused damage. Therefore, the passing off claim also succeeded.

Comment

Although UKG had tried to argue that it was also a NGB, the Court found that it was not because there was no evidence that it acted in such a way and had no governance structure. Accordingly, British Gymnastics’ marks had distinctive character as it was the only NGB for the sport. The case also serves as a reminder that brand protection is available for names that may appear generic and not capable of legal protection. Accordingly, sports and leisure clubs should seek expert legal advice before adopting a name which may infringe an NGB for their sport.

British Amateur Gymnastics Association v UK Gymnastics Ltd & Ors [2020] EWHC 1678 (IPEC) (26 June 2020). A full copy of the judgment can be found here.