In our earlier note, we discussed Mr Justice Birss’ finding that Topshop committed the tort of passing off, by selling a t-shirt with a photo of Rihanna on it.
Mr Justice Birss’ second decision related to the use of QUEENSBERRY as a trade mark in relation to clothing. The facts considered were more in the manner of a bona fide dispute between two parties with an interest in the same mark, QUEENSBERRY. It provides an indication of the kind of facts that won’t support an opposition based on passing off, or – for that matter – bad faith. As with the recent Australian decision of Dodds-Streeton J in Fry (discussed here), the timing of the filing was an all-important factor with regard to the application of the bad faith provision.
Boxing Brands Ltd v Sports Direct International Plc & Ors  EWHC 2200 (Ch) (25 July 2013)
Boxing aficionados will know that there is a “famous link between boxing and the 9th Marquess of Queensberry, John Douglas”.
Each of the parties owned trade mark registrations for QUEENSBERRY for “all sorts of goods and services”, but this dispute was around the use of QUEENSBERRY as a clothing brand.
BBL became aware of the proposed launch of a QUEENSBERRY brand of clothing in November 2012, and applied for and obtained an interim injunction against Sports Direct. As part of the order, Sports Direct undertook not to launch its QUEENSBERRY products until judgment.
The central point in this decision related to the validity of BBL’s UK TM registration 2486784 for a series of 3 QUEENSBERRY marks covering classes 25, 35, 41 and 42 (there were additional issues relating to the infringement defence in s11(2) of the UK Act and the invalidity of other aspects of BBL’s marks, that are not dealt with here).
Sports Direct attacked BBL’s UK TM ‘784 based on passing off (under s5(4)(a) of the UK Act) and the bad faith (s3(6).
Mr Justice Birss looked in quite some detail at to the activities of Sports Direct leading up to the 8 May 2008 priority date of BBL’s UK TM ‘784.
- Mr La Mura and Mr Goodwin of Sports Direct shared an interest in boxing. They decided to open a boxing gym in 2004.
- Details relating to the boxing gym were sparse. There was no advertising, no entry in the Yellow Pages, and no gym staff. There was no reliable evidence about the number of users of the gym. Mr La Mura said he had around 100, but Mr Justice Birss suspected that the true number was much lower. The gym “was not being run on a realistic commercial footing” as at May 2008.
- Mr Justice Birss accepted that the name QUEENSBERRY was used in association with the gym, and that the users knew the gym by that name.
- It was clear that there were t-shirts that carried the word QUEENSBERRY on a plain background in circulation, but it was held that the number of those t-shirts made up until May 2008 was tiny.
- Perhaps the best evidence of exposure for Sports Direct’s use of QUEENSBERRY related to a number of fights between October 2007 and April 2008, during which those associated with the gym wore various items marked with QUEENSBERRY.
- Mr Warren had been discussing developing a boxing brand since 2002.
- Mr Simons of Sports Network (Mr Warren’s main company at that time) negotiated to buy a UK registered TM for QUEENSBURY (with a “U”) in July 2006 from Strikeforce. This took place before any suggestion of influence from anything done by Sports Direct. It was not until January 2008 that the agreement was reached with Strikeforce.
- There was also evidence of contact between BBL’s Mr Warren and Sports Directs’ Mr La Mura before May 2008. Perhaps most notably, Mr Warren was present at a boxing event in February 2008, where he spoke to Mr La Mura (there was film footage of the conversation in evidence), and where the Sports Direct team were wearing QUEENSBERRY BOXING.COM polo shirts.
Sports Direct argued that the QUEENSBERRY brand had been exposed to a wide audience as a result of its activities. BBL doubted that there was even a business to which the goodwill could attach as at May 2008.
Weighing all these factors and applying the trinity of passing off factors from Reckitt & Colman v Borden, Mr Justice Birss held as follows:
- The gym business was tiny and the geographical extent of its goodwill was entirely localised. There was “just” enough of a business to which a goodwill could attach. If another boxing gym opened under the same name around Bedford, there was a likelihood of deception.
- At best, the exposure of Sports Direct’s QUEENSBERRY mark at fights could only be regarded as promotion for the boxing gym.
- Similarly with Fenty, “the fact that a word appears on clothing does not automatically mean the sign is being used as a clothing trade mark and does not mean it would be necessarily understood by anyone as such”.
- The t-shirts were only sold to persons associated with the gym, and indicated only that the person wearing the t-shirt was a member of the gym.
- The polo shirts worn at the fights would also not be seen as indicators of the origin of the clothing, and neither were the uses of QUEENSBERRY on other items.
- Regarding Mr La Mura’s intentions, it was considered that the use of QUEENSBERRY was ostensibly in order to refer to and promote the gym.
Mr Justice Birss held that there was no goodwill in or relating to clothing (and the goodwill in relation to the gym was insufficient as against clothing), such that the s5(4)(a) case failed at the first hurdle. No one would be deceived if BBL used the mark QUEENSBERRY on clothing.
It was held that BBL’s Mr Warren must have known that Sports Direct was using QUEENSBERRY as at May 2008. However, that fact alone was insufficient to give rise to bad faith.
Mr Justice Birss relied in this regard on the decision of Lindsay J in Gromax, the Court of Justice (CJEU) in Lindt, and the more recent decision of the CJEU in Malaysia Diary v Ankenaevnet for Patenter og Varemaeerker (Case C-320/12 – 27 June 2013). In Malaysia Dairy, the CJEU held that: "the fact the applicant knows or should know that a third party is using such a sign is not sufficient in itself to permit the conclusion that that applicant is acting in bad faith. Consideration must, in addition, be given to the applicant's intention at the time when he files the application for registration of a mark, a subjective factor which must be determined by reference to the objective circumstances of the particular case." Mr Justice Birss stated that: “This must be right. If a business person decides entirely independently that they are going to register a given trade mark for a particular set of goods, the fact that they might happen to find out that someone else is also interested in the same thing cannot necessarily put them in a worse position. The issue will be highly sensitive to the circumstances”.
It was critical that as at May 2008 BBL had already independently conceived of using QUEENSBERRY as a clothing brand. Further, Mr Warren’s awareness of use by Sports Direct “as the name of a gym and/or a boxing team or stable” did not “fix” Mr Warren with notice that that mark was intended to be used by Sports Direct as a clothing brand.
Mr Justice Birss held that the trade mark application was not filed in bad faith. Instead, the filing for that mark by BBL “was entirely acceptable commercial behaviour” and “the fact that Mr Warren could be said to have won a race to the trade mark register in these circumstances does not amount to bad faith”.
The decisions are available here.