The importance of having a strong trade mark portfolio was evident in a recent judgment given by Deputy High Court Judge David Stone.
The case was brought by Athleta, which sells women’s clothing under the brand ATHLETA, against Sports Group Denmark (SGD) and a UK retailer that sold ATHLECIA clothing. Athleta claimed trade mark infringement and passing off.
The claimant owns two UK trade marks for the word mark ATHLETA and the combination word and device mark pictured. It also claimed to own goodwill in four related signs.
SGD used signs comprising the word ATHLECIA on its own and in combination with a roundel device (pictured).
Invalidity attack
SGD attacked the registered marks on the grounds that they were descriptive and/or devoid of distinctive character. The judge dismissed these claims as hopeless.
SGD had more success in arguing that the marks had not been put to genuine use. The judge found that genuine use of the ATHLETA word mark was only proved for bags, clothing and headgear, while genuine use of the combination mark was proved only for clothing.
The remainder of the specifications (which had originally been very broad) were therefore revoked.
Trade mark infringement
Athleta alleged infringement under Section 10(2) Trade Marks Act 1994. The main issues were whether the signs used by SGD were similar to the ATHLETA marks, and whether the use of those signs gave rise to a likelihood of confusion.
Taking into account all the relevant factors, the judge reached different conclusions regarding the two marks.
He found no likelihood of confusion between the ATHLETA word mark and the use of ATHLECIA, saying that while they were highly aurally, visually and conceptually similar, both the mark and the sign were weakly distinctive. He said the ATHLETA Word Mark was therefore not entitled to a scope of protection so broad as to encompass ATHLECIA:
“In my judgment, in order to infringe, a sign used by a third party would have to be closer to the ATHLETA Word Mark than ATHLECIA. ATHLETA, as Athleta's counsel (quite rightly) conceded, does not get the broad scope of protection attributable to highly distinctive marks, such as KODAK. This is the case whether the goods being compared are similar or identical. I do not consider that a significant proportion of average consumers would be confused.”
However, he found a likelihood of confusion between the ATHLETA combination mark and ATHLECIA’s combination sign (pictured above), saying:
“In my judgment, the roundel makes a difference to the overall assessment, and not in the way that SGD's counsel submitted. In my judgment, the roundels are sufficiently similar, particularly taking into account imperfect recollection (as I must), to increase the likelihood of confusion. I do not consider that a reasonably circumspect consumer is likely to be confused where the goods are only similar - but I do consider that that likelihood exists where the goods are identical.”
Passing off
While the judge found there was goodwill in the ATHLETA mark (but not in the signs with roundels), there was no misrepresentation. “I do not consider that a substantial proportion of consumers will be misled by SGD's uses of ATHLECIA. Consumers will understand that they are different activewear brand,” he said.
What does this mean?
While this was a detailed judgment that covered a lot of issues, one key takeaway is the importance of having multiple IP rights in your armoury.
While Athleta failed in its trade mark infringement claim regarding the word mark, and in its passing off claim, it succeeded based on its combination mark.
This shows the value of filing trade mark applications to protect all key aspects of your brand to increase the chances of success in enforcement.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com