QUEENSBERRY trade mark dispute considered by the High Court

Case: Boxing Brands Ltd v Sports Direct International plc and others [2013] EWHC 2200 (Ch)

Background

Trade Marks Act 1994

A trade mark shall not be registered if or to the extent that either:-

  • The application is made in bad faith (section 3(6));
  • It is similar to an earlier trade mark and is to be registered for goods or services identical with, or similar to, those for which the earlier trade mark is protected, and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark (section 5(2)(b)); or
  • Its use is liable to be prevented by virtue of the law of passing off (section 5(4)(a)).

Section 46(1)(d) of the Act provides that the registration of a trade mark may be revoked on the grounds that, in consequence of the use made of it by the proprietor or with his consent, in relation to goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

Passing Off

The elements of passing off are as described in the case of Reckitt & Colman Products Limited v Borden Inc. [1990] RPC 341:-

  • A goodwill or reputation attached to the relevant goods or services;
  • A misrepresentation by the defendant to the public (whether or not intentional) leading, or likely to lead, the public to believe that the goods or services offered to him are those of the claimant;
  • Damage to the claimant, arising from the erroneous belief (caused by the defendant’s misrepresentation) that the source of the defendant’s goods or services is the same as the source of those offered by the claimant.

Facts

The Claimant was a company associated with the well-known boxing promoter, Frank Warren, and owned various UK registered trade marks and one community trade mark with the word mark QUEENSBERRY.  The defendants were associated with Sports Direct, a well-known retailer.  The second defendant was the successor to a boxing gym with the name “Queensberry” or “Queensberry Boxing” who chose to use the name “Queensberry” due to the famous link between boxing and the 9th Marquess of Queensberry.

The defendants already owned a figurative mark “Queensberry Boxing 1867” and in December 2008 the claimant successfully opposed their application to register the mark in class 25 (clothing etc).

A meeting in 2009 took place between Mr Warren and two of the defendants where it was established that the parties would work together in future though a binding contract was never entered into.  This relationship lasted until April 2011.

In October 2010 and April 2011 the defendant applied for registration of a figurative mark incorporating “Queensberry” which included a winged logo in various classes, including again, class 25 for clothing but later accepted that the application should be revoked and withdrawn as the winged logo had been designed by a graphic designer for the claimant.

The claimant learned in November 2012 that a clothing brand “Queensberry” was being launched at Lilywhites in London and applied for an interim injunction, which was successful.

As the parties wanted to sell clothing under the “Queensberry” mark the core issue was to the claimant’s 784 Mark.  The defendants argued that:

  • The 784 Mark was invalid under sections 5(4)(a), 3(6) or 46(1)(d) of the Act;
  • That even if the 784 Mark was valid, any sales by them of clothing under the name “Queensberry” would not infringe as they had a defence under section 11(3) of the Act;
  • The claimant was not entitled to relief due to acquiescence or estoppels, due to events after May 2008 when Mr Warren’s organisation and some of the defendants worked together for a period;
  • The claimant’s other three UK registered trade marks incorporating “  Queensberry” were invalid under section 5(4)(a), section 3(6) or section 46(1)(d) of the Act or because of section 5(2) of the Act.

The defendants also counterclaimed for a passing off against the claimant.

Decision

The court rejected that the claimant’s registered trade marks, other than the 784 Mark were invalid but held that the 784 Mark would be infringed by the sale of the third and fourth defendants’ clothing.  It was found that the second defendant’s counterclaim for passing off should be dismissed and the specification in the claimant’s QUEENSBERRY mark and QUEENSBERRY community trade mark where they related to various goods in classes 16, 18 and 28 were invalid and, as such, the specifications should be amended or removed.