UK Gymnastics Ltd & Ors v British Amateur Gymnastics Association  EWCA Civ 425 (24 March 2021)
The Court of Appeal recently gave its judgment in a trade mark and passing off dispute between British Amateur Gymnastics Association (“BAGA”) and two defendants (1) UK Gymnastics (“UKG”) and (2) UK Gymnastics Affiliation (“UKGA”).
BAGA is recognised as the national governing body for gymnastics and is the proprietor of two UK registered trade marks which comprise of the words ‘British Gymnastics’ with and without the phrase ‘More than a sport’ beneath. The Defendants had used a word sign ‘UK Gymnastics’ and also a logo sign incorporating those words with a fragmented Union Jack above the text.
At first instance, HHJ Melissa Clarke sitting in the IPEC found the Defendants liable for infringement of BAGA’s trade marks and passing off. UKG were granted permission to appeal on six grounds following the previous proceedings decided in June 2020. The appeal grounds are explored below.
Ground 1 – National Governing Body Status
The Court of Appeal dismissed an appeal against a finding that the Defendants were not a National Governing Body (“NGB”), deciding that the judge at first instance had not erred in her decision making and that the finding was one that was clearly open to her on the evidence before the court.
Ground 2 – Passing Off
BAGA had asserted that the Defendants were liable in passing off in three ways, namely that the Defendants’ acts were likely to cause the public to believe that:
Ground 3 – Injunction
At trial, the judge granted an injunction against the Defendants, restraining them from passing off goods and services as those of BAGA, as subject to any commercial arrangement between the two parties or:
“otherwise denoting some form of official or approved status upon the Defendants or otherwise asserting to be a National Governing Body contrary to fact".
However, UKG appealed against this last part of the injunction for multiple reasons. Primarily that it extended beyond BAGA’s pleaded case (on the same basis as ground 2), that the wording was ungrammatical and unclear and that without a clear definition of an NGB there was uncertainty over the scope of the injunction.
The appeal judges agreed with this argument and held that the final part of the injunction be set aside.
Ground 4 – Assessment of marks
When considering the similarities between BAGA’s trade marks and UKG’s signs, the trial judge found that “the real difference” was “the use of ‘UK’ rather than ‘British’. She accepted that the marks were both visually and aurally very different but found that conceptually there was a strong similarity. The judge found the Defendant’s logo sign had a low degree of similarity with BAGA’s trade marks and that the word sign had a “medium degree of similarity”. The Defendants appealed against this conclusion arguing that “logically, the finding should have been the same for both the Word Sign and the Logo Signs”.
The appeal judges did not accept this argument stating “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”. It was also noted that since the trial judge had found there was a likelihood of confusion between the marks even with the low degree of similarity, the degree to which there was similarity was a moot point.
Ground 5 - Likelihood of Confusion
The Defendants contended that the judge was wrong to find there was a likelihood of confusion between BAGA’s marks and UKG’s signs. The Court of Appeal also dismissed this ground, finding that the judge had correctly directed herself in this regard, in particular in directing herself that it is not necessary for the court to find actual confusion in order for a likelihood of confusion to be established and in properly assessing the differing degrees of attention that would be paid by different types of consumer.
Finally, the judge deemed it unnecessary to consider the sixth ground following the conclusions on the fourth and fifth grounds as this final ground concerned the judge’s alternative reasoning based on section 10(3) of the Trade Marks Act 1994.
The judges allowed the Defendants’ appeal against the third finding of passing off and discharged the last part of the injunction. All other parts of the appeal were dismissed, and the remainder of the injunction remains in force.
This case acts as a reminder to consider not just the visual and aural similarity between marks but also their conceptual similarities.
Written by Drew Layton
In Original Beauty v G4K, the High Court takes a closer look at when using someone else’s garment when designing your own stops being a source of inspiration and becomes an act of outright copying. The case concerns “Bodycon” and “bandage” garments, the garment style made famous in recent years by celebrities such as the Kardashians, Jennifer Lopez and Beyoncé.
Original Beauty alleged infringement of their unregistered design rights under UK and EU law and that the defendants had passed their brand “Oh Polly” off as a sister brand to the claimants ’“House of CB”. The defendants said the House of CB designs lacked originality and were common place, and that where they had used images of the claimants’ designs in their design process they had only been for inspiration rather than copied.
Looking at the design infringement claim, David Stone, sitting as Deputy High Court Judge, compared 20 House of CB designs against 20 Oh Polly designs.
For each design the judge first established when the claimants had created their design and the design process that to the design. It is worth noting that none of the defendants’ designs were created before any of the claimants’ designs (save for a few cases in which they had in any event been modified following the launch of the claimants’ design). As to the defendants’ design process in general, the judge highlights in his judgment that, Ms Henderson, the CEO of Oh Polly who designed many of the defendants’ garments, was not a designer and could in fact not draw. Rather the design process involved Ms Henderson designing garments in her head using for inspiration “digital mood boards” (essentially electronic folders of photos of third-party garments found on the internet).
Having considered the chain of events and the design processes the judge then moved on to consider whether the claimants’ UK unregistered design right (UKUDR) and Community unregistered design right (CUDR) were valid. Following which he then considered if the defendants’ design infringed any of these rights.
The judge found that the UKUDRs for all the claimants’ designs were all valid as none of them lacked originality or were commonplace over prior designs pleaded in the defence. The judge also found the CUDRs in all the claimants’ designs to be valid, finding that none of them produced the same overall impression as the prior designs.
When considering whether a design infringed the UKUDR the judge had to establish whether it had been made exactly or substantially to the claimants’ design. For several of the defendants’ designs, screenshots of the claimants’ design had been used as the source, sometimes the only source, of inspiration in the design process. This, combined with the timing of the creation of the two designs, led the judge to find that 7 of the defendants’ designs had been made substantially, if not exactly, to the claimants’ designs and so infringed the claimants’ UKUDR in those designs.
Given that 7 of the defendants’ designs were found to have been made substantially to the claimants’ designs it is not surprising that the judge did not find any of these designs to produce a different overall impression from the claimant’s design, thereby also finding them to infringe the CUDR in those designs (although for one only one colour way was found to infringe the CUDR). Even though some of the defendants’ designs had differences from the claimants’ designs such as lacking a buckle, these were perceived as too subtle to cause an overall different impression. It is perhaps not surprising that the judge found these differences to be too insubstantial to create a different overall impression in designs where he had already established there was infringement of the UKUDR.
In relation to the passing off claim, the judge found that the defendants’ Oh Polly brand had obtained and copied the claimants’ business model, social media marketing etc. and had gained an advantage from of the success of the House of CB brand. However, the claim that the defendants had passed off their Oh Polly brand as a sister brand of House of CB failed because the claimants failed to prove deception. Although customers had noticed similarities between the brands none had been deceived. This was shown by comments such as "Oh Polly fully copying House of CB designs" and "Oh Polly wanna be House of CB so bad" on social media.
Overall the judge’s findings are not surprising. He was unimpressed by the defendants’ design evidence and commented that “there was an attitude of “couldn’t care less” about the rights of others”. Accordingly he held that “the circumstances of the case … [were] sufficient to warrant an award of additional damages in relation to [the 7] designs”.
Written by Hannah Elam.
EIP is delighted to have won two awards at the prestigious Managing IP Awards – UK Firm of the Year for Patent Contentious and Impact Case of the Year.
The Managing IP Awards recognise remarkable achievement by firms and individuals in the past 12 months.
It is the fourth year in a row that EIP has presented with the UK Firm of the Year - Patent Contentious award. Following EIP's win at the Supreme Court for Unwired Planet and Conversant Wireless against Huawei and ZTE Managing IP has also awarded EIP Impact Case of the Year. The decision which was handed down in August 2020 carried significant implications worldwide for licensing of intellectual property in the area of telecoms.
Gary Moss, Head of EIP's Litigation team said: "These awards are recognition of the hard work which the EIP team has undertaken over the past seven years on this landmark and ground breaking litigation, which has been acknowledged throughout the world as one of the leading cases in the area of FRAND and SEPs. The Supreme Court case was the culmination of no fewer than four major trials at first instance and three major appeals to the Court of Appeal over a period of five years. EIP's team should feel justly proud that their hard work has been recognised in this way."
At a pre-trial review (“PTR”), heard on 19 March 2021, Lord Justice Birss, sitting down from the Court of Appeal, had to decide whether an infringement case based on the doctrine of equivalents which was brought after the initial Particulars of Infringement and Statement of Case on Infringement were served could be relied on by the patentee. In doing so, the Court also provided judgment on a point of principle about the way reliance on the doctrine of equivalents in patent cases should be pleaded.
The case is a patent revocation action brought by Facebook Ireland Limited against the patentee Voxer IP LLC under the Short Trials Scheme (“STS”) (CPR Part 57A and PD57AB, Section 2). Voxer allege that the Facebook Live and Instagram Live live-streaming features infringe its patent. The trial under the STS is due to start on 13 April 2021. There is parallel litigation in Germany and in the United States.
In relation to Voxer’s case on infringement, Voxer served their Particulars of Infringement and following an order, at the case management conference, to serve further particulars, further served a Statement of Case on Infringement. In neither document was a reference made as to whether infringement was advanced based on the doctrine of equivalents (Actavis v Eli Lilly  UKSC 48).
Relatively recently, Voxer served a draft amended Statement of Case on Infringement and sought to expand their infringement case in two respects based on the doctrine of equivalents. Facebook were prepared to accept one of the two new points but contended at the PTR that Voxer should not be permitted to advance the second one.
Facebook sought to rely on the IPEC case Kwikbolt v Airbus  EWHC 2450 (IPEC) (paragraph 14) arguing that one would normally expect a case under the doctrine of equivalents to be pleaded, including proper identification of the inventive concept. Voxer argued that there was no pleading requirement previously laid down in any decision of the Patents Court. Voxer added that Kwibolt was irrelevant because it was an IPEC case and in IPEC (by contrast with the STS) "all the facts and arguments" on which the party serving a pleading relies must be pleaded (CPR r63.20(1)).
The Court was clear that Voxer’s submission on this was wrong but nevertheless went on to permit Voxer to run the new argument on case management grounds. However, the Court went on to lay down a point of principle about pleading reliance on the doctrine of equivalents for future patent cases. As a starting point, the Court made clear that reliance on the doctrine of equivalents as part of an infringement case must be set out in the Particulars of Infringement, with reference to CPR Part 63 r.63.6 and Practice Direction 63, paragraph 4.1. Although equivalents is not specifically mentioned in PD63 paragraph 4.1, it would be erroneous to think otherwise.
The Court also made reference to CPR Part 16 about Statements of Case in general. Rule 16.4(1)(a) provides that Particulars of Claim must include "a concise statement of the facts on which the claimant relies". The Court pointed out that a case based on the doctrine of equivalents inevitably involves an assertion or assertions of fact which are distinct from the general questions of fact arising in relation to infringement on a normal construction. The first and the second Actavis questions necessarily include such distinct issues of fact. Therefore, by the application of the general rule 16.4, equivalence to a particular claim feature must be pleaded.
The Court has provided a clear judgment for future patent cases that reliance on the doctrine of equivalents is to be pleaded but stopped short of setting out details on how fully this needs to be done at the outset.
It seems enough, as per CPR r.16,4, for the Particulars of Infringement to contain a statement, by reference to each relevant claim that equivalence is relied on. Although, and probably as expected, if a patentee makes such an assertion which it cannot later explain in a claim chart or statement of case then no doubt the assertion will be struck out.
Additionally, for a normal multi-track Patents Court case, the time for a patentee to articulate their case on inventive concept and the other aspects of the test in Actavis would be when claim charts or a Statement of Case on Infringement is produced.
The judgment is available here.
Written by Myra Sae-Heng.
Court of Appeal overturns first instance judge and allows application to commit solicitor for contempt of court
This is an appeal against an Order refusing permission for committal for contempt of court. It is made as part of wider proceedings in which Ocado is alleging misappropriation of confidential information by Project Today Holdings Limited, a competitor established by one of Ocado’s original founders.
Upon being notified that an Order for Search of Premises and Preservation of Evidence had been granted (but before he had been provided with a copy), Mr McKeeve, a solicitor with 25 years’ experience, called his client’s IT manager and told him to “Burn it” (or “Burn all”). This resulted in the deletion of several accounts, including an app known as the 3CX account, irretrievably removing any messages sent. Ocado alleged that this was done to interfere with the due administration of justice.
The first instance judge refused permission, holding that Ocado’s arguments did not fulfil the standard of “at least a prima facie case” and that it was therefore not in the public interest to allow the committal application. Ocado could not show that the deleted documents were of such a nature as to fall within the Order, and the “inference that such documents did exist was both fragile and disputed”. The judge also took the view that intent could not be shown because Mr McKeeve was not aware of the terms of Order, and in particular its schedules, at the time he gave the instruction.
The judge further accepted Mr McKeeve’s explanation of his reason for making the call – that his wife’s name had been used as one of the pseudonyms on the 3CX account and he merely wanted to avoid dragging her reputation into the investigation. Mr McKeeve said in his evidence that he had no appreciation at all as to the effect of the Order, and that it never occurred to him that it might be inappropriate to delete the account.
The Court of Appeal stated that an appellate court should be cautious when interfering with a decision of a judge as to whether to grant permission in a contempt case. But went on to say that, in this case, the first instance judge “reached a conclusion which was plainly wrong”. They referred to several errors.
Firstly, the judge’s approach was too narrow and “placed both an unreasonable requirement on what Ocado needed to show […] and too restrictive an interpretation on the Search Order and the Particulars of Contempt”. The judge placed too much emphasis on the fact that Mr McKeeve had not been told the precise terms of the Order at the time he gave the instruction to “burn”, and so could not have known that messages on the 3CX app were relevant. As Ocado argued, Mr McKeeve knew of the proceedings against his clients, and would have known not to destroy documents that could potentially become relevant to those proceedings. Moreover, if he did not feel that the documents were relevant, he would not have been worried that his wife’s name would be involved and her reputation damaged.
The Court further considered that the first instance judge had erred when deciding that the 3CX app itself was not a “document”. The Court took the view that the app, or in any event the messages contained on the app, were certainly documents, and would therefore be covered by the Order.
Additionally, the Court was particularly critical of the judge’s approach to the affidavit evidence as to the nature of the messages on the 3CX app. The first instance judge stated that “nothing can be said about the nature of this material”. However, affidavit evidence adduced by Mr McKeeve, while stating that all messages were innocuous, also acknowledged that it was not purely a social chat – among other things, he mentioned messages that involved an Ocado employee that could have been relevant in showing the “degree and nature of the contact” with Project Today.
For these reasons and others, the Court of Appeal allowed the appeal, and granted permission for Ocado to apply for committal for contempt of court. The committal application is to be heard by a different judge who should also hear the trial. Mr McKeeve has self-referred himself to the SRA.
Written by Emily Atherton