Thom Browne Inc & Anor v adidas International Marketing BV & Ors
[2024] EWHC 2990 (Ch)
Athleta (ITM) INC. v Sports Group Denmark A/S & Anor
30 September 2024
[2024] EWHC 2449 (Ch)
High Court
Athleta sued SGD for using a similar name (ATHLECIA vs ATHLETA). The judge said the names were too similar for clothing, but not for other items. Athleta also lost parts of its trademark because it wasn't using them enough. Finally, Athleta's claim that SGD tricked customers also failed.
Key Facts
- •Athleta (ITM) Inc. (Athleta), part of the Gap Inc. group, sued Sports Group Denmark A/S (SGD) and Jarrold & Sons Limited for trademark infringement and passing off.
- •Athleta owns UK registered trademarks for ATHLETA (word and combination marks).
- •SGD sells women's activewear under the brand ATHLECIA.
- •Jarrold sold SGD's ATHLECIA clothing.
- •SGD admitted joint and several liability for Jarrold's actions.
- •Athleta claimed infringement under section 10(2) of the Trade Marks Act 1994 (TMA) and passing off.
- •SGD denied infringement, passing off, and sought to invalidate Athleta's marks for lack of distinctive character and non-use.
Legal Principles
Trade mark infringement under section 10(2) of the TMA requires: (a) identical or similar sign used in relation to similar goods/services; (b) likelihood of confusion.
Trade Marks Act 1994
Passing off requires: (1) goodwill or reputation; (2) misrepresentation; (3) damage.
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491
Genuine use of a trade mark requires actual use, more than token use, consistent with the essential function of a trade mark, real commercial exploitation, and consideration of all relevant circumstances.
Walton International Ltd v Verweij Fashion BV [2018] EWHC 1608 (Ch)
Invalidity of a trade mark under section 3(1)(b) and (c) of the TMA is assessed at the application date. A mark is invalid if devoid of distinctive character or consists exclusively of signs designating the goods' purpose.
Trade Marks Act 1994
Likelihood of confusion is assessed globally, considering all relevant factors from the perspective of the average consumer, who is reasonably well informed and circumspect but relies on imperfect memory.
Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24
Outcomes
Trade mark infringement claim partially successful.
Likelihood of confusion found only between Athleta's Combination Mark and SGD's Second ATHLECIA Combination Mark in relation to clothing due to high similarity, but not for the Word Mark.
Non-use revocation claim partially successful.
Athleta's marks revoked for goods/services not genuinely used in the UK or EU. Genuine use established for clothing and bags under ATHLETA Word Mark; clothing under ATHLETA Combination Mark.
Passing off claim unsuccessful.
Insufficient evidence of misrepresentation likely to deceive a substantial number of consumers. Goodwill found only for ATHLETA Word Mark in relation to clothing.
Invalidity counterclaim unsuccessful.
Athleta's marks were not devoid of distinctive character or exclusively descriptive.
Similar Cases
Lifestyle Equities CV & Ors v Royal County of Berkshire Polo Club Limited & Ors
[2024] EWCA Civ 814
AGA Rangemaster Group Limited v UK Innovations Group Limited & Anor
[2024] EWHC 1727 (IPEC)
Easygroup Ltd v Easy Live (Services) Limited & Ors
[2024] EWHC 2282 (Ch)
EasyGroup Limited v Easyfundraising Limited & Ors
[2024] EWHC 2323 (Ch)