Can a defendant in a trade mark opposition rely on the own name defence when the name in question is that of a TV character? The IPEC wrestled with that very question in KBF Enterprises Ltd v Gladiator Nutrition 3.0 Ltd [2018] EWHC 3041 (IPEC). The judgment contains valuable advice on how to fight against a likelihood of confusion when the dominant part of a trade mark is of only average distinctiveness.

 

KBF Enterprises (a sports supplements company that manufactures and sells products bearing its own trade marks “Warrior” and “Warrior Supplements”) owned UK trade mark registrations for WARRIOR SUPPLEMENTS, WARRIOR BLAZE, WARRIOR FAT BURNER and WARRIOR covering, amongst other things, nutritional supplements in class 5.

 

The five defendants in this case were:

1. Gladiator Nutrition 3.0 Limited, a dissolved company which used to run Gladiator Nutrition Shops;
2. Warrior Project Nutrition Limited, a company that marketed and sold “The Warrior Project” (TWP) branded goods;
3. Mr Daniel Singh, a bodybuilder, fitness instructor and professional wrestler who had appeared under the stage name “Warrior” in episodes of the Sky TV “Gladiators” programme shown in 2009, and company director of the first and second defendants;
4. Corex Fitness Limited, a company that marketed and sold “The Warrior Project” branded goods; and
5. Mr John Paul Gardener, the company director of the fourth defendant.

 

In July 2015, Mr Gardner registered the domain name warriorproject.co.uk. In October 2015, Deep Blue Sports Limited (a company of which Mr Gardener was then sole director) made an application to the EUIPO to register “The Warrior Project” logo (“the TWP logo”) shown below for various goods, including nutritional supplements in class 5.

 

 

By September 2015, sales of TWP branded nutritional supplements were being made on a wholesale basis to third party sports or nutrition shops and also through the first and second defendants. TWP goods were advertised on the website of the fourth defendant.

 

It was unclear when KBF Enterprises first noticed the defendants’ trading under TWP, but on 15 July 2016 KBF Enterprises applied to register its WARRIOR trade mark, a few days before it sent a letter of claim. Following the receipt of that letter, both the TWP logo and the domain name were transferred into Mr Singh’s name.

 

KBF Enterprises alleged that it had goodwill and reputation in the marks WARRIOR and WARRIOR SUPPLEMENTS and that the defendants had infringed all four of its registered marks in breach of s 10 (2) of the Trade Marks Act 1994. In addition, KBF Enterprises claimed that the defendants had passed off their goods as those of KBF Enterprises by use of TWP and the TWP logo.

 

The defendants alleged that KBF Enterprises’ use post-dated the commencement of Mr Singh’s use of the “Warrior” name and relied on the defence under s 11(2) of the Act of use of Mr Singh’s own trade name. The defendants also counter-claimed that KBF Enterprises’ trade marks were invalid by reason of Mr Singh’s alleged rights in the “Warrior” name in connection with fitness and/or bodybuilding activities acquired prior to KBF Enterprises’ first use of the marks. They also alleged that KBF Enterprises was passing itself off as connected with Mr Singh.

 

Recorder Amanda Michaels, whilst accepting that the word Warrior might have some allusive or evocative qualities when used in relation to nutritional goods (especially body-building), had no hesitation in finding that the allusions which Warrior might make to the characteristics of the goods were at too general a level and/or too far removed from the goods to be descriptive or of inherently low distinctiveness. She concluded that KBF Enterprises’ WARRIOR mark and the word “Warrior” used as part of its other marks and TWP had an average level of distinctiveness.

 

Noting that it was important not to dissect composite marks in an artificial way, the Recorder found that the dominant element of the WARRIOR and WARRIOR SUPPLEMENTS marks was the word “Warrior”. In her view, it was also more dominant (in terms of being more memorable for the consumer) than the word “Project”, which explained the examples in evidence of people abbreviating TWP to Warrior. Overall,

• The TWP marks had a high level of similarity to WARRIOR
• The TWP marks had an average level of similarity to WARRIOR SUPPLEMENTS
• The TWP marks had a low level of similarity to WARRIOR BLAZE and WARRIOR FAT BURNER.

 

The evidence of actual confusion adduced at the trial was minimal, and there was a lack of satisfactory evidence of KBF Enterprises’ trade under the various marks, in terms of turnover and geographical spread. Equally, the court was given no idea of the scale of the use of the TWP marks. However, as this decision shows, it is not necessary to prove any actual confusion for a claimant to succeed in establishing a likelihood of confusion.

 

Taking into account the identical or highly similar goods, the court found there was a likelihood of confusion between the TWP marks and KBF Enterprises’ WARRIOR and WARRIOR SUPLEMENTS but found that conceptual differences created by the additional words in WARRIOR BLAZE and WARRIOR FAT BURNER precluded any likelihood of confusion with the TWP marks.

 

Recorder Amanda Michaels rejected the own name defence because she was not persuaded that Mr Singh was trading under the name “Warrior” before November 2010 (the date of the earliest document showing use of Warrior marks by KBF Enterprises). Although Mr Singh (and others) made frequent references to his role in the TV show in the course of his trading activities, the evidence of his use of the name “Warrior” alone (without use of his full name) was not sufficiently consistent or extensive to show that “Warrior” was his trade name. Accordingly, the own name defence was not made out.

 

Finally, the court found that KBF Enterprises’ evidence was wholly inadequate to prove that it had goodwill in any Warrior names prior to July/September 2015 (when the defendants started to use the TWP marks in relation to nutritional supplements) and so rejected KBF Enterprises’ claim based on passing off. Mr Singh’s claim to goodwill didn’t fare any better. Although Recorder Amanda Michaels said she was “satisfied that Mr Singh believes that he is known to those in the fitness/bodybuilding milieu as Warrior or Dan Warrior Singh”, she also said she was “not satisfied that any reputation which he acquired through appearing on the TV show would have led to him having goodwill in the name Warrior for fitness and bodybuilding”. Accordingly, the counterclaim failed.

 

Apart from the ephemeral nature of fame, this salutary tale shows that the use of a mark with an average level of distinctiveness (such as WARRIOR) in combination with other arguably descriptive words (such as FAT BURNER) can result in the creation of conceptual differences that are sufficient to counteract any likelihood of confusion.