Boxing Brands Ltd v Sports Direct International Plc & Ors [2013] EWHC 2200 (Ch) ([2013] ETMR 48)
Boxing Brands Limited (“BBL”), a company owned by Frank Warren and Robert Earl, has succeeded in its claim for trade mark infringement against Mike Ashley’s Sports Direct group (“Sports Direct”). BBL owned a number of trade marks for the word “QUEENSBERRY” covering clothing. In December 2012 BBL successfully obtained an interim injunction against Sports Direct when it launched a range of clothing under the QUEENSBERRY brand.
At the trial in July 2013, Sports Direct contended that the trade marks relied on were invalid. Sports Direct claimed that its predecessors in title, Messrs La Mura and Goodwin had used the QUEENSBERRY mark since 2004 in relation to a boxing enterprise in Bedford and that this use (and BBL’s knowledge of that use) rendered the marks invalid pursuant to sections 47 and 5(4)(a) and/or 3(6) of the Trade Marks Act 1994. On the facts the Judge held that whilst Messrs La Mura and Goodwin may have acquired a very local protectable goodwill in relation to the operation of gym, they had no goodwill in the word QUEENSBERRY as a boxing agency nor in relation to the sale of clothing. The claim based on bad faith was also rejected. Even though BBL knew that Messrs La Mura and Goodwin had been using the sign in some way, that was not enough to amount to bad faith. The mark was not registered for the purpose of preventing them from continuing their use of the mark and did not interfere with their limited rights under passing off. In the circumstances the filing of the trade mark in full knowledge of the earlier use was entirely acceptable commercial behaviour.
Boxing Brands Ltd v Sports Direct International Plc & Ors [2013] EWHC 2200 (Ch)