TM infringement: KBF Enterprises v Gladiator Nutrition 3.0

KBF Enterprises manufactured and sold branded sports nutrition products or supplements. It owned trade marks for WARRIOR SUPPLEMENTS, WARRIOR BLAZE, WARRIOR FAT BURNER, and WARRIOR for classes 5 and 30 filed between May 2012 and July 2016. It started trading using the name WARRIOR in or around November 2010.

Mr Singh was a bodybuilder and featured in the show Gladiators under the name Warrior between 2008 and 2009. He subsequently became a director of two of the defendants, including Gladiator Nutrition 3.0. In July 2015, the domain name warriorproject.co.uk was registered and subsequently an application was made for the following European Union trade mark for goods, including nutritional supplements in class 5, 25 and 30. These were ultimately transferred to Mr Singh. The defendants traded as THE WARRIOR PROJECT.

KBF Enterprises commenced trade mark infringement proceedings in March 2017, with the matter coming to trial in June 2018. The court held that there was a likelihood of confusion between KBF Enterprises’ WARRIOR AND WARRIOR SUPPLEMENTS marks and the defendants’ signs (but not WARRIOR BLAZE OR WARRIOR FAT BURNER).

In its defence, the defendants ran an "own name" defence under s. 11(2)(a) of the Trade Marks Act 1994:

A registered trade mark is not infringed by— (a) the use by a person of his own name or address ... provided the use is in accordance with honest practices in industrial or commercial matters.

The court held that, on the evidence, it was not persuaded that Mr Singh was trading under the name Warrior, especially before November 2010. It accepted that there were fairly frequent references to his role in the TV show, but concluded that the use of the name Warrior alone, without use of Mr Singh’s full name, was not sufficiently consistent or extensive to show that Warrior was his trade name, even by September 2015. For example, Mr Singh attended an exhibition in May 2010 to advertise MET-Rx products. This was advertised as "Meet Gladiator Warrior aka Daniel Singh." Mr Singh also promoted Bad Boy Nutrition products, in which capacity he appeared at the BodyPower expo in May 2015 under the name Dan "Warrior" Singh.

In the event that the court was wrong about Mr Singh trading as "Warrior" it went on to consider whether such use was in accordance with honest practices in industrial or commercial matters.

In Sky Plc & Ors v Skykick UK Ltd [2018] EQHC 155 (Ch), Arnold J summarised the law on honest practices for the purposes of s 11(2)(a):

“327. The law. I would summarise the principles laid down by the CJEU for determining whether the use of a sign is “in accordance with honest practices in industrial or commercial matters” as follows.

328. First, the requirement to act in accordance with honest practices in industrial or commercial matters “constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor”: see Case C-63/97 Bayerische Motorenwerke AG v Deenik [1999] ECR I-905 at [61], Case C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH [2004] ECR I-691 at [24], Anheuser-Busch at [82], Case 228/03 Gillette Co v LA-Laboratories Ltd Oy [2005] ECR I-2337 at [41] and Case C-17/06 Céline SARL v Céline SA [2007] ECR I-7041 at [33].

329. Secondly, the court should “carry out an overall assessment of all the relevant circumstances”, and in particular should assess whether the defendant “can be regarded as unfairly competing with the proprietor of the trade mark”: see Gerolsteiner at [26], Anheuser-Busch at [84] and Céline at [35].

330. Thirdly, an important factor is whether the use of the sign complained of either gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as being in accordance with honest practices: see Gillette at [49], Anheuser-Busch at [83] and Céline at [34].

331. Fourthly, a mere likelihood of confusion will not disqualify the use from being in accordance with honest practices if there is a good reason why such a likelihood of confusion should be tolerated. Thus in Gerolsteiner , which was a case under Article 6(1)(b) of Directive 89/104, the Court of Justice held at [25]:

‘The mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication of geographical origin from another Member State is therefore insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices. In a Community of 15 Member States, with great linguistic diversity, the chance that there exists some phonetic similarity between a trade mark registered in one Member State and an indication of geographical origin from another Member State is already substantial and will be even greater after the impending enlargement.’

332. In applying these principles in a number of cases, I have found it of assistance to consider the following list of factors which I first set out in Samuel Smith v Lee [2011] EWHC 1879 (Ch), [2012] FSR 7 at [118]:

i) whether the defendant knew of the existence of the trade mark, and if not whether it would have been reasonable for it to conduct a search;

ii) whether the defendant used the sign complained of in reliance on competent legal advice based on proper instructions;

iii) the nature of the use complained of, and in particular the extent to which it is used as a trade mark for the defendant’s goods or services;

iv) whether the defendant knew that the trade mark owner objected to the use of the sign complained of, or at least should have appreciated that there was a likelihood that the owner would object;

v) whether the defendant knew, or should have appreciated, that there was a likelihood of confusion;

vi) whether there has been actual confusion, and if so whether the defendant knew this;

vii) whether the trade mark has a reputation, and if so whether the defendant knew this and whether the defendant knew, or at least should have appreciated, that the reputation of the trade mark would be adversely affected;

viii) whether the defendant’s use of the sign complained of interferes with the owner’s ability to exploit the trade mark;

ix) whether the defendant has a sufficient justification for using the sign complained of; and

x) the timing of the complaint from the trade mark owner.”

The court also relied on the comments of Lloyd LJ in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110:

“ … just as an individual could not justify using a trading name newly adopted which conflicted with a registered trade mark, nor could a company do so, any more than a company could justify trading under a changed corporate name which produced such a conflict, and an individual could not achieve the same by changing his name by deed poll. It seems to me that the explanation for the difference is that using an established trading name may well satisfy the test of honest use, whereas to adopt a new corporate or trading name for a new business which conflicts with an existing registered trade mark is unlikely to do so. That seems to me to be the correct basis for the decision in Asprey & Garrard , by which Peter Gibson LJ's observations in paragraphs 43 and 49 can stand together, permitting the possibility of an established trading name which might allow successful use of the defence, whereas a brand new corporate name or trading name would not do so … “

The court concluded that Mr Singh would not be entitled to rely on the defence. The court noted the following:

• Mr Singh admitted that he knew about KBF Enterprises’ trade marks when he chose to use the sign THE WARRIOR PROJECT (although there was no evidence that he had sought advice on the choice of name);
• There was no evidence that any steps were taken by Mr Singh to distinguish his goods from KBF Enterprises’ goods, even after the letter of claim in July 2016;
• Mr Singh did not have sufficient justification for using the THE WARRIOR PROJECT name for the infringing goods because his previous use of the Warrior name was in a different field, albeit one with some connection to nutritional supplements; and
• The WARRIOR PROJECT sign was liable to interfere with the KBF Enterprises’ ability to exploit its marks.