Last November, the Intellectual Property Enterprise Court (“IPEC”) handed down their decision in KBF Enterprises Limited v Gladiator Nutrition 3.0 Limited & Ors [2018] EWHC 3041 (IPEC).

Background

KBF Enterprises Limited (“the Claimant”) has manufactured and sold sports nutrition products and supplements under the mark WARRIOR since November 2010. The Claimant is the proprietor of UK registrations for WARRIOR SUPPLEMENTS (filed May 2012), WARRIOR BLAZE, WARRIOR FAT BURNER (both filed July 2014) and WARRIOR (filed July 2016), all covering a range of supplements and nutritional products (“the WARRIOR Marks”).

The Third Defendant, Mr Daniel Singh, was a bodybuilder, fitness instructor and professional wrestler who performed under the stage name ‘Warrior’ on the relaunch of the popular TV show ‘Gladiators’ on Sky TV in 2009. Following his appearances on the show, Mr Singh used his stage name on a range of promotional activities in the UK and abroad.

The dispute arose after the Fifth Defendant, Mr John Paul Gardner, applied in July 2015 to register the domain name , and in October 2015 applied for an EUTM covering a logo for THE WARRIOR PROJECT (“TWP Logo”) for a range of goods, including supplements in Class 5. The Defendants subsequently began to use the TWP Logo and THE WARRIOR PROJECT in plain text (“TWP”) in connection with nutritional supplements aimed at serious bodybuilders.

The Claimant brought forward claims for trade mark infringement and passing off under the Trade Mark Act 1994 on the basis of the WARRIOR Marks. The Defendants sought to defend the claims by arguing that Mr Singh had an own name defence and that he was also the owner of unregistered rights in the name WARRIOR that pre-dated the WARRIOR Marks. The latter defence also formed the basis of the Defendant’s counterclaim for invalidity of the WARRIOR Marks.

Trade Mark Infringement and Passing Off

The Claimant argued that the ‘WARRIOR’ element was the most distinctive of the WARRIOR Marks, whilst the Defendants argued that WARRIOR would not be perceived as distinctive by the public. Their argument was that WARRIOR is descriptive or, at the very least, widely used for the relevant goods and, therefore, of low distinctiveness. The Court found that WARRIOR does have some allusive qualities when used in relation to nutritional goods, but that these are far too general to describe these goods. It, therefore, concluded that WARRIOR is distinctive to an average degree.

The Court noted that ‘WARRIOR’ was the dominant element of WARRIOR and WARRIOR SUPPLEMENTS of the WARRIOR Marks, and also in the TWP and the TWP Logo marks. It, however, said the additional words in WARRIOR BLAZE and WARRIOR FAT BURNER created significant conceptual differences with the TWP and TWP Logo marks. Accordingly the TWP marks had the following degrees of similarity to the WARRIOR Marks:

• WARRIOR – High
• WARRIOR SUPPLEMENTS – Average
• WARRIOR BLAZE – Low
• WARRIOR FAT BURNER – Low

The Court went on to find, given the identical or highly similar goods, that there was a likelihood of confusion between the TWP marks and WARRIOR and WARRIOR SUPPLEMENTS. However, it also found that there was no likelihood of confusion between the TWP marks and WARRIOR BLAZE and WARRIOR FAT BURNER. The passing off claim was dismissed due to a lack of evidence to prove the Claimant had goodwill in the WARRIOR Marks by 2015.

Defence and Counterclaim

Albeit the Defendants argued that Mr Singh was trading under WARRIOR before November 2010, the Court was not persuaded by the evidence. It found that, although frequent reference was made to Mr Singh’s appearance on Gladiators, he was not consistently referred to as ‘Warrior’, but a combination of ‘Warrior’, Dan ‘Warrior’ Singh, or Dan Singh, ‘Warrior from TV’s Gladiators’. Even if Mr Singh had proved he was trading under WARRIOR, the Court said this was as an actor/entertainer and martial arts specialist and not a bodybuilder. Consequently, it is likely this defence would have failed anyway. The defence and counterclaim failed on this basis.

The Defendants also argued that WARRIOR was in common use in the trade, but, once again, the Court was not persuaded by the evidence. The evidence of third party use was largely undated and did not provide evidence of when these third parties had commenced use which made it of limited value.

Our Comments

What is ultimately quite a straightforward case of trade mark infringement raises an interesting point as well as a cautionary tale. Had the Claimants only owned rights in WARRIOR BLAZE and WARRIOR FAT BURNER, the Defendants would have been able to successfully defend their rights in THE WARRIOR PROJECT. The strength of conceptual differences between marks that are otherwise visually and phonetically identical in part is worth keeping in mind when clearing marks for use and registration, or when preparing a filing strategy. If there’s a specific element in a composite mark you want to keep third parties clear of, this case makes it clear you should protect that separately rather than just as part of a phrase.

As for the cautionary tale, had the Defendants put more care into their evidence of other third party WARRIOR marks they may have defended the claim. Specifically, the Defendants’ evidence was undated and provided no evidence of the date upon which the third parties identified had started using their WARRIOR marks in the UK, or the scale or nature of their use. When gathering evidence together it is always important to follow the two-part test below:

1. What is it I am trying to prove?; and
2. Does this piece of potential evidence go towards proving the answer to question 1?