January 14, 2019

Facts

The claimant, KBF Enterprises Ltd, ran a retail business under the name Bodybuilding Warehouse and manufactured and sold branded sports nutrition products or supplements, including products bearing its own UK registered trade marks for WARRIOR, WARRIOR BLAZE, WARRIOR FAT BURNER and WARRIOR SUPPLEMENTS.

The trade marks were registered between 2012 and 2016 in various classes, including class 5 (covering, for example, “food supplements; vitamin/mineral supplements; vitamin, protein and mineral enriched foods and foodstuffs).  KBF claimed it had first used the “Warrior” name in around November 2010.

The third defendant, Daniel Singh (a director of the first and second defendants, Gladiator Nutrition 3.0 Ltd and Warrior Project Nutrition Ltd), was a bodybuilder, fitness instructor and professional wrestler who, in December 2008, became one of the gladiators in the Sky TV programme Gladiators.  He appeared in a 12 episode series of Gladiators shown in 2009, and in two special shows, under the stage-name “Warrior”.

Following his appearance in Gladiators, Mr Singh carried on a variety of activities in the UK and abroad, working as an actor in films/television, promoting or endorsing third party fitness supplements, including attending bodybuilding trade shows, and competing in or commentating upon mixed martial arts and wrestling events.

The defendants said that, as a result of that exposure, Mr Singh had, since December 2008 (or some time in 2009), owned goodwill in the name “Warrior” when used in relation to fitness and body building.

By 2016, Mr Singh was the owner of the domain name warriorproject.co.uk and the following EU Trade Mark device:

The device was registered for goods, including “nutritional supplements”, in Class 5.

In 2015, the defendants started to use both the device and the words “The Warrior Project” in relation to nutritional supplements primarily aimed at serious bodybuilders.  By September 2015, sales of nutritional supplements under “The Warrior Project” sign were being made to third party sports or nutrition shops, as well as through Gladiator Nutrition shops run by the first or second defendant.

KBF claimed that the defendants had infringed all four of its UK trade marks under s 10(2) of the Trade Marks Act 1994, and had passed off their goods as those of KBF by using the sign “The Warrior Project” in relation to sports nutrition products.  The defendants denied the claims and counterclaimed that KBF’s trade marks were invalid and that KBF was passing itself off as connected with Mr Singh.  They also relied on the defence under s 11(2)(b) of the 1994 Act of use of Mr Singh’s own trade name.

Infringement under s 10(2)(b)

Identical/similar

The defendants accepted that their goods were either identical or highly similar to some of the goods in Class 5 of KBF’s trade mark specifications.

Recorder Amanda Michaels found that the dominant element of KBF’s WARRIOR and WARRIOR SUPPLEMENTS marks was the word “Warrior”.  It was also more dominant than the word “Project” in the defendants’ signs.  Further, it was the stylised word “Warrior” that stood out visually in the defendants’ device due to its size and colour.  Despite the obvious visual and aural differences, overall, Miss Michaels considered the defendants’ signs to have a high level of visual and aural similarity to KBF’s WARRIOR mark and an average level of similarity to WARRIOR SUPPLEMENTS.  In her view, they had much less similarity to WARRIOR BLAZE and WARRIOR FAT BURNER.

Miss Michaels found that the word “Project” in the defendants’ signs did not add much conceptually to “Warrior”.  The defendants’ signs were not, therefore, conceptually dissimilar to KBF’s marks WARRIOR or WARRIOR SUPPLEMENTS, since the concept of the warrior was contained in them all.  Miss Michaels considered that the additional words in WARRIOR BLAZE and WARRIOR FAT BURNER led to significant conceptual differences from the defendants’ signs, but the inclusion of the word “Warrior” meant that they were not dissimilar.

Overall, Miss Michaels said, there was a high level of similarity to WARRIOR, an average level of similarity to WARRIOR SUPPLEMENTS, and a low level of similarity to WARRIOR BLAZE and WARRIOR FAT BURNER.

Likelihood of confusion

Assessing the average consumer, Miss Michaels found that the infringing goods were specialised supplements, aimed at bodybuilders or fitness buffs, who would pay attention when buying them.  Nevertheless, she said, some consumers of the allegedly infringing products would be less knowledgeable members of the general public, who might pay less attention to the purchase, especially as the goods were available online as well as in specialist shops.

Miss Michaels held that the small amount of evidence presented as actual confusion was not reliable.  However, it was not necessary to prove actual confusion for there to be a likelihood of confusion.  Nevertheless, Miss Michaels acknowledged that she had to consider what weight she should attach to the absence of any evidence of actual confusion, in terms of what “opportunity there has been for confusion to occur and what opportunity there has been for any such confusion to be detected”, as stated by Mr Justice Arnold in Samuel Smith Old Brewery (Tadcaster) v Philip Lee [2011] EWHC 1879 (Ch).

Miss Michaels found that KBF’s evidence of trade, in terms of turnover and geographical spread, and the defendants’ evidence of scale of use, was unsatisfactory.  Accordingly, overall, there was insufficient evidence of parallel trade to be able to conclude that there had been real opportunities for confusion to occur or be detected.

In making a global assessment of the likelihood of confusion, Ms Michaels said that the get-up of the defendants’ products was “quite striking”, but that they changed the packaging design so often, any differences between the parties’ goods were unlikely to mitigate any possible confusion.

KBF’s goods may have been sold primarily from its own premises, Miss Michaels said, but both sides’ products were available online and in independent retailers.  Further, the defendants might have used other product names in addition to “Warrior” on their packaging to try and differentiate their goods from KBF’s, but given the striking manner in which the word “Warrior” was presented, that difference was also unlikely to preclude confusion.

The defendants argued that consumers would connect their goods with Mr Singh, whose photograph appeared on much of their advertising material.   However, Miss Michaels said, a customer who appreciated that connection might still be confused, thinking that KBF’s products were also connected with Mr Singh.

Ultimately, Miss Michaels held that there was a likelihood of confusion between the WARRIOR and WARRIOR SUPPLEMENTS marks and the defendants’ signs.  However, she held that the differences identified meant that there was no likelihood of confusion with KBF’s WARRIOR BLAZE or WARRIOR FAT BURNER marks.

Own name defence

Here, Miss Michaels was satisfied from the evidence that various references were indeed made to the “Warrior” name in relation to Mr Singh’s activities from 2009 onwards, i.e. before KBF had commenced use of “Warrior” in 2010.   Some references were made to Mr Singh as just “Warrior”, for example in his magazine column, “Warrior’s Diary”, but in most of the other examples, his full name was used in combination with “Warrior” (for example, he was called Dan “Warrior” Singh).

Ultimately, Miss Michaels was not persuaded that Mr Singh had been trading under the name “Warrior”, especially before November 2010.  He (and others) made fairly frequent references to his role in the TV show, but the evidence of his use of the name “Warrior” alone, as a trade name, without use of his full name, was not sufficiently consistent or extensive to show that “Warrior” was his trade name.   The own name defence was not, therefore, made out.

If she were wrong on that point, Miss Michaels said that, in any event, the evidence showed that Mr Singh had not used the marks in accordance with honest practices.  Given her conclusions on the likelihood of confusion, she said that, had it been necessary to do so, she would have found that use of the defendants’ signs was liable to interfere with KBF’s ability to exploit its marks.  Accordingly, the defendants would not have been able to rely on the own name defence, even had Miss Michaels found “Warrior” to be Mr Singh’s trade name.

Passing off

Here, Miss Michaels found that KBF’s evidence was wholly inadequate to prove that it had goodwill in any WARRIOR marks by July/September 2015.  She therefore rejected KBF’s passing off claim.

Joint liability

The Claimant also alleged that the Fifth Defendant, Mr Gardener, was jointly liable for the infringement of the Fourth Defendant on the general basis that he was the sole director and, therefore, ‘controlling mind’ of that company.

The Claimant relied on the finding in Grenade (UK) Limited v Grenade Energy [2016] EWHC 877 (IPEC) that Mr Gardener’s position as a sole director meant that the burden was his to disprove the allegation of personal liability. However, the Judge pointed out that in Grenade, the evidence showed that the relevant company truly was a ‘one man company’, which supported the shifting of the burden to the defendant. That was not the case on the evidence here. As the Claimant relied solely on Mr Gardener’s position as sole director, the absence of any further evidence in support of the claim for joint tortfeasance duly failed.

Counterclaim

Here, the defendants alleged that KBF’s registrations were invalid because the marks had been registered despite Mr Singh’s earlier unregistered rights in the “Warrior” name in relation to fitness and bodybuilding.  The defendants also claimed that KBF was passing off its goods as those of Mr Singh or as goods connected with Mr Singh.

By the time KBF started to make use of the WARRIOR marks, in about November 2010, Mr Singh had completed his appearances as “Warrior” in Gladiators and had carried out some of the other promotional activities.   However, Miss Michaels found that Mr Singh’s evidence fell short of proving that he was known as “Warrior” or “Dan Warrior Singh”, particularly before November 2010.  She was not satisfied that any reputation that he had acquired through appearing on the TV show would have led to him having goodwill in the name “Warrior” for fitness and bodybuilding.  The counterclaim therefore failed.  (KBF Enterprises Ltd v Gladiator Nutrition 3.0 Ltd [2018] EWHC 3041 (IPEC) (9 November 2018) — to read the judgment in full, click here).