|the infringing mark|
The dispute started in 2012 when BBL learned that both Sports Direct and Lillywhites were planning to launch a new line of clothing under the Queensbury brand. An interim injunction was sought that same year, followed by a ruling in 2013 upholding that BBL’s Queensbury trade mark would be infringed if the two retailers commenced sales under the Queensbury clothing brand.
The injunction affected all sales. But not all of the products in dispute fell under the scope of protection of the trade marks. Birss J asked both defendants to furnish a list of all the boxing-related equipment that they had or were intending to sell that fall under the Queensbury name. The list included a range of goods that included shield protectors, first aid kits, and head guards. Most of the goods infringed at least one of BBL’s trademarks, but seven products such as corner pads and punch bags were only infringing trademarks that were already invalidated, and so the seven goods were cleared.
A plaintiff seeking an injunction has to provide an undertaking as to any damage caused to a defendant by the injunction, if at the end of the day the plaintiff is unsuccessful at trial. But Birss rejected an inquiry into the undertaking with regard to some goods, citing that the goods in question would have infringed BBL’s trademarks anyway.
“Most of the kinds of goods the defendants' intended to sell would have or did infringe valid trade mark rights held by the claimant but some did not. I will order suitable injunctions and declarations,” was Justice Birss’s statement regarding his ruling. “I am quite satisfied that the defendants had no intention, before I discharged the interim injunction in July 2013, of launching a range consisting only of the rather narrow group of goods which I have found do not infringe a valid trade mark. Since they were not going to sell those goods on their own, they have suffered no real loss at all caused by the interim injunction. An inquiry would be costly and not worth the candle.”
The interesting issue in this case, in my view, is the cleverness of BBL in securing the trade marks in the first place. “Queensbury” is inextricably linked to boxing. It is inherently descriptive of the rules of the sport, but not of the goods used in the sport. The name draws immediate reference to boxing without being descriptive of the goods. This is a clever piece of marketing by BBL. An interesting defence might have been that the marks were not adapted to distinguish the goods. The judgment suggests that, regrettably, this wasn’t raised by the defendants – possibly because the defendants own a separate mark, which looks like this-
-a mark clearly very different from the one proposed to be used by the defendants.