Another lesson for descriptive brands: Athleta v Sports Group Denmark

Court of Appeal decision illustrates the difficulties enforcing descriptive brands but shows that the balance can be tipped towards infringement if a similar logo or stylisation is used.

What has happened?

• The Court of Appeal has held that there is no likelihood of confusion between the marks ATHLETA and ATHLECIA when used on identical goods – the Claimant's earlier ATHLETA mark was given a relatively narrow scope of protection due to its descriptive nature for athletic clothing goods.

• However, it held that there is a likelihood of confusion when the Defendant's ATHLECIA mark is used with a roundel similar to that used and registered alongside the Claimant's ATHLETA mark. 

• The findings differ slightly from those of the High Court which had held that there was only infringement when the Defendant used its roundel in exactly the same position as the Claimant. This had meant that the Defendant could avoid infringement by positioning its roundel in a different location. The Court of Appeal ruling suggests that almost any use of the roundel alongside the ATHLECIA mark is likely to be infringing.

• The decision is a useful reminder of the challenges of enforcing relatively descriptive marks, like ATHLETA. Those who adopt descriptive marks should bear in mind that enforcing them can be tricky unless the mark has acquired significant distinctiveness through use. 

• The decision also shows the line between infringement and non-infringement. While using a similar descriptive term might be non-infringing, adding a similar logo or stylisation might tip the balance to infringement. 

Athleta's earlier registrations	Athlecia's allegedly infringing signs	Finding of infringement by Court of Appeal
ATHLETA (word only)	ATHLECIA (word only)
		(previously the High Court had held no infringement)

Want to know more?

The High Court decision

The High Court had found infringement only when the word ATHLECIA was used with the roundel to its left. The Claimant appealed the ruling to the Court of Appeal.

The Court of Appeal decision

The Court of Appeal found that there was an internal inconsistency in the High Court judge's ruling. In assessing visual similarity between the marks, the High Court judge had said that the different placement of the roundel would not make a significant difference. However, in his likelihood of confusion analysis, he had treated it as making the difference between infringement and non-infringement. This was sufficient for the Court of Appeal to consider infringement afresh.

The Court of Appeal held that the use of the roundel on top of the word ATHLECIA was also infringing. It reasoned that it is commonplace for words and devices to be used by trade mark owners in a variety of spatial arrangements, and the average consumer could easily misremember the arrangement. Here, the degree of similarity between the marks was not materially different whether the roundel was placed on top of – or to the left of - the word ATHLECIA. Both uses of the roundel therefore infringed.

The Court of Appeal also overturned the High Court's finding of no passing off for the mark plus roundel. Goodwill had been generated by the Claimant in both its ATHLETA name and roundel.

What does this mean for you?

• While the Claimant won an important victory on appeal, the decision is an important reminder that descriptive and allusive marks are generally given a relatively narrow scope of protection (although, for an example where a mark was not, see When laudatory marks are given broad protection: Sexy Fish).

• However, it shows that there is a line that must not be crossed. Adopting a similar logo (or stylisation) can push a brand towards infringement, as was the case here. 

• This decision also shows that minor variations in the spatial arrangement of a logo element are often not enough to avoid infringement.