Athleta (ITM) INC. v Sports Group Denmark A/S & Anor

Athleta (ITM) INC. v Sports Group Denmark A/S & Anor

The ATHLECIA Signs are similar to the ATHLETA Marks, but due to the weak distinctiveness of both marks, there is no likelihood of confusion except between the ATHLETA Combination Mark and the Second ATHLECIA Combination Mark for clothing. The ATHLETA Marks are not invalid for lack of distinctiveness or descriptiveness. The ATHLETA Combination Mark is only genuinely used for clothing; the ATHLETA Word Mark is genuinely used for bags, clothing, and headgear. The passing off claim fails due to insufficient goodwill and lack of misrepresentation.

Parties
Claimant: Athleta (ITM) Inc.; First Defendant: Sports Group Denmark A/S; Second Defendant: Jarrold & Sons Limited
Jurisdiction
England and Wales
Judgment Date
30 September 2024
Procedural Posture
Intellectual Property Trade Mark Infringement and Passing Off / Judgment After Trial
Outcome
Claim for trade mark infringement succeeds in part; passing off claim fails; counterclaim for invalidity fails; counterclaim for revocation for non-use succeeds in part.
Legal Topics
Trade Mark Infringement, Passing Off, Revocation for Non Use, Invalidity for Lack of Distinctiveness
Intellectual Property Trade Marks Trade Mark Infringement Passing Off Revocation for Non Use Invalidity for Lack of Distinctiveness

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 10 Party arguments 2 Amounts and remedies 3
Sign in to unlock

Parties

Athleta (ITM) Inc.

Claimant

Sports Group Denmark A/S

First Defendant

Jarrold & Sons Limited

Second Defendant

Procedural Posture

Intellectual Property Trade Mark Infringement and Passing Off / Judgment After Trial

Legal Issues

  1. 1 Whether the ATHLECIA Signs are similar to the ATHLETA Marks
  2. 2 Whether there is a likelihood of confusion under section 10(2) of the Trade Marks Act 1994
  3. 3 Whether the ATHLETA Marks should be revoked for non-use

Ratio Decidendi

The ATHLECIA Signs are similar to the ATHLETA Marks, but due to the weak distinctiveness of both marks, there is no likelihood of confusion except between the ATHLETA Combination Mark and the Second ATHLECIA Combination Mark for clothing. The ATHLETA Marks are not invalid for lack of distinctiveness or descriptiveness. The ATHLETA Combination Mark is only genuinely used for clothing; the ATHLETA Word Mark is genuinely used for bags, clothing, and headgear. The passing off claim fails due to insufficient goodwill and lack of misrepresentation.

Court Disposition

Claim for trade mark infringement succeeds in part; passing off claim fails; counterclaim for invalidity fails; counterclaim for revocation for non-use succeeds in part.

Orders

  • Declaration of infringement of the ATHLETA Combination Mark by use of the Second ATHLECIA Combination Mark for clothing
  • Revocation of the ATHLETA Combination Mark for all goods/services except clothing