Insights Court of Appeal partially allows appeal in passing off case on the grounds of the judge not having tried the pleaded issue and part of the injunction being unclear


The claimant, British Amateur Gymnastics Association (BAGA), which has traded as “British Gymnastics” since 1997 and been in existence in one form or another since 1888, is the owner of two UK registered trade marks:

The defendant, UK Gymnastics Ltd, was incorporated in 2000. Since about 2012/13, it has advertised, offered and provided membership services to individual gymnasts, gymnastics clubs and coaches, as well as running competitions and courses for coaches and gymnasts, under the signs “UK GYMNASTICS” and two logos:

BAGA issued proceedings against UKG contending that UKG had infringed its registered trade marks and committed passing off.

At first instance, Her Honour Judge Melissa Clarke upheld BAGA’s claim.

On the passing off claim, she found that UKG had used the UK GYMNASTICS signs in conjunction with the statement that it was a National Governing Body (NGB) for the sport of gymnastics in the UK. As, in HHJ Clarke’s view, UKG was not an NGB, this was a misrepresentation. She said that UKG’s use of the signs was likely to lead the relevant public to believe there was a link or connection with BAGA and that BAGA was likely to suffer damage to its goodwill as a result.

As for trade mark infringement, HHJ Clarke found that the words BRITISH GYMNASTICS was the dominant element in BAGA’s marks and that the phrase MORE THAN A SPORT did not detract from this dominance as it was in a much smaller font. She accepted that UKG’s signs were visually and aurally very different from BAGA’s marks giving them a low level of similarity. However, she found that the conceptual similarity was strong, as the UK and BRITISH were “confusingly similar geographical concepts”. The services were also identical or highly similar. Overall, HHJ Clarke found that there was a likelihood of confusion such that those who paid a lower degree of attention, including child gymnasts, their parents, and spectators at sporting events, would mistakenly take UKG’s signs for that of the only NGB for the sport of gymnastics in the UK, i.e. BAGA because “there is only one body”.

UKG appealed.


Giving the lead judgment, Lord Justice Arnold upheld most of HHJ Clarke’s findings, save for two.

UKG argued that HHJ Clarke had erred in her finding that there was passing off actionable by BAGA by virtue of the misrepresentation by UKG that UKG had the status of a NGB conferred upon it. BAGA’s Particulars of Claim alleged that UKG had the status of NGB conferred upon it “by the Claimants”. BAGA’S case was that UKG was guilty of a misrepresentation that such status had been conferred upon it by BAGA itself.

Arnold LJ agreed with UKG. Essentially, HHJ Clarke had not tried the pleaded case and had therefore erred in that aspect of the passing off claim.

Arnold LJ also agreed with UKG that the last two parts of the injunction granted against it by HHJ Clarke should be set aside. The injunction stated that UKG should be restrained from inter alia passing off any business or goods or services as being those of BAGA “or otherwise denoting some form of official or approved status upon [UKG] or otherwise asserting to be a National Governing Body contrary to fact”.

Arnold LJ said that these parts of the injunction again extended beyond BAGA’s pleaded case and that the wording was unclear, contrary to the well-established principle that injunctions must be clear. He also said that in the absence of any definition of an NGB, the scope of this part of the injunction was uncertain.

Arnold LJ therefore allowed the appeal against the judge’s conclusion that BAGA’s claim of passing off in relation to the NGB point succeeded and discharged the parts of the injunction indicated above. Otherwise, he dismissed the appeal. (UK Gymnastics Ltd v British Amateur Gymnastics Association [2021] EWCA Civ 425 (24 March 2021) — to read the judgment in full, click here.