Boxing promoter wins trademark bout
Posted: 20th August 2013
After a High Court bout that would have impressed the 9th Marquess of Queensberry, a company controlled by boxing promoter Frank Warren has beaten two high street retailers in a race for the right to use the sport’s most famous name as a clothing brand.
Boxing Brands Limited (BBL) – which registered ‘Queensberry’ as a trade mark in 2008 – took on Sportsdirect.com Retail Limited and sister company, Lillywhites Limited, who had planned to market clothing ranges emblazoned with the disputed name.
The case hinged on the history of a little-known boxing gym which was set up in Bedford by ring enthusiasts, Luigi La Mura and Andrew Goodwin, in 2004. The pair, who christened their gym in tribute to the famous marquess, claimed to have been the first to use the 'Queensberry’ brand and, through their company, they purported to license its use on clothing ranges by the two retailers.
Handing victory to Mr Warren and BBL, the Court rejected all attacks on the validity of BBL’s trade mark. In those circumstances, it was not disputed by Sportsdirect and Lillywhites that use by them of the ‘Queensberry’ logo on the planned clothing ranges would infringe BBL’s exclusive rights.
Mr La Mura and Mr Goodwin had set up their 'Queensberry Boxing Gym' on an old airfield outside Bedford. Members wore T-shirts bearing the Queensberry logo which could also be seen at boxing events. On that basis, it was argued that BBLs registration of the trade mark had amounted to passing off.
Rejecting that argument, the Court found that the gym business had not been ‘run on a realistic commercial footing'. Ruling that there had been no right to prevent anyone else using the 'Queensberry' name as a clothing brand when BBL registered its mark, the Court noted that the gym business 'was tiny' and that its goodwill was entirely localised in and around the Bedford area.
Clearing Mr Warren and BBL of allegations that the mark had been registered in bad faith, the Court found that it had been 'entirely acceptable commercial behaviour'. The idea of using 'Queensberry' as a clothing brand had been conceived by Mr Warren and had not come from Mr La Mura or Mr Goodwin. "The fact that Mr Warren could be said to have won a race to the trade mark register in these circumstances does not amount to bad faith," the Court concluded.