Birss breaks up latest Queensbury fight
Mr Justice Birss will stop retailers Sports Direct and Lillywhites from selling 16 types of boxing equipment after ruling in the latest fight over the “Queensbury” brand.
He said that goods such as boxing gloves and training towels infringe UK and Community trademarks (CTMs) for “Queensbury” owned by Boxing Brands Limited (BBL).
The ruling came at the England & Wales High Court on January 28.
BBL, a company associated with boxing promoter Frank Warren, took legal action in 2012 after learning that Sports Direct and Lillywhites were planning to launch a clothing brand called Queensbury.
An interim injunction was granted that year, before Birss ruled in 2013 that a BBL trademark tor “Queensbury” would be infringed if Sports Direct and Lillywhites sold the Queensbury clothing brand.
In a mixed ruling, Birss also found that two BBL trademarks were partially invalid.
But it later emerged that there were some important unresolved issues in the case. Most notably, the trial had not addressed whether the defendants’ Queensbury sports equipment, rather than the clothing brand, infringed BBL’s trademark rights.
The scope of an injunction based on the clothing brand ruling was another unanswered question.
Further, it was unclear whether the court should order an inquiry into the cross-undertaking that BBL demanded in support of the interim injunction. That required restraining sales of more goods than clothing, Birss noted, so if some of those products were not infringing then the defendants may be entitled to an inquiry.
To assess trademark infringement, he asked Sports Direct and Lillywhites to supply a list of boxing equipment that they had or were intending to sell.
Birss found that a range of goods, including head guards, shields protectors and first aid kits, infringe at least one of the “Queensbury” trademarks. Seven products, such as punch bags and corner pads, infringed the previously invalidated parts of some of the trademarks. But because those parts had been invalidated, the seven goods were cleared of infringement.
Assessing an injunction, Birss said: “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.”
He rejected an inquiry into the cross-undertaking, as some of the goods the defendants had ordered before the injunction would have infringed BBL’s rights anyway.
“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 ruling is available here.
