Sport England scores at UKIPO
UK public body Sport England has emerged victorious in its opposition of a trademark featuring the words “Be inspired”.
The UK Intellectual Property Office (IPO) handed down its decision on Thursday, March 15, finding that Sport England, which is tasked with building the foundations of a community sport system, had proved that the applicant’s mark should not be registered.
Be Inspired Gyms applied to register a trademark featuring the words “Be inspired gyms” and a logo, under number 3,185,811, covering classes 25, 28 and 41.
Sport England opposed the mark based on three earlier marks which contain the phrase “Be inspired” and cover a range of classes, including 25 (clothing) and 41 (accreditation schemes relating to sports).
According to Sport England, there’s a “strong similarity” and the goods and services are identical or highly similar.
“The opponent claims that it has established a reputation in its earlier mark since 2012 and claims that the applicant would therefore unjustly benefit from the unwarranted association with the opponent’s earlier marks and reputation,” said the IPO.
Sport England also relied upon its unregistered rights in ‘Be inspired’, which it claims has been in use since 2012, initially in relation to the London Olympics and subsequently in relation to UK sporting opportunities.
In response, Be Inspired Gyms, which operates a single location body building gym, submitted that it had not experienced any unusual spike in sales that could be attributed to riding on the coat-tails of third party trademarks.
Mark Bryant, on behalf of the IPO, concluded that the goods and services were identical for classes 25 and 4, and had a medium degree of similarity for class 28.
Bryant found that the marks shared a medium level of visual similarity because the words “Be inspired” appear in both. There were differences because Be Inspired Gyms’ mark features a device element. He also concluded that there was a high level of aural similarity.
Conceptually, Sport England’s mark is likely to be perceived as an “exhortation to be inspired” while the gym’s mark also has the word “gyms” that creates the “impression of gyms where a person would go to be inspired”. Bryant found that there was a “good deal” of conceptual similarity.
“I find that there is a likelihood of indirect visual confusion in respect of all of the applicant’s goods and services because consumers are likely to believe that the applicant’s mark is a variant of the opponent’s mark and used by the same undertaking, or by an economically related undertaking,” he concluded.
Be Inspired Gyms’ trademark application was refused and it was ordered to pay Sport England £2,000 ($2,789).
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