19 November 2018Trademarks

Sports nutrition company wins TM battle against ‘Gladiators’ performer

Daniel Singh, a former performer on the Sky TV programme “Gladiators”, has been found liable for trademark infringement by the UK’s specialist IP court.

Earlier in November, the Intellectual Property Enterprise Court (IPEC) concluded that Singh, who performed on “Gladiators” under the stage name Warrior, had infringed trademarks owned by Bodybuilding Warehouse.

Bodybuilding Warehouse sells branded sports nutrition products or supplements, including products bearing its trademarks ‘Warrior’ and ‘Warrior Supplements’.

The retailer accused Singh, along with four other defendants, of infringing four of its UK trademarks which consist of or include the word “Warrior”, including the above-mentioned marks.

Singh is the sole director of the second defendant, Warrior Project Nutrition.

In 2015, John Gardner (the fifth defendant) registered the domain name warriorproject.co.uk. Gardner also owns the fourth defendant, Corex Fitness.

Later that year, Gardner submitted an application to the European Union Intellectual Property Office to register the device trademark ‘The Warrior Project’ (TWP) for goods, including nutritional supplements in Class 5, sports and fitness clothing in Class 25, and cereal bars in Class 30.

Both the domain name and the trademark were transferred into Singh's name in 2016.

In 2015, the TWP logo and website were used in relation to nutritional supplements primarily aimed at serious bodybuilders, and there was promotional activity in which clothing was co-branded TWP and Corex.

Bodybuilding Warehouse claimed that all five of the defendants had passed off their goods as those of the retailer by using the sign ‘The Warrior Project’ in relation to the sale of sports nutrition products.

In response, the defendants argued that as a result of Singh’s exposure on ‘Gladiators’, he has generated goodwill in the name “Warrior” when used in relation to fitness and bodybuilding.

The defendants counterclaimed that Bodybuilding Warehouse’s trademarks were invalid, and that it is rather the retailer which is passing itself off as being connected with Singh.

Following his appearance in “Gladiators”, Singh worked as an actor, promoted third-party fitness supplements, and competed in/commentated upon mixed martial arts and wrestling events.

The trademark claim was issued in March 2017, with Bodybuilding Warehouse alleging that it had goodwill and reputation in its trademarks and that the marks were being infringed.

On November 9, recorder Amanda Michaels at IPEC, said that the defendants' nutritional supplements were identical to the some of the goods covered by Bodybuilding Warehouse’s trademarks.

Michaels added despite the “obvious visual and aural differences”, she considered the TWP trademark to have a high level of visual and aural similarity to ‘Warrior’ and an average level of similarity to ‘Warrior Supplements’.

She concluded that there is a likelihood of confusion between the ‘Warrior’ and ‘Warrior Supplements’ trademarks, and the TWP trademark.

The defendants had also tried to rely upon the ‘own name’ defence. They claimed that they were making use of Singh’s trading name, Warrior, in accordance with honest practices.

However, Michaels rejected the contention and found that two of Bodybuilding Warehouses’s trademarks were infringed by Warrior Project Nutrition, Singh and Corex.

The IPEC also rejected the defendants’ counterclaim, finding that Singh had not managed to prove that he had goodwill in the name “Warrior” when Bodybuilding Warehouses began making use of the trademarks in November 2010.

Aaron Wood, founder of Wood IP and representative of Bodybuilding Warehouse, said: “While it is not clear whether the defendants will appeal, the court's decision marks a successful conclusion to a case which we were confident would be resolved in our client’s favour.”

He added that the IPEC maintained the position that even if you are known in one field, that does not “mean you have carte blanche to launch into an associated field”.

Andy Lee, partner at Brandsmiths and representative of the defendants, said: “The case isn’t over yet and it is our intention to seek to appeal against the judgment.”

He added that Bodybuilding Warehouse had also alleged that some of the defendants’ goods were illegal or liable to cause harm to health, so that their use would be detrimental to the repute of the claimant's marks.

“The allegation that the goods were illegal was obviously a stressful one for the defendants,” said Lee. “It was an allegation that took up a lot of the case, but it was abandoned at the last moment during the claimant’s closing submissions.”

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20 May 2019   British telecoms company Sky has successfully stopped a trademark registration which it said would likely be confused with its earlier marks.