The High Court’s ruling on Athleta (ITM) Inc. v Sports Group Denmark A/S and another (2024) has once again underscored key issues on likelihood of confusion. The Court determined that Athleta’s figurative trade mark “ATHLETA” was infringed by SGD’s similar figurative mark “ATHLECIA” in relation to identical goods, but there was no likelihood of confusion between the respective word marks.

Marks at issue

Athleta’s marks	SGD’s marks
ATHLETA  (ATHLETA Word Mark)	ATHLECIA  (ATHLECIA Word Mark)
(ATHLETA Combination Mark)	(ATHLECIA Combination Mark)
	(ATHLECIA Vertical Combination Mark)

Validity of ATHLETA’s registrations 

[MH1] The Court held that there was no evidence to support SGD’s argument that the word “ATHLETA” was descriptive or non-distinctive in relation to the relevant goods or services, and concluded that Athleta’s marks were not devoid of distinctive character.

Genuine Use and Revocation

Athleta proved genuine use of the ATHLETA Combination Mark in relation to clothing only, and of the ATHLETA Word Mark in relation to bags, clothing, and headgear.   The registrations were revoked for the remaining goods and services, including clothing accessories, footwear and retail services. 

The Court confirmed that, where goods are sold via US websites, such use will only be relevant for the purposes of genuine use if the websites target UK consumers; the fact that UK consumers can access such websites and purchase goods is not sufficient. 

The Court confirmed that retail store services in relation to specific goods goes beyond the mere act of selling such goods, it involves the bringing together of a variety of goods of other businesses for consumers to view and purchase such goods (so the sale of Athleta’s own goods was not used in relation to retail services).

Infringement of ATHLETA Combination Mark

The Court held that the ATHLETA Combination registration[MH2] , featuring a roundel to the left of the word “ATHLETA”, was infringed by use of the ATHLECIA Combination Mark, which featured a similar roundel positioned to the left of the text “ATHLECIA”. 

However, the Court held that there was only likelihood of confusion in relation to the identical goods (namely, clothing), not in relation to the similar goods. 

The Court also held that the placement of the roundel in the ATHLECIA Vertical Combination Mark meant there was no likelihood of confusion, even for identical goods. 

No Infringement of ATHLETA Word Mark

The Court held that the ALTHETA Word registration was not infringed by SGD’s use of the ATHLECIA Word Mark. 

The Court found a high degree of visual, aural and conceptual similarity between the respective marks, however the weak distinctiveness of the word “ATHLETA” in relation to athletics wear meant that the scope of protection was narrow, and the marks were not sufficiently similar to confuse a significant proportion of consumers, even where the goods were identical. 

No passing off

Although there was goodwill in the ATHLETA Word Mark for clothing, the Court did not consider that a substantial proportion of consumers would be misled by SGD’s use of any of the ATHLECIA marks.  The Court held that consumers would understand the marks to relate to separate activewear brands. 

The Court held that there was not sufficient use of the ATHLETA Combination Mark in the UK to establish goodwill.

Practical implications of the decision:

This case has several practical implications for businesses and legal practitioners dealing with trade marks:

• Importance of distinctiveness: The case highlights the necessity for trade marks to be distinctive. Brand owners with marks that are weakly distinctive may struggle to succeed on an infringement claim due to the narrow scope of protection afforded by such marks.

• Overall impact of a mark and placement of design elements: Businesses should be aware that the overall impact of a mark, including the placement of design elements (such as roundels in this case) can significantly impact the court’s decision on likelihood of confusion.  Businesses should be careful to avoid using similar design elements to competitors.
  
   
• Genuine Use Requirement: The decision reinforces the need for trade mark owners to demonstrate genuine use of their marks in the relevant territory.  Sales via websites may not be sufficient where consumers in the relevant territory are not specifically targeted. 

 [MH1] Make sure you don’t call a registration a mark, they are not interchangeable

 [MH2] Same point on mark vs registration