24 Hour Fitness, Inc

This matter concerned a trade mark application by 24 Hour Fitness, Inc., a California-based company, for the mark "24 Hour Fitness" in classes 18, 25, and 41. While objections to classes 18 and 25 were withdrawn, the Trade Marks Office maintained an objection under section 41 of the *Trade Marks Act 1995* concerning the class 41 services, described as health club services and instruction in the field of health and physical exercise. The primary objection was that the mark lacked the necessary inherent adaptation to distinguish the applicant's services from those of other traders, as other traders would likely need to use such a phrase descriptively.

The delegate was required to determine whether the trade mark "24 Hour Fitness" was inherently adapted to distinguish the applicant's services, and if not, whether sufficient evidence of use had been provided to establish distinctiveness under sections 41(5) or 41(6) of the Act. Specifically, the delegate had to consider if the mark was descriptive of services offered 24 hours a day, or if it conveyed other descriptive meanings related to fitness, and whether other traders would reasonably need to use such terms. The delegate also had to assess whether any use of the mark, particularly overseas, had established a reputation in Australia sufficient to distinguish the applicant's services in the minds of Australian consumers.

The delegate reasoned that the words "24 Hour Fitness" were inherently descriptive of health club services available around the clock, and potentially also conveyed a message of achieving overall fitness. Such descriptive terms are likely to be needed by other traders in the fitness industry, thus lacking inherent distinctiveness. The delegate found that the applicant had not provided sufficient evidence of use in Australia to overcome this lack of inherent distinctiveness. While extensive overseas use and advertising were presented, there was no evidence demonstrating that this overseas reputation had actually spread to Australian consumers. Furthermore, the delegate noted that the applied-for mark was consistently used in conjunction with a graphical mark, and often appeared in a secondary or incidental capacity, which did not support its distinctiveness as a trade mark in its own right.

Consequently, the delegate was not satisfied that the trade mark "24 Hour Fitness" was capable of distinguishing the applicant's services in class 41. The application was therefore refused in relation to class 41. The delegate directed that the application could proceed to registration for classes 18 and 25 only.