Crossfit Inc v Bossfit Pty Ltd

[2017] ATMO 74

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReOpposition by Crossfit Inc to registration of trade mark application 1658603 (41) – BossFit - in the name of Bossfit Pty Ltd

Delegate:                   Robert Wilson

Representation:        Opponent: Giulia Fimmano of AJ Park

Applicant: not represented

Decision:                   2017 ATMO 74

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42, 44, 58, 60 and 62A considered – no grounds established – trade mark may proceed to registration

Background

1.     This decision concerns an opposition brought by Crossfit Inc (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark subject of the application detailed below in the name of Bossfit Pty Ltd (‘the Applicant’):

Application Number:	1658603
Filing Date:	23 December 2014
Services:	Class 41: Health club services (health and fitness training); Physical fitness training services  (‘the Applicant’s Services’)
Trade Mark:	BossFit	(‘the Applicant’s Trade Mark’)

2.     On 14 May 2015 the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 10 July 2015 and a Statement of Grounds and Particulars (‘the SGP’) on 7 August 2015. The Applicant filed a Notice of Intention to Defend on 10 September 2015. The SGP nominated a number of grounds of opposition under ss 42, 44, 58, 60 and 62A of the Act.

Evidence

3.     The Opponent filed Evidence in Support of its opposition (‘EIS’) being:

·Declaration made on 18 December 2015 by Sarah Elizabeth Munn, Attorney and Counsel of the Opponent based in the United States of America, with Exhibits SEM-1 to SEM-37 (‘Munn 1’).

4.     The Applicant filed Evidence in Answer (‘EIA’) being:

·Declaration made on 31 May 2016 by Jonathon Murray Snape, the Director of the Applicant, with Annexures JMS-1 (‘the Snape declaration’).

5.     The Opponent filed Evidence in Reply (‘EIR’) being:

·Declaration made on 21 August 2016 by Sarah Elizabeth Munn with Annexures SEM-38 and SEM-39 (‘Munn 2’); and

·Declaration made on 19 August 2016 by Tania Paula Cresswell Weir, secretary employed by AJ Park the Australian legal representatives of the Opponent, with Exhibit TPCW (‘the Weir declaration’).

6.     Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Opponent requested a hearing.    

7.     I heard the matter in Canberra on 21 June 2017 as a delegate of the Registrar of Trade Marks. Giulia Fimanno of AJ Park appeared for the Opponent. Ms Fimmano’s oral submissions were supplemented by written submissions filed with IP Australia on 7 June 2017 (‘the Opponent’s submissions’). The Applicant did not appear at the hearing or file written submissions. The Applicant chose instead to rely solely on the EIA. I note that the EIA includes material which is the nature of submissions and has been treated as such.

The Opponent

8.     According to Munn 1:

Greg Glassman, a former gymnast, developed the mark ‘CrossFit’ (‘the CrossFit mark’) in around 1985 and has been using the CrossFit mark in relation to fitness services since at least 1985.

Mr Glassman commenced providing fitness training and seminars under the CrossFit mark. The services provided under the CrossFit mark are specifically high intensity fitness regimes that draw upon multiple disciplines and are designed to improve fitness.

Mr Glassman developed the CrossFit mark. The word ‘Cross’ was selected because the fitness regime is inspired by training in multiple sports in order to improve fitness and performance. …

Mr Glassman established the first gym under the name ‘CrossFit’ in Santa Cruz, California in around 1996. …

The first affiliate gym was opened under the name ‘CrossFit’ in Seattle, Washington.

In order to become a licensed CrossFit affiliate, it is necessary to take a trainer course, followed by a trainer examination, receive a CrossFit Trainer certificate, apply for ‘affiliation’ and once accepted, sign a license agreement with CrossFit granting the affiliate permission to use the CrossFit trade mark for their gym. …

[The Opponent] licences the CrossFit mark to affiliates throughout the world, and there are now approximately 12,836 gyms providing specialised services under the CrossFit mark throughout the world, and 601 of those gyms are based in Australia. There are approximately 116,381 certified CrossFit trainers throughout the world, and 5,869 of those trainers are based in Australia.

Related sporting goods are also sold which bear the CrossFit mark throughout Australia and the world, including sports bags and sports clothing.

9.     The Opponent is the owner of the Australian registered trade marks detailed below:

Trade Mark Number:

1115598

Priority Date:

7 February 2006 (Convention)

Services:

Class 41: Fitness training; providing of training; educational and instructional services; organisation of competitions and events

Trade Mark:

CROSSFIT 

(‘the Opponent’s 5598 Trade Mark’)

Trade Mark Number:

1520563

Priority Date:

30 May 2012

Goods and services:

Class 25: Clothing, namely, shirts, pants, shorts, jackets, sweatshirts, sweatpants, headwear, socks; footwear

Class 41: Entertainment services, namely, an on-going series featuring fitness, nutrition, sports and exercise provided through television, internet; providing information in the fields of fitness training, sports and exercise via a website; online publication of journals in the fields of fitness, nutrition, sports and exercise; entertainment services, namely, providing information in the fields of fitness training, sports, and exercise via a podcast; educational services, namely, conducting lectures, seminars and workshops in the fields of fitness, nutrition, sports and exercise; entertainment in the nature of competitions in the field of fitness; entertainment in the nature of sports competitions; fitness training

Trade Mark:

CROSSFIT

Trade Mark Number:	1522937
Priority Date:	30 October 2012
Goods:	Class 5: Nutritional supplements … dietetic substances for medical use in weight control; protein foods, products, supplements and preparations for use as additives for humans; beverages containing added vitamins and vitamin supplements; beverages containing added minerals, mineral supplements; beverages containing added nutritional supplements; beverages containing added protein supplements
Trade Mark:	CROSSFIT NUTRITION

Trade Mark Number:

1623338

Priority Date:

21 January 2014

Goods:

Class 16: Paper goods and printed matter, namely, a series of books, written articles, handouts and worksheets in the fields of fitness, nutrition, sports and exercise; printed instructional, educational, and teaching materials in the fields of fitness, nutrition, sports and exercise; magazines in the fields of fitness, nutrition, sports and exercise; general feature magazines; exercise books; posters; bumper stickers

Class 28: Exercising equipment, namely, weight lifting bars, dumbbells, medicine balls, climbing ropes, nets for sports, exercise bars; fitness machines and equipment, namely, rowing machines; exercise weights; gymnastic apparatus

Trade Mark:

CROSSFIT

The Applicant

10.     According to the Snape Declaration:

The Applicant is an Australian proprietary company, limited by shares, registered on 21 June 2012 …

‘BossFit’ as a brand was conceived and launched as an invented word in September 2012 by or on behalf of the Applicant to promote health and fitness, initially to the local Brisbane community.

The BossFit brand was inspired by a love of extreme sports, functional fitness, popular Facebook page Boss Hunting … and popular phrase ‘Like a Boss’, a catchphrase often used in memes that feature a person completing an action with authority and finesse.

The two core design concepts of the BossFit brand are ‘bossness’ and physical fitness. …

The Applicant uses for main social media channels to promote the BossFit brand, namely, Facebook, Instagram, Tumblr and Twitter, and to aggregate content relating to its core brand themes of sports, fitness and athletes. …

The Applicant has a strong social media presence under the BossFit Mark, which the Applicant uses to aggregate any content, primarily pictures and videos, related to sports fitness or athletes …

The Applicant has, over the past 4 years, continued to aggregate and celebrate a wide variety of content featuring extreme sports athletes, professional sports men and women, fitness models, adaptive athletes, gymnasts, actors, Olympians and more.

Grounds of Opposition, Onus and Standard of Proof

11. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42, 44, 58, 60 and 62A. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 23 December 2014, being the filing date of the application (‘the Relevant Date’).[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 44

12. Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(1)     …

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)      a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)     a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

13. In the SGP the Opponent nominated the trade marks detailed at para 10 above in respect of s 44 (collectively ‘the Opponent’s Trade Marks’). To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), that is, that at least one of the Opponent’s Trade Marks:

·    has a priority date which is earlier than the Relevant Date (‘the first requirement’); and

·    is registered for services which are similar to the Applicant’s Services, and/or goods which are closely related to the Applicant’s Services. (‘the second requirement’); and

·    is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).

14.     Each of the Opponent’s Trade Marks has a priority date which is earlier than the Relevant Date, thus satisfying the first requirement. The Opponent’s 5598 Trade Mark (CROSSFIT) is registered for services in Class 41 which include fitness training. These services are similar to Applicant’s Services, thus satisfying the second requirement. I now move to consider the third requirement.

Substantially identical or deceptively similar?

15. At the hearing the Opponent indicated that it would be focusing the comparison of the respective trade marks on the Opponent’s 5598 Trade Mark: the reason being that if the requirements of s 44(2) were not satisfied in respect of that trade mark they would not be satisfied in respect of any of the Opponent’s other trade marks. I agree with this assessment.

16.     The Opponent began its submissions with reference to Morny Ltd’s Trade Marks[4] as authority for the proposition that in comparing the trade marks the use of both upper and lower case letters in the Applicant’s Trade Mark should be ignored as the Opponent’s registration allows it to render its trade mark in a similar fashion should it choose to do so. I accept this proposition and proceed on that basis.

[4] (1951) 68 RPC 131.

17.     I will firstly consider whether the Applicant’s Trade Mark is substantially identical to the Opponent’s 5598 Trade Mark. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  Windeyer J said:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]

[5] [1963] HCA 66, [12].

18.     On a side by side comparison there are clear differences between the respective trade marks. The trade marks have a different number of letters, one begins with the word  ‘CROSS’, the other with a ‘BOSS’. These differences alone are sufficient in this case to cause the respective trade marks not to be substantially identical. I move then to consider whether the trade marks are deceptively similar.

19.     Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[6]

[6] [1963] HCA 66, [13].

20.     The Opponent also referred me to the case of Registrar of Trade Marks v Woolworths Ltd[7]as authority for the following considerations:

·to show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient;

·the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether two sets of products or the products and services in question come from the same source;

·in considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the trade marks will be used, the circumstances in which the goods or services will be bought or sold and the character of the probable acquirers of the goods and services.

[7] (1993) 93 FCR 365.

21.     The Opponent also submitted that when comparing two trade marks aurally, it is necessary to consider them in their natural and normal pronunciation[8] and that ‘one must keep in mind the possibility that a word may be slurred’.[9]

[8] Torpedoes Sportswear Pty Ltd v Thorpeodo Enterprises Pty Ltd (2003) 132 FCR 326.

[9] Aristoc Ltd v Rysta Ltd [1945] AC 68.

22.     The Opponent has submitted the following in regarding the comparison of the trade marks:

Comparing the CROSSFIT trade mark 1115598 and the BossFit trade mark side by side, the only difference is that the letters CR have been replaced by the letter B.

The substantial part of both marks is identical being – OSSFIT. …

Phonetically there is a high degree of similarity between the trade marks. Both end with the part FIT and there is little to distinguish CROSS and BOSS.

Similarly there is a high degree of visual similarity between the marks. Both are comprised of two elements CROSS/BOSS and FIT/FIT. In the context of the length of the trade marks they are near identical, being 8 and 7 letters respectively.

The total impression that arises from the comparison is that there is substantial similarity and with only minor difference. …

The Opponent submits deception or confusion is highly likely. A person may be deceived or caused to wonder if BossFit is the same fitness gym or training services they had heard about under the CROSSFIT trade mark. They may imperfectly recollect what the mark they had seen or heard was about.

23.     While the Applicant did not appear at the hearing or file what was specifically written submissions there are parts of the Snape Declaration which are in the nature of submissions. Mr Snape stated:

The dominant or essential element within the overall impression of the CROSSFIT Marks is the word prefix ‘CROSS’. The dominant or essential element within the overall impression of the BossFit Mark is the word prefix ‘Boss’. …

The words ‘Boss’ and ‘Cross’ have completely different natural meanings and convey completely different concepts and the two words ‘Boss’ and ‘CROSS’ are not substantially identical or deceptively similar either visually or orally.

The BossFit Mark and the CROSSFIT Marks contain the same word suffix, namely, the word ‘FIT’. There are hundreds of trade marks registered in class 41 and associated classes with the word suffix ‘FIT’. …

The Applicant believes that the ‘FIT’ word suffix element could not itself be distinctive of the CROSSFIT Marks.

The Applicant believes that the whole words ‘BossFit’ and ‘CROSSFIT’ naturally convey completely different concepts and meanings, that they are phonetically different and that they are not substantially identical or deceptively similar either visually or orally.

24.     I am inclined to a view similar to that of the Applicant. The respective trade marks are concatenations of two words, the second of which is ‘FIT’. This element lacks distinctiveness in respect of the relevant services. The words of Sargant J are also apposite:

But, the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.[10]

[10] Re London Lubricants (1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264, 279.

25.     As suggested by the Applicant, ‘Boss’ and ‘Cross’ have very different meanings and, while there is some aural similarity, overall they are quite different. As was stated in Munn 1, ‘The word ‘Cross’ was selected because the fitness regime is inspired by training in multiple sports in order to improve fitness and performance’. This is a strong element in the trade mark which gives the trade mark an overall impression that was apparently sought when it was coined. This overall impression is quite different to ‘BossFit’.

26.     I am not satisfied that the Applicant’s Trade Mark is deceptively similar to the Opponent’s 5598 Trade Mark—and, by extension, not deceptively similar to the remainder of the Opponent’s Trade Marks. Consequently, the Opponent has failed to establish this ground of opposition.

Section 60

27. The ground based on s 60 of the Act is particularised in the SGP as follows:

As a result of the Opponent’s widespread and extensive use of the CrossFit mark all over the world since at least 1985 and in Australia since at least May 2006, the CrossFit mark has acquired a reputation in Australia before the [Relevant Date].

By reason of the Opponent’s reputation in the CrossFit mark, use of [the Applicant’s Trade Mark] in relation to the Applicant’s Services is likely to deceive or cause confusion.

28. Section 60 of the Act is reproduced below:

Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

29. To establish a ground of opposition under s 60 an opponent must demonstrate that at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.

30.     In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[11] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[12]

[11] [2000] FCA 1335, [81].

[12] [1992] FCA 159, [118].

31. It is not sufficient that the Opponent merely establishes that its trade mark has a significant reputation, I must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[13]

[13] (1937) 58 CLR 641, 658.

32.     The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[14]

[14] [1979] RPC 410, 423 (citations omitted).

33. It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[15]

[15] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.

34.     In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[16]

[16] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

35. Accepting that ‘CrossFit’ has acquired a significant reputation in respect of the services—and the evidence suggests this is so—I am not satisfied that because of that reputation the use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The significant differences between the trade marks discussed in respect of the s 44 ground are not overridden by any reputation which has been acquired as a result of the Opponent’s use of ‘CrossFit’. Consequently, the Opponent has failed to establish this ground of opposition.

Section 42

36. The ground of opposition under s 42 of the Act is particularised in the SGP as follows:

By reason of the Opponent's use of the CrossFit mark as set out above, use of the Applicant's Mark in relation to the Applicant's Services in Australia would mislead or deceive or would be likely to mislead or deceive consumers into believing, and the Applicant would thereby be representing, that:

(a)The Applicant's Services are those of the Opponent; or

(b)The Applicant's Services are of the same kind or quality as those of the Opponent; or

(c)The Applicant's Services are supplied by or under or with the authority of the Opponent, or have the approval of the Opponent; and/or that

(d)The Applicant is the Opponent or has the approval of the Opponent or is associated in trade with the Opponent.

Each of the representations referred to … above is false.

By reason of the matters set out … above, use of the Applicant's Mark would contravene, and would therefore be contrary to, sections 18 and 29 of the Australian Consumer Law being Schedule 2 to the Competition and Consumer Act 2010.

Further, by reason of the matters set out above, use of the Applicant's Mark would result in the Applicant passing off and threatening to pass off:

(a)The Applicant's Services as those of the Opponent; or

(b)The Applicant's Services as being of the same kind or quality as those of the Opponent; or

(c)The Applicant's Services as being supplied by or under or with the authority of the Opponent, or as having the approval or the Opponent; and/or

(d)The Applicant as being the Opponent or as having the approval of the Opponent or as being associated in trade with the Opponent.

37. Section 42 of the Act is reproduced below:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a) the trade mark contains or consists of scandalous matter; or

(b) its use would be contrary to law.

38. It is apparent from the particulars in the SGP that the Opponent is relying on s 42(b). In this case, the onus is on the Opponent to establish that use of the Applicant’s trade mark would be, rather than could be, contrary to law on the balance of probabilities.[17]

[17] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

39. In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[18] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

[18] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

40. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[19] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[20]

[19] [2003] FCA 104, [107].

[20] [1989] FCA 506, [40] (citations omitted).

41.     For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.

Section 58

42. The ground based on s 58 of the Act is indicated in the SGP as follows:

The Opponent has extensively used and advertised the mark ‘CrossFit’ (‘the CrossFit mark’), with additions and without additions (such as ‘CrossFit Nutrition’), in relation to the Opponent's Registered Goods and the Opponent's Registered Services in over forty different countries across the world, and in particular:

(a)    in the United States of America since at least 1985; and

(b)   in Australia since at least May 2006.

The Applicant's Mark is identical or substantially identical to the CrossFit mark.

The Applicant's Services are identical to, or the same kind of thing as, the Opponent's Registered Goods and the Opponent's Registered Services.

The Opponent has used the CrossFit mark in Australia before the priority date of the Applicant's Trade Mark Application (which is 23 December 2014).

By reason of the above, the Opponent is the owner of the trade mark in Australia.

By reason of the above, the Applicant is not the owner of the trade mark in Australia.

43. Section 58 of the Act is reproduced below:

Section 58. Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:For applicant see section 6.

44.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier. It is now well established at law that in order to succeed under this ground of opposition the Opponent must at least establish that the Applicant’s Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent.[21] As indicated in the discussion regarding the s 44 ground of opposition, above, I am not satisfied that this is so. Consequently, the Opponent has failed to establish this ground of opposition.

[21] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

Section 62A

45. In the SGP the ground under s 62A was particularised as follows:

By reason of the Opponent's extensive reputation, or otherwise, the Applicant is or should be aware of the existence of the Opponent, the Opponent's CrossFit mark, and each of the Opponent's Registered Trade Marks being used in relation to the Opponent's Registered Goods and the Opponent's Registered Services.

The Applicant is using or is intending to use the Applicant's Mark in relation to services that are similar to the Opponent's Registered Services and that are closely related to the Opponent's Registered Goods.

By reason of the above, the Applicant appears to be trying to gain an unfair commercial advantage by using marks that are similar to the CrossFit mark and each of the Opponent's Registered Trade Marks in relation to the Applicant's Services in order to trade off the widespread commercial success of the Opponent.

By reason of the above, the Applicant is or should be aware that the owner of the CrossFit mark and each of the Opponent's Registered Trade Marks in Australia is the Opponent.

A reasonable person standing in the shoes of the Applicant would have been aware that they ought not to have applied for the Applicant's Mark in relation to the Applicant's Services.

The Applicant's conduct in filing the Applicant's Trade Mark Application fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

By reason of the above, the Applicant's Trade Mark Application was made in bad faith.

46. Section 62A of the Act is reproduced below:

62A Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

47.     The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

• persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
• persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
• persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

48.     The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards. …

The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[22]

[22] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].

49.     Her Honour continued later in the same decision:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[23]

[23] Ibid [165]-[166].

50.     That the Applicant was aware of one or more of the Opponent’s Trade Marks is not sufficient, without more, to ground a finding of bad faith. I have found the Applicant’s Trade Mark is neither substantially identical nor deceptively similar to any of the Opponent’s Trade Marks. The decision by the Applicant to apply for registration of such a trade mark is unlikely to be regarded as in bad faith by persons adopting proper standards. I am not satisfied that the Applicant’s conduct in applying to register its trade mark was unscrupulous, underhand or unconscientious in character. Consequently, the Opponent has failed to establish this ground of opposition.

Decision

51.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Application 1658603 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

52.     I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Robert Wilson
Hearing Officer
Trade Marks and Designs Hearings
24 July 2017