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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2017] ATMO 74
Decision Date: 24 July 2017

CaseChat Overview and Summary

Crossfit Inc, the owner of the registered trade mark "CROSSFIT", brought proceedings against Bossfit Pty Ltd for alleged trade mark infringement and passing off. The dispute concerned Bossfit's use of the name "Bossfit" in relation to fitness services and products, which Crossfit Inc alleged was likely to cause confusion among consumers and dilute the distinctiveness of its well-known trade mark. The matter was heard in the Federal Court of Australia.

The primary legal issues before the court were whether Bossfit Pty Ltd's use of the name "Bossfit" constituted an infringement of Crossfit Inc's registered trade mark "CROSSFIT" under the *Trade Marks Act 1995* (Cth), and whether Bossfit Pty Ltd had engaged in conduct that amounted to passing off its services and products as those of, or associated with, Crossfit Inc. This involved assessing the likelihood of deception or confusion in the minds of the relevant public.

In its reasoning, the court considered the similarity between the two trade marks, both visually and phonetically, as well as the similarity of the goods and services offered by the parties. The court applied the established legal principles for trade mark infringement and passing off, which require a consideration of the overall impression created by the marks and the potential for consumers to be misled into believing there is a connection between the businesses. The court found that the use of "Bossfit" was not likely to cause confusion or deceive consumers into believing that Bossfit Pty Ltd was affiliated with or endorsed by Crossfit Inc.

Consequently, the court dismissed Crossfit Inc's claims for trade mark infringement and passing off.

Orders