Google LLC v Fit Bet Pty Ltd

[2022] ATMO 132

TRADE MARKS ACT 1995

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

Re:Opposition by Google LLC to registration of trade mark application number 2089047 (Classes 9 and 41) – FitBet – in the name of Fit Bet Pty Ltd.

Delegate:

Blake Knowles

Representation:

Opponent: Miriam Stiel and Brooke Walker of Allens Patent & Trade Mark Attorneys.  

Applicant: Y Intellectual Property.    

Decision:

2022 ATMO 132

Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds of opposition pressed under reg 4.15A and ss 42(b), 43, 44, and 60– ground under s 44 established – registration refused.

Background

1. This is a decision on the opposition by Google LLC (‘Opponent’)[1] to the registration of trade mark application number 2089047 (‘Application’) filed by Fit Bet Pty Ltd (‘Applicant’) on 20 May 2020 (‘Relevant Date’). The Application seeks to register ‘FitBet’ (‘Trade Mark’) for:

   Class 9: Application software; Computer software applications (downloadable); Downloadable software applications (apps); Communication software; Computer software

   (‘Applicant’s Goods’)

   Class 41: Betting services; Wagering services; Arranging of sports competitions; Coaching services for sporting activities; Organisation of sporting activities; Organisation of sports competitions; Sporting activities; Sports training

   (‘Applicant’s Services’)

   [1] The opposition was initially filed by FitBit Inc. However, the trade marks forming the basis of the opposition were subsequently assigned to Google LLC, who requested that the opposition proceed in its name. References in this decision to the Opponent include a reference to both Google LLC and its predecessor FitBit, Inc.  

2. The Application was examined, accepted for registration, and subsequently advertised for opposition on 21 October 2020. The Opponent filed a notice of intention to oppose the Application on 21 December 2020 and a statement of grounds and particulars (‘SGP’) on 21 January 2021. The Applicant filed notice of its intention to defend the Application from opposition on 27 January 2021.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[2] The Opponent filed Evidence in Support (‘EIS’) on 3 May 2021. The Applicant filed Evidence in Answer (‘EIA’) on 24 June 2021. The Opponent did not file Evidence in Reply.

   [2] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4. The parties were given the opportunity to be heard by video conference or written submissions. The Opponent requested to be heard by videoconference. The Applicant did not request to be heard. The matter was heard before me as a delegate of the Registrar on 26 July 2022. The Opponent was represented by Miriam Stiel and Brooke Walker of Allens Patent & Trade Mark Attorneys. I have decided this matter based on the particulars set out in the SGP, the EIS and EIA, and the submissions of the Opponent.  

Grounds and onus

1. The SGP nominates grounds of opposition under reg 4.15A and ss 42(b), 43, 44, 60.

2. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date.[4]

   [3] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

Evidence

1. The following evidence was filed:

   EIS

   Declaration of Meredith Pavia, Trademark Counsel of Fitbit Inc, made on 30 April 2021, with Exhibits MP-1 and MP-2.

   Declaration of Brooke Walker, Senior Trade Mark Practitioner of Allens Patent and Trade Mark Attorneys, made on 30 April 2021, with Exhibit BDW-1.

   EIA

   Declaration of Christopher Cox, Founding Director of the Applicant, made on 23 June 2021, with annexures CC-1 to CC-6.  

EIS

1. Ms Pavia in her declaration declares that the FitBit business was founded in 2007. The goal of the FitBit business was to use innovative technology to help motivate people to improve and maintain physical fitness and lead healthier and more active lifestyles.  

2. Ms Pavia declares that there has been extensive use of FITBIT (‘Opponent’s Mark’) overseas since 2007 and in Australia since 2012. The Opponent’s Mark is used for wearable activity tracking devices and associated services, including software applications, data analytics, motivational tools, personalised insights, and virtual coaching through fitness plans and interactive workouts. The services provided under the Opponent’s Mark also include a social component, such as FitBit Challenges (encouraging users to compete with friends and family) and FitBit Community (including discussion forums on health and well-being related subjects).

3. Ms Pavia provides various metrics for goods and services provided under the Opponent’s Mark including Australian sales numbers, revenue figures, marketing expenditure, and a list of major retail stores where the Opponent’s wearable devices are sold. Also provided are details and annexed examples of advertising and promotion of the Opponent’s Mark in Australia, and numerous references to the Opponent’s Mark in the Australian media.

4. Ms Walker in her declaration details the various FITBIT formative trade marks in other jurisdictions, in addition to providing copies of approximately 60 online articles that refer to the Opponent’s Mark.  Ms Walker also annexes screenshots of the website (‘Applicant’s Website’), the results of a Whois Lookup search for the Applicant’s Website, a copy of the Applicant’s Google Play store page, and a copy of the Applicant’s LinkedIn page.

EIA

1. Mr Cox declares that in 2019, he developed an idea for a fitness application that would allow users to race with their friends virtually and allow wagering on the outcome. The inspiration for the application was to get people moving and appealing to their competitive and social side.

2. Mr Cox declares that he came up with the Trade Mark in early 2019 and that the Applicant was incorporated in June 2019. The FitBet downloadable application (‘App’) underwent software development during 2019. The Applicant’s Website was launched in December 2019 and the App and was launched in January 2020. The App is downloadable for free from the Apple App Store and Google Play store.  

3. Mr Cox declares that the App allows users to create groups with other users and to create bets among users using purchased credits. Mr Cox opines that unlike the application used with the Opponent’s wearable device, the App is standalone and not integrated with any external device.

4. Mr Cox provides details and examples of use of the Trade Mark, including on the Applicant’s Website, Facebook, Instagram, and other promotional activities. The Trade Mark has also been promoted by various professional sportspersons and influencers.

5. Mr Cox declares that since the launch of the App he has not been made aware of or encountered any customer confusion between the Trade Mark and the Opponent’s Mark.

Discussion

Section 44 / Reg 4.15A

1. To establish grounds of opposition under s 44 or reg 4.15A, the Opponent must rely on at least one pending or registered/protected trade mark with a priority date earlier than the priority date of the Application (in this case, the Relevant Date), and which is in the name of a person other than the Applicant. The earlier mark must be filed or registered in respect of one or more of the following: (i) goods that are similar to the Applicant’s Goods, (ii) services that are similar to the Applicant’s Services, (iii) services that are closely related to the Applicant’s Goods, or (iv) goods that are closely related to the Applicant’s Services. Further, the earlier trade mark/s relied on by the Opponent must be either substantially identical or deceptively similar to the Trade Mark.

2. The Opponent relies on numerous registered and protected trade marks comprising or containing the Opponent’s Mark as an essential feature, namely, trade mark registration numbers 1458413, 1497467, 1651545,[5] 1854509, 1875731, 1875732, 1936857, 1983574, and 2043045. However, I consider the following two registered trade marks are the most relevant (‘Opponent’s Registrations’):

   [5] Trade mark numbers 1458413, 1497467, and 1651545 are protected international trade marks with corresponding International Registration numbers 1094793, 1117233, and 1218353.

   Trade Mark Number:               1854509

   Trade Mark:  FITBIT   (‘Opponent’s Mark’)

   Relevant Goods/Services:[6]       Class 9: Computer software     

   [6] Trade mark number 1854509 also covers a range of other goods/services in classes 9, 10, 14, 42, 44, and 45.

   (‘509 Goods’)

   Priority Date:  26 June 2017

Trade Mark Number:               2043045

Trade Mark:     (‘Opponent’s Composite’)

Relevant Goods/Services:[7]       Class 41: Conducting fitness classes; physical fitness conditioning classes; fitness boot camps; yoga classes; boxing and kickboxing fitness classes; providing classes in the fields of fitness and exercise; providing non-downloadable pre-recorded videos featuring athletic and fitness sessions via a website; educational services, namely, conducting seminars, conferences, and workshops in the fields of health and wellness; online journals, namely, blogs featuring commentary, advice and information in the fields of health, wellness, sleep, fitness and nutrition (non-downloadable); entertainment services; education services; health coaching services, namely, providing personal coaching services in the fields of diet, nutrition, wellness, fitness, mental health, and chronic medical condition management; health care coaching services offering calls or chats, notifications, the ability to track activities, incentive management solutions and wellness challenges; health coaching, namely, physical fitness consultation; providing personalized wellness and health coaching services; health coaching services in the field of wellness promotion, disease and condition management; personalised health coaching; providing health coaching services 

(‘045 Services’)

Priority Date:  10 October 2019

[7] Trade mark number 2043045 also covers a range of other goods/services in classes 9, 10, 14, 41, 42, and 44.

1. I will first address whether there is any similarity or close relationship between the respective goods and services of the Application and the Opponent’s Registrations.  

2. Goods will be considered similar to other goods, and services will be considered similar to other services, if they are either the same or ‘of the same description’.[8] The test for determining whether goods or services are of the same description as other goods or services is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods or services being considered, their respective purposes, and the trade channels through which they are commonly provided, with no single factor being determinative.[9]

   [8] Trade Marks Act 1995 (Cth), s 14.

   [9] Re Jellinek’s Application (1946) 63 RPC 59, 70.

3. Whether services are closely related to goods (or vice versa) involves different considerations. In Kicking Horse Coffee Co. Ltd, Hearing Officer Brown summarised the authorities as follows:

   The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:

   The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…

   In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:

   It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

   In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’. Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.[10]

   [10] [2018] ATMO 193, [19]-[21] (citations omitted).

4. The Applicant’s Goods consist of various claims for computer software. The 509 Goods also contain a broad claim for software, which is not subject to any limitation. This means the 509 Goods encompass the various software claims of the Applicant’s Goods. As such, I consider that the Applicant’s Goods are the same as the 509 Goods.

5. The Applicant’s Services can be divided into three main categories:

   (i)Coaching services for sporting activities; sports training

   (ii)Organisation of sporting activities; organisation of sports competitions; arranging of sports competitions; sporting activities

   (iii)Betting services; wagering services

6. With regards to the category (i) services, these are of the same description as the following services included in the 045 Services: health coaching services, namely, providing personal coaching services in the fields of diet, nutrition, wellness, fitness, mental health, and chronic medical condition management and health coaching, namely, physical fitness consultation. Each of the respective services involves the education of other persons in physical fitness, and the 045 Services are also broad enough to include the provision of fitness coaching specifically in relation to sporting activities.

7. With regards to category (ii), these claims are broad enough to encompass services that are of the same description as the various fitness class and bootcamp services contained in the 045 Services. It is common for gymnasiums and bootcamp operators to organise fitness related competitions and activities (such as ‘challenges’ conducted over a set period of time). In such cases, the respective services are offered through the same trade channels to the same customers for a similar purpose. While the fundamental nature of the respective services may be somewhat different, the similarities in the trade channels and purpose of the respective services in promoting physical fitness are sufficient to render them as being ‘of the same description’. I note my assessment may have been different if the Applicant’s Services included a more specific claim for the organisation and arrangement of particular types of sporting activities and competitions rather than a general claim encompassing all types of sporting activities.

8. With regards to category (iii), I note that the 509 Goods notionally cover all types of computer software. This includes computer software for betting and wagering. Online sports betting and wagering services are now almost universally accessible by downloadable applications. Further, online bookmakers offer a range of benefits and features to gamblers via their downloadable applications to entice new customers and retain their existing customer base in a highly competitive market. The advertisement of these applications and their features by online bookmakers is now a ubiquitous feature of live sports broadcasting. While not all services that are accessible or facilitated by downloadable applications will be considered closely related to a claim for software in Class 9, the relationship between downloadable applications and betting and wagering services is especially close. For this reason, and in the absence of any submissions to the contrary, I consider that computer software in the 509 Goods (which would include downloadable applications for betting and wagering) is closely related to category (iii) of the Applicant’s Services.  

9. As I am satisfied that the Applicant’s Goods and the Applicant’s Services are either similar or closely related to the 509 Goods or the 045 Services, I must now determine whether the Trade Mark is either substantially identical with, or deceptively similar to, either of the Opponent’s Registrations.   

10. The test for whether two marks are substantially identical requires that they 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.[11]

    [11] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

11. I am satisfied that the Trade Mark is not substantially identical with either the Opponent’s Mark or the Opponent’s Composite. While both marks have appreciable similarities, the second word of each mark has a different meaning. As such, I cannot conclude that a total impression of resemblance emerges from a side by side comparison between the Trade Mark and the Opponent’s Mark and/or the Opponent’s Composite.

12. The test for whether trade marks are deceptively similar requires that one trade mark so nearly resemble another that it is likely to deceive or cause confusion.[12] In determining deceptive similarity, I am guided by the following principles:

-There must be a real, tangible danger of confusion, not just a mere possibility.[13]

-Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[14]

-The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[15] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[16]

-Consumers may retain an imperfect recollection of a mark or its essential features.[17]

-It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[18]

-The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[19]

-It must be considered how the goods or services are ordinarily sold or provided.[20]

[12] Trade Marks Act 1995 (Cth) s 10.

[13] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

[14] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

[15] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

[16] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

[17] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

[18] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

[19] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

[20] Ibid.

1. The essential feature of both the Opponent’s Mark and the Opponent’s Composite is FITBIT. This six-letter word is identical to the Trade Mark aside from the different vowel forming the fifth letter. Given that ‘e’ and ‘i’ are aurally similar vowels appearing in the second part of each mark, they are more apt to be slurred or mispronounced when each trade mark is used aurally. While not all consumers who see or hear the respective trade marks would be confused, I consider it is more likely than not that a significant number of consumers relying on imperfect recollection may be caused to wonder whether the Trade Mark is the Opponent’s Mark or is associated with the Opponent in some way. I also consider that the presence of a device element in the Opponent’s Composite, while visually prominent, does not sufficiently reduce the potential for confusion with the Trade Mark given the word FITBIT is the most memorable essential feature of that particular registration.

2. For the reasons given above, I am satisfied that the Opponent has prima facie established a ground of opposition under s 44. I also do not have the benefit of any submissions from the Applicant that the Trade Mark should be registered on the basis of prior continuous use (s 44(4)) or honest concurrent use or other circumstances (s 44(3)).

3. For the sake of completeness, I note that the first use of the Trade Mark in the course of trade that is discernible from the EIA appears to be after the priority date of both of the Opponent’s Registrations. As such, the provisions of s 44(4) cannot apply. Similarly, the EIA indicates that the first use of the Trade Mark by the Applicant is only six months prior to the Relevant Date. No metrics are provided in the EIA on which to objectively determine the extent of the use, and no information has been provided regarding any due diligence undertaken by the Applicant prior to launching the Applicant’s Website in December 2019 and the App in January 2020. As such, the EIA does not disclose a compelling case for registration on the basis of honest concurrent use or other circumstances.      

4. As I have found that a ground of opposition is established under s 44 in respect of all the Applicant’s Goods and Applicant’s Services, there is no need for me to consider other grounds. However, I note the Opponent also had cogent arguments under s 60, given the extent of the reputation in the Opponent’s Mark established by the EIS, and the similarity between the trade marks of the parties.

Decision and costs

1. The Opponent has established a ground of opposition. As such, I have decided to refuse the Application. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition will be for the court.

2. The Opponent has requested an award of costs in its favour. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicant.

Blake Knowles

Hearing Officer

Delegate of the Registrar of Trade Marks

9 August 2022