iFIT Inc v Shanghai Sweat Technology Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by iFIT Inc to registration of trade mark application number 2151317 (classes 9, 28) – cosweat – in the name of Shanghai Sweat Technology Ltd

Delegate: Nicholas Barbey

Representation: Opponent: Malcolm Bell of Phillips Ormonde Fitzpatrick
Applicant: Trade Mark Zone Pty Ltd

Decision: 2023 ATMO 195
Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44 and 60 pursued – none established – trade mark may proceed to registration
Background

This decision concerns an opposition brought by iFIT Inc (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade mark:  cosweat (‘Trade Mark’)
Application number:              2151317
Owner:  Shanghai Sweat Technology Ltd (‘Applicant’)
Filing date:  26 January 2021
Specification:  Class 9: computer software applications (downloadable); pedometers; scales; speaking tubes; surveying chains; tape recorders; surveying instruments; breathing apparatus for underwater swimming; sunglasses; electrical sensors
Class 28: radio controlled model boats; caps for pistols (toys); christmas novelties; balls for games; body-building apparatus; surf skis; swimming pools (play articles); in-line roller skates; shaped padding for protecting parts of the body (specially made for use in sporting activities); twirling batons
(‘Goods’)
The acceptance of the Trade Mark for possible registration was advertised on 27 June 2021. The Opponent filed a notice of intention to oppose on 26 August 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 24 September 2021. The Applicant filed a notice of intention to defend on 30 November 2021.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant did not file evidence in answer. An oral hearing was requested and submissions were filed by the Opponent on 1 September 2023 (‘Submissions’). The Applicant did not file submissions and took no further part in this proceeding.
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 15 September 2023. Malcolm Bell of Phillips Ormonde Fitzpatrick presented oral submissions on behalf of the Opponent.
Grounds of opposition, onus and standard of proof
Grounds of opposition under ss 42(b), 44, 59 and 60 of the Act were nominated in the SGP. However, the Submissions stated that the ground under s 59 was not pressed.[1] As such, I treat that ground as abandoned.
[1] Submissions, [5].
To be successful, the Opponent bears the onus of establishing at least one of the nominated grounds.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 26 January 2021 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:

EIS

· Declaration made on 22 February 2022 by Everett Smith (Secretary and General Counsel of the Opponent) with Exhibits A to E (‘Smith Declaration’).

· Declaration made on 23 February 2022 by Tobias Pearce (Chief Executive Officer of The Bikini Body Training Company Pty Ltd) with Exhibits A to X (‘Pearce Declaration’).

As a preliminary observation, each declaration filed contains a blanket statement that its contents are confidential.[4] This statement does not reconcile with the discussion of publicly available records and information that occurs within each declaration. Plainly, the Opponent has an interest in preserving its confidential information. However, the Registrar must provide reasons for her findings. In discharging this duty, information claimed to be confidential may require discussion. This is particularly relevant when no effort has been made to identify the allegedly confidential information. Accordingly, if this decision inadvertently discloses commercially sensitive information, then any such disclosure has arisen by the Opponent’s failure to specifically identify the information as confidential.
EIS
[4] Pearce Declaration, [3]; Smith Declaration, [3].
According to the Smith Declaration, the Opponent is ‘one of the largest health and fitness companies in the world’[5] and it acquired The Bikini Body Training Company Pty Ltd (‘BBTC’) in July 2021. BBTC is described as the ‘owner and operator of the SWEAT business, a leading digital fitness app and platform aimed at females’.[6] The Opponent’s acquisition of BBTC included its ‘goodwill in the business and BBTC’s trade marks’.[7] Mr Smith confirms that ‘BBTC is now wholly owned by the Opponent’, ‘operates as a subsidiary of the Opponent’ and is under the Opponent’s exclusive control.[8]
[5] Smith Declaration, [7].
[6] Ibid [9].
[7] Ibid.
[8] Ibid [10].
The Opponent is the owner of various Australian trade mark registrations that incorporate the word ‘sweat’[9] including the following registration:[10]
[9] See Australian trade mark registrations 903464, 903658, 1458064, 1650390, 1885187, 2203178, 2234590.
[10] The full specification of trade mark registration 1885187 is set out in Annexure A to this decision.

Number

Trade mark

Specification

Priority date

1885187

(‘87 Mark’)

Class 9: (including) electronic publications (downloadable); downloadable software applications (apps); sunglasses

Class 16: (including) printed matter

Class 21: (including) containers for food; water bottles (containers)

Class 24: towels (textile)

Class 25: (including) apparel (clothing, footwear, headgear)

Class 27: yoga mats; gymnasium mats

Class 28: (including) exercise apparatus

Class 41: (including) health club services (health and fitness training)

Class 44: advisory services relating to diet; fitness testing

6 November 2017

Mr Smith declares that BBTC had established a significant reputation in the word ‘SWEAT’ simpliciter (‘Word Mark’) and the 87 Mark (together ‘Opponent’s Marks’), prior to being acquired by the Opponent.
According to the Pearce Declaration, BBTC is ‘the Opponent's predecessor in title and exclusive authorised user of the Opponent’s SWEAT trade marks in Australia’.[11] BBTC was founded by Kayla Itsines and Mr Pearce and, since 2013, it ‘has provided health and fitness services to consumers in Australia and across the world’.[12] Mr Pearce explains that BBTC provides ‘home based fitness routines’ and it ‘experienced rapid growth in a very short period of time’ due to its relatable content.[13]
[11] Pearce Declaration, [1].
[12] Ibid [8].
[13] Ibid.
It is declared that BBTC commenced using the trade mark ‘SWEAT WITH KAYLA’ in 2015 and, soon after its launch, this trade mark ‘began being shortened by both BBTC and consumers alike, to SWEAT’.[14] To support this, reference is made to the November 2016 launch of the ‘Sweat website’ accessible at (‘Website’) as well as the ‘Sweat World Tour which occurred at around the same time’.[15] Mr Pearce confirms that ‘on 14 May 2017, SWEAT BY KAYLA was officially re-branded to SWEAT, such that BBTC’s core house brand became SWEAT’.[16]
[14] Ibid [12].
[15] Ibid.
[16] Ibid.
The Pearce Declaration states that BBTC has continuously used the Word Mark both domestically and abroad since at least November 2016. In Mr Pearce’s estimation, the Opponent’s Marks ‘had developed a significant and widely recognised reputation’ prior to July 2021.[17] This reputation is allegedly ‘demonstrated by the significant purchase price for which BBTC was sold to the Opponent’ as well as by the substantial use made of the Opponent’s Marks ‘across every facet’ of BBTC’s business.[18] This includes use of the Opponent’s Marks on BBTC’s social media accounts, merchandise and app.
[17] Ibid [15].
[18] Ibid [16], [19].
Mr Pearce contends that the reputation of the Opponent’s Marks may also be inferred from the fact that Ms Itsines ‘was in 2017 recognised by Forbes as the world’s top fitness influencer’.[19] That is, as an influencer, Ms Itsines amplified the exposure of the Opponent’s Marks given she is the co-founder, ‘head trainer and public face of the Sweat business’ and promotes herself as such to her followers.[20] Similarly, the reputation of the Opponent’s Marks is said to be illustrated by the sheer number ‘of media articles recognising the breadth of BBTC and the Opponent's reputation in SWEAT, across Australia and the world’.[21]
Discussion
[19] Ibid [32].
[20] Ibid [30].
[21] Ibid [40].
Section 44
Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
To establish this ground, the Opponent must identify a pending or registered trade mark which satisfies the following requirements:
(i)it is in the name of a person other than the Applicant;
(ii)it has a priority date which is earlier than the Relevant Date;
(iii)it is in respect of goods and/or services which are similar and/or closely related to the Goods; and
(iv)it is substantially identical with, or deceptively similar to, the Trade Mark.
The SGP nominated the 87 Mark as supporting this ground of opposition. The 87 Mark is in the name of another person and has a priority date which is earlier than the Relevant Date. The 87 Mark has registered claims for, inter alia, ‘downloadable software applications (apps)’ and ‘exercise apparatus’. Products of this nature are similar to at least some of the Goods which include ‘computer software applications (downloadable)’ and ‘body-building apparatus’.[22] Requirements (i), (ii) and (iii) detailed above are satisfied.
[22] For reasons that will become apparent, it is not necessary to determine the precise scope of goods and/or services which conflict between the 87 Mark’s registered claims and the Goods.
Turning to requirement (iv) set out at [17] of this decision, the test for determining ‘substantial identity’ was articulated by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
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.[23]
[23] [1963] HCA 66, [12] (‘Shell’).
The trade marks are reproduced below:

87 Mark Trade Mark

cosweat

A side by side comparison of the trade marks reveals clear dissimilarities. The 87 Mark is five letters long whereas the Trade Mark is seven letters in length. The beginning of each trade mark differs and the 87 Mark incorporates a device element and is rendered in a stylised font. Conversely, the Trade Mark contains no device element or embellishments. These differences lead to a total impression of dissimilarity emerging from the relevant comparison. As such, the trade marks are not substantially identical.
Section 10 of the Act provides that ‘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’. The assessment of deceptive similarity was considered in Shell by Windeyer J who said:
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 [mark].[24]
[24] Ibid [13].
The crux of the Submissions is that the trade marks contain the same essential feature – namely, the word ‘sweat’. The Opponent asserts that consumers would pronounce the Trade Mark as ‘co-sweat’ and emphasised that ‘co’ has ‘an identifiable meaning to ordinary Australian consumers as “together” / “jointly” or as an abbreviation for the word “company”’.[25] In its view, these factors increase the likelihood of deception or confusion occurring. Reliance was placed on Caterpillar Inc v Puma SE (‘Caterpillar’)[26] as well as Samuel Smith & Son Pty Ltd v Southern Vintners & Negociants Pty Ltd (‘Vintners’)[27] and Annco Inc v Peter Sheppard Footwear Pty Ltd (‘Annco’),[28] which the Opponent submits are analogous to the present proceeding.
[25] Submissions, [41].
[26] [2021] FCA 1014 (O’Bryan J) (‘Caterpillar’), affd [2022] FCAFC 153 (Nicholas, Rofe and McElwaine JJ).
[27] [2021] ATMO 97 (‘Vintners’).
[28] [2020] ATMO 159 (‘Annco’).
In my assessment, the trade marks are not deceptively similar. Visually, the 87 Mark begins with ‘sw’ which plainly differs to the ‘co’ that the Trade Mark commences with. This immediate visual distinction is significant given the first part of a trade mark is generally the most important for comparative purposes.[29] The proposition that the Trade Mark should be construed as essentially two separate words, being ‘co’ and ‘sweat’, is not compelling because the Trade Mark is depicted in uniform lettering and its visual impact resides in the entirety of the mark. It is not an obvious conjoining of two words wherein the identity of each is retained. No evidence has been adduced to suggest that ‘co’ should be isolated or discounted based on
[29] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264, 279 (Sargant LJ).
[30] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864 (Burchett J).
non-distinctiveness. In short, the identity of ‘sweat’ has been absorbed and the Trade Mark is likely to be apprehended as ‘a new word with a new meaning’.[30] In this regard, the 87 Mark can be further differentiated from the Trade Mark given the former incorporates a device element and the latter does not.
The trade marks are also conceptually distinct. The 87 Mark is comprised of the dictionary defined word ‘sweat’ accompanied by a device which may be characterised as a bead of sweat. The 87 Mark thus imparts the idea of moisture excreted from the skin. By contrast, the Trade Mark presents as an invented word with no intelligible meaning. In my opinion, consumers are highly unlikely to interpret ‘co’ as an abbreviation of ‘company’ when it is positioned at the start of the Trade Mark and affixed to additional letters. Even if ‘co’ was separately discerned, the alleged idea of ‘together sweat’ or ‘jointly sweat’ is nebulous at best. The Submissions merely list words that include ‘co’ as a prefix (e.g., ‘copilot’, ‘coworker’) and state that ‘co’ indicates a partnership.[31] The Opponent did not develop this allegation and I find it unpersuasive. Consequently, the trade marks convey dissimilar ideas.
[31] Submissions, [25].
Undeniably, ‘sweat’ forms an essential feature of the 87 Mark and this word is contained in the Trade Mark, albeit as part of a larger word. This underlying commonality gives rise to a potential aural similarity insofar as the Trade Mark could be articulated as ‘co-sweat’. However, this aural impression largely relies on the Trade Mark being perceived as the word ‘sweat’ to which ‘co’ has been added. For the above discussed reasons, this is not an obvious feature of the Trade Mark.[32] In my consideration, it is equally plausible that the Trade Mark could have an alternate pronunciation such as ‘COS-WEET’. The equivocal nature of the Trade Mark means that any potential aural similarity is unlikely to overwhelm, or would cause consumers to overlook, the striking visual and conceptual differences between the trade marks.
[32] Cf Caterpillar (n 26) [39].
The authorities referenced in the Submissions do not assist the Opponent. Caterpillar involved the comparison of ‘procat’ with ‘CAT’. In finding that these marks were deceptively similar, O’Bryan J noted that ‘pro’ was a ‘colloquially accepted abbreviation for the word professional’[33] and there was evidence that ‘procat’ had been shaded to demarcate ‘pro’ and ‘cat’ or used ‘with a capital “p” and a capital “c”’.[34] Hence, O’Bryan J was satisfied that consumers would be caused to wonder if goods labelled with ‘procat’ were ‘a “professional” or high performance or otherwise special line of CAT goods’.[35] Even if I were to treat the Trade Mark as being ‘co sweat’, the present circumstances are nevertheless distinguishable. First, unlike ‘pro’, the word ‘co’ is not ordinarily used at the start of a trade mark to denote the quality or specific line of a product or service. As such, the Trade Mark does not readily convey any logical connection to the goods bearing the 87 Mark nor does it possess an identifiable meaning. Second, there is no evidence before me that the Applicant uses the Trade Mark in a manner which supports the Opponent’s position. Meanwhile, both Vintners and Annco involved trade marks containing clearly delineated words (i.e., ‘Southern Vintners & Negociants’ v ‘NEGOCIANTS’[36] and ‘The Slumber Loft’ v ‘LOFT’[37]). In contrast, the present proceeding involves the comparison of a mark allegedly within a mark. Therefore, neither decision is analogous.
[33] Caterpillar (n 26) [109].
[34] Ibid [113].
[35] Ibid [111].
[36] Vintners (n 27).
[37] Annco (n 28).
For the above reasons, I am not satisfied that there is a real, tangible danger of deception or confusion occurring between the 87 Mark and the Trade Mark. I have considered the doctrine of imperfect recollection and the potential for careless pronunciation. In this case, these considerations tend to further diminish the likelihood for deception or confusion because it is typically the end part of a mark that is recalled incorrectly or slurred. For instance, the Trade Mark may be imperfectly recalled or mispronounced as ‘cos-we’ or ‘co-seat’. However, it is highly improbable that a consumer would omit ‘co’ since it is the beginning of the Trade Mark. It is even more remote that consumers would then imperfectly recall the Trade Mark as, for example, the ‘something sweat’ mark.
The s 44 ground of opposition has not been established.
Section 60
Section 60 of the Act relevantly provides:
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.
To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
This ground was relevantly particularised in the SGP as follows:
The Opponent’s subsidiary, The Bikini Body Training Company Pty Ltd (BBTC) has been prominently and continuously trading under the brand ‘SWEAT’ since 2015, well before the [Relevant] Date. This brand is primarily used in relation to an online fitness instruction service and associated software applications …
The Opponent believes that, in light of:
- the reputation and prominence of the ‘SWEAT’ brand;
- the similarity between the ‘SWEAT’ brand and the [Trade] Mark; and
- the nature of the [Goods], many of which are related to software and/or exercise,
use of the [Trade] Mark by the Applicant would be likely to deceive or cause confusion.

The Submissions rely on the Opponent’s Marks as underpinning this ground of opposition. As a preliminary observation, I note that each trade mark must be considered and assessed separately for the purposes of s 60 of the Act.[38] As such, even if the evidence establishes that a reputation exists for a trade mark comprised of a word and a device, it does not follow that a reputation also exists for the word or device independently.
[38] See, eg, Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O’Bryan J); Qantas Airways Ltd v Edwards [2016] FCA 729, [160] (Yates J).
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[39] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[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 ... .[40]
[39] [2000] FCA 1335, [81] (‘McCormick’).
[40] [1992] FCA 159, [118] (‘ConAgra’).
Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[41]
[41] McCormick (n 39) [86].
In Monster Energy Company v Mixi Inc, Stewart J explained that:
The quantum of sales, advertising and promotions contribute to the “recognition” component of reputation. The credit, image and values projected by a trade mark attach to the “esteem” component of the reputation, as do the public events and other traders’ marks with which the owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, and so forth.
It has long been recognised that brand recognition, and therefore reputation of a trade mark, does not depend on direct advertising. Indirect advertising strategies are adopted precisely because they are effective, and in considering the reputation of a mark indirect advertising must be given proper consideration.[42]
[42] [2020] FCA 1398, [16]–[17] (citations omitted).
The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[43] Meanwhile, the existence and extent of the asserted reputation must be established as a matter of fact by the Opponent.[44]
[43] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[44] ConAgra (n 40) [77].
Fitness training services are provided both online and in-person. The former is often provided via apps, while the latter includes group classes as well as one on one training. The relevant market is not specialised because these services would be sought by a diverse range of individuals with different ages, fitness levels and health goals. That being so, the relevant market here is essentially ‘the entire Australian population from early teenage years onwards’.[45]
[45] Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
In my assessment, the EIS establishes that each of the Opponent’s Marks had acquired a reputation in Australia before the Relevant Date. At the outset, I acknowledge that the evidence shows different trade marks being used[46] and contains examples that are undated or which postdate 26 January 2021.[47] However, none of these shortcomings are fatal. For the reasons that follow, I am satisfied that the Word Mark and the 87 Mark had acquired a reputation in relation to fitness training services and a fitness training app before the Relevant Date.
[46] See, eg, Pearce Declaration, Exhibit B which demonstrates use of the mark ‘SWEAT WITH KAYLA’.
[47] See, eg, Smith Declaration, Exhibit C; Pearce Declaration, Exhibit G.
The EIS reveals extensive use of the Opponent’s Marks in Australia since November 2016. The Opponent’s Marks have appeared in well-known publications such as Cosmopolitan, Australian Women’s Health, Vogue and the Australian Financial Review. They are used on the Opponent’s merchandise, the Website and are prominently featured on the ‘Sweat’ app. The latter is especially noteworthy given the ‘Sweat’ app has been described as ‘one of the world’s largest digital fitness training platforms’ which has ‘been downloaded more than 30 million times’.[48] Furthermore, the Opponent’s Marks have been continuously promoted on the Opponent’s social media accounts. Whilst the precise number of followers before the Relevant Date have not been provided, based on the number of followers for each account as at February 2022,[49] it is reasonable to infer that they enjoyed a sizeable following prior to the Relevant Date.
[48] Pearce Declaration, Exhibit C. This figure was provided as at July 2021. Given its proximity to the Relevant Date, it may be reasonably inferred that the ‘Sweat’ app enjoyed a considerable number of downloads as at the Relevant Date.
[49] Ibid Exhibit F. The ‘Sweat’ Instagram account had 1 million followers and the ‘Sweat’ YouTube account had over 14 million views.
The exposure of the Opponent’s Marks have been further elevated through partnerships with fitness influencers who are ‘trainers exclusively associated with the Opponent’s Sweat business’.[50] In particular, Ms Itsines is the ‘head trainer and public face of the Sweat business’,[51] who promotes the Opponent’s Marks on her personal social media accounts, each of which have a substantial number of followers.[52] This, of course, is unsurprising given her status as one of the world’s top fitness influencers. Other ‘Sweat’ trainers, such as Kelsey Wells and Stephanie Sanzo, who each have over 2 million Instagram followers, also promote the Word Mark on their personal social media accounts.
[50] Ibid [36].
[51] Ibid [30].
[52] Ibid Exhibit M. As at February 2022, Ms Itsines had approximately 28 million followers on Facebook and 14 million followers on Instagram.
The Opponent provided revenue figures, both worldwide and Australia specific, in connection with its use of the Opponent’s Marks. The monthly figures disclosed are significant and indicate consistent sales prior to the Relevant Date. Similarly, the EIS details monthly installations of the ‘Sweat’ app in Australia together with the number of paying members the ‘Sweat’ app has in Australia. The installation and membership figures preceding the Relevant Date are substantial. The ‘estimated marketing expenditure (worldwide) in connection with the SWEAT App’[53] has also been supplied. Again, the figures disclosed are considerable. Although the annual marketing figures have not been disaggregated into expenditure relating specifically to the Australian market, even if only a small fraction of the expenditure is attributable to Australia it would still constitute a considerable outlay.
[53] Ibid [42].
For the above reasons, the EIS establishes that there was widespread use of the Opponent’s Marks throughout Australia before the Relevant Date. Accordingly, I am satisfied that, as at 26 January 2021, each of the Opponent’s Marks had acquired a reputation in respect of fitness training services as well as a fitness training app among a significant number of Australian consumers for the purposes of s 60(a) of the Act.
Pursuant to s 60(b) of the Act, consideration now turns to whether use of the Trade Mark would be likely to deceive or cause confusion because of the reputation enjoyed by each of the Opponent’s Marks.
Likely to deceive or cause confusion
The concepts of ‘deceived’ and ‘confusion’ were considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:
“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.[54]
[54] [1979] RPC 410, 423 (citation omitted).
The ‘test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient that consumers might wonder whether the respective goods might be connected in the course of trade’.[55] It has been observed that ‘the threshold for confusion is not high’.[56] Further, a ground of opposition under s 60 ‘is not based on the requirement that the allegedly conflicting marks are substantially identical or deceptively similar. The question is purely one of prior reputation’.[57] Nevertheless, it has been recognised that:
Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[58]
[55] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [84(e)] (O’Bryan J).
[56] Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[57] Qantas Airways Ltd v Edwards [2016] FCA 729, [142] (Yates J).
[58] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (emphasis in original).
I have found that the Trade Mark is not deceptively similar to the 87 Mark under the s 44 ground of opposition. By itself, this finding is not dispositive of the ground of opposition under s 60 of the Act particularly given reliance has also been placed on the Word Mark. The Opponent submits that the absence of a shared prefix between the trade marks does not diminish the likelihood of deception or confusion. To support this, reference was made to Société des Produits Nestlé S.A. v Marks (‘Nestlé’)[59] as well as Sojo Pty Ltd v Wills (‘Sojo’).[60] In Nestlé, the ‘degree of similarity’ between ‘INSPERESSO’ and ‘NESPRESSO’ was sufficient to establish a ground of opposition under s 60 of the Act despite an explicit finding that the marks were not deceptively similar.[61] Similarly, in Sojo, the delegate commented that the differences between ‘TRADIE’ and ‘Just aTradie’ may ‘potentially be enough for the trade marks not to be considered deceptively similar’.[62] Nevertheless, the delegate concluded that they were not ‘so conspicuous that they would create an overall impression dissimilar enough to avoid confusion’ under s 60 of the Act.[63]
[59] [2014] ATMO 3 (‘Nestlé’).
[60] [2021] ATMO 67 (‘Sojo’).
[61] Nestlé (n 59) [33]–[34].
[62] Sojo (n 60) [32] (emphasis added).
[63] Ibid [33].
On balance, I am not satisfied that the nature and extent of the reputation enjoyed by either of the Opponent’s Marks is such that it overshadows the pronounced differences between these trade marks and the Trade Mark. For the reasons discussed in relation to the s 44 ground of opposition, the trade marks retain a very low degree of similarity when consideration is given to the visual, conceptual and, to a lesser extent, aural differences that exist. It is true that the Goods contain a claim for ‘computer software applications (downloadable)’. Thus, the Trade Mark will be notionally used in relation to identical goods for which each of the Opponent’s Marks enjoy a reputation. However, in circumstances where the trade marks are quite different, this consideration does not heighten the potential for deception or confusion beyond that of a mere possibility.
Furthermore, I have considered Nestlé and Sojo. Obviously, each decision is based on its own merits and thus only limited guidance can be drawn from either decision. Be that as it may, the following observations are relevant in distinguishing these decisions from the present proceeding. In Nestlé, the marks under consideration were both coined terms and shared a strong degree of visual similarity. The opponent had also been using the mark in Australia for 15 years and its reputation was characterised as being a ‘long standing reputation’.[64] Here, neither of the Opponent’s Marks are an invented term and the Opponent has only used same for just over 4 years prior to the Relevant Date. As regards to Sojo, the opponent had been using the mark in Australia for some 8 years which, again, is significantly longer than the period of use currently under consideration. Crucially, the construction of the relevant mark in Sojo, in which emphasis evidently fell on the common element,[65] clearly differs to the Trade Mark which does not involve an obvious running together of two known words. As such, neither decision assists the Opponent.
[64] Nestlé (n 59) [23].
[65] Sojo (n 60) [32]. The delegate was satisfied that ‘the element ATRADIE would be viewed, heard, and understood as “a tradie”, with the Trade Mark as a whole understood as the phrase, “Just a Tradie”’.
Accordingly, I am not satisfied that there is a real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers.
The s 60 ground of opposition has not been established.
Section 42
Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than could be, contrary to law.[66]
[66] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The SGP identified s 18 of the Australian Consumer Law (‘ACL’) in Schedule 2 of the Competition and Consumer Act 2010 (Cth) as well as the tort of passing off as underpinning this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive. The test under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[67] As the Opponent has failed to establish the s 60 ground of opposition, the Opponent has likewise failed to establish that the use of the Trade Mark would be contrary to s 18 of the ACL.
[67] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36].
With respect to passing off, the observations of Hill J addressing the relationship between s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) and passing off in Equity Access Pty Ltd v Westpac Banking Corporation are relevant:
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.[68]
[68] [1989] FCA 506, [40] (emphasis added).
Section 18 of the ACL is the equivalent of s 52 of the TPA.[69] As I have found that s 18 of the ACL would not be contravened, I am satisfied that use of the Trade Mark would not amount to passing off.
[69] Primary Health Care Ltd v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J). His Honour observed that ‘s 18 of the ACL replaced s 52 of the TPA and the provisions are in identical terms’.
The s 42(b) ground of opposition has not been established.
Decision
Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has not established a ground of opposition. It follows that trade mark application 2151317 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
The Applicant has sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
29 November 2023

Annexure A
Trade mark number:               1885187
Trade mark:
Owner:  Opponent
Priority date:  6 November 2017
Specification:  Class 9: electronic publications (downloadable); electronic publications including those sold and distributed online; smart watches; video recordings; downloadable software applications (apps); sunglasses; compact discs containing recorded video; video compact discs; pre-recorded dvds; pre-recorded discs for reproducing sound
Class 16: printed publications relating to outdoor sporting activities; printed matter; printed matter for advertising purposes; printed matter for instructional purposes; books; magazines (periodicals); instructional materials (other than apparatus); display banners made of cardboard; display banners of paper; journals; printed training guides
Class 21: coffee mugs; plastic water bottles; containers for food; water bottles (containers)
Class 24: towels (textile)
Class 25: apparel (clothing, footwear, headgear); headgear for wear; sports headgear (other than helmets); exercise wear; shoes for sports wear; sports caps; sports clothing (other than golf gloves); sports footwear; sportswear
Class 27: yoga mats; gymnasium mats
Class 28: jump ropes (skipping ropes); fitness apparatus; exercise apparatus, other than for medical rehabilitative purposes; apparatus for playing sports; articles for exercising the body (other than for medical purposes); bags adapted for sporting articles; gymnastic articles; bags adapted to carry gymnastic articles; fitness exercise appliances; indoor fitness apparatus (other than for medical purposes)
Class 41: boot camp services (fitness training); conducting fitness classes; fitness and exercise clinics, clubs and salons; health club services (health and fitness training); instruction in physical fitness; operation of physical fitness centres; personal trainer services (fitness training); physical fitness instruction; physical fitness training services; physical fitness tuition; providing online videos, not downloadable; weblog (blog) services (online publication of journals or diaries); arranging of sporting events; event management services in relation to the organisation of educational, entertainment, sporting or cultural events; organisation of promotions (sporting events); providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of sporting events; provision of sporting facilities; publication of electronic books and journals online; provision of exercise facilities; providing online electronic publications (not downloadable)
Class 44: advisory services relating to diet; fitness testing
Endorsements:  Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

and Edelman JJ).

Delegate:	Nicholas Barbey
Representation:	Opponent: Malcolm Bell of Phillips Ormonde Fitzpatrick Applicant: Trade Mark Zone Pty Ltd
Decision:	2023 ATMO 195 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44 and 60 pursued – none established – trade mark may proceed to registration

[2023] ATMO 195

29 November 2023