iFIT Inc v Shanghai Sweat Technology Ltd - [2023] ATMO 195

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…

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: [2023] ATMO 195
Decision Date: 29 November 2023

CaseChat Overview and Summary

This matter concerned an opposition filed by iFIT Inc. (the Opponent) against a trade mark application by Shanghai Sweat Technology Ltd. (the Applicant) for registration under the *Trade Marks Act 1995* (Cth). The Opponent sought to oppose the application on grounds including sections 42(b), 44, and 60 of the Act.

The primary legal issue before the Hearing Officer was to determine whether any of the grounds of opposition pursued by the Opponent had been established to the extent required to refuse the registration of the Applicant's trade mark. The Hearing Officer was required to consider the evidence and arguments presented by both parties in relation to each of the statutory grounds relied upon.

The Hearing Officer found that the Opponent had failed to establish any of the grounds of opposition it had pursued. Consequently, pursuant to section 55 of the Act, the Hearing Officer decided that the trade mark application could proceed to registration. The Hearing Officer also ordered that the Opponent pay the Applicant's costs of the opposition proceedings, to be assessed in accordance with the *Trade Marks Regulations 1995* (Cth).

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for 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 BarbeyHearing OfficerDelegate of the Registrar of Trade Marks29 November 2023Annexure ATrade mark number: 1885187Trade mark: Owner: OpponentPriority date: 6 November 2017Specification: 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 soundClass 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 guidesClass 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; sportswearClass 27: yoga mats; gymnasium matsClass 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 testingEndorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

Ratio Decidendi

Legal Principle Established

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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