Italservices SpA v Soulcycle Inc

Italservices SpA (the Applicant) sought to register the trade mark CYCLE (logo) in Class 25. Soulcycle Inc (the Opponent) opposed this application, relying on its earlier trade mark registrations and applications for marks including the word "CYCLE" for similar goods. The Opponent contended that the Applicant's mark was substantially identical or deceptively similar to its own earlier marks, and that the Applicant had not used its mark in a way that did not substantially affect its identity.

The court was required to determine whether the Applicant's proposed trade mark was substantially identical or deceptively similar to the Opponent's earlier trade marks. Additionally, the court had to consider whether the use of the Applicant's trade mark, as evidenced by invoices showing the word "CYCLE" alongside a logo, constituted use of the trade mark with additions or alterations that did not substantially affect its identity, pursuant to section 7(1) of the relevant Act.

The court found that the Opponent had not established any of the grounds upon which it relied for opposition. In assessing substantial identity or deceptive similarity, the court would compare the marks side by side, noting similarities and differences and assessing their importance in light of the essential features of the registered mark and the total impression of resemblance. The court applied the principle that whether there is substantial identity is a question of fact.

The application to register the trade mark was permitted to proceed to registration one month from the date of the decision, unless an appeal was filed. The Applicant was awarded its costs against the Opponent.