Mad Dogg Athletics Inc v Colette McShane Pty Ltd

[2023] ATMO 7

TRADE MARKS ACT 1995

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

Re:Opposition by Mad Dogg Athletics Inc to registration of trade mark application number 2087549 (class 41) – SPIN HIIT LIVE 30 (figurative) - in the name of Colette McShane Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: AJ Park

Applicant: Self-represented

Decision:

2023 ATMO 7

Trade Marks Act 1995 (Cth) – opposition under section 52 –pursued under ss 42(b), 44 and 60 – no grounds established – trade mark to proceed to registration

Background

1. This matter concerns an opposition by Mad Dogg Athletics Inc (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of Colette McShane Pty Ltd (‘Applicant’):

Trade Mark:  (‘Trade Mark’)

Filing Date:              20 May 2020

Specification:         Boot camp services (fitness training); Conducting fitness classes; Conducting fitness classes (aerobics); Fitness and exercise clinics, clubs and salons; Health club services (health and fitness training); Instruction in physical fitness; Lifestyle counselling and consultancy (health and fitness training); Personal trainer services (fitness training); Physical fitness centre services; Physical fitness instruction; Physical fitness training services; Physical fitness tuition; physical fitness assessment services for training purposes (‘Services’)

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

2.The Trade Mark was examined, accepted and subsequently advertised for opposition on 21 October 2020.  On 23 December 2020, after obtaining an extension of time, the Opponent filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars (‘SGP’) on 22 January 2021.  The Applicant filed a Notice of Intention to Defend the opposition on 15 June 2021.

3.The parties were then given the opportunity to file evidence and the Opponent filed Evidence in Support (‘EIS’) of its opposition on 20 October 2021 consisting of a declaration of John R. Baudhuin, CEO, co-founder and owner of the Opponent made on 19 October 2021 with Exhibits JRB-1 to JRB-18 (‘JRB Declaration’).  The Applicant filed Evidence in Answer (EIA) on 16 December 2021 comprising a declaration of Gary Arnstein, co-founder of The HIIT Factory and PT in My Pocket App owned by the Applicant with Annexures 1-10 (‘Arnstein Declaration’).  The Opponent elected not to file evidence in reply.

4.Once the time allowed for filing evidence ended, the Opponent requested a decision on the written record.  I have been delegated to decide this matter based on the information and documents outlined in the preceding paragraphs.

Grounds of opposition, onus, and relevant date

5.In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44 and 60 of the Act.

6.The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7.The date at which the rights of the parties are to be determined is 20 May 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Evidence

EIS

8.The JRB Declaration attests to the establishment of the Opponent in the USA in 1994.  The Opponent is the world’s largest equipment-based education company offering fitness equipment, apparel, accessories and services including fitness training and instructor certification services under various trade marks including SPINNING.

9.The Opponent’s mark SPINNING is used in relation to its patented stationary exercise bikes, its stationary exercise bike program and instructor certification.  Extracts from the Opponent’s website, social media and other online media relating to the history and use of the SPINNING mark by the Opponent are provided.

10.In 2003, the Opponent launched its first SPINNER exercise bike and video exercise series for residential use.  Three new variations of SPINNER exercise bikes were launched in 2015.

11.The Opponent is the owner of various trade mark registrations around the world including the following Australian trade marks (‘Opponent’s Marks’):

Trade Mark Number	Trade Mark	Priority Date	Class
658429	SPINNER	13 April 1995	Class 28: Exercise equipment, stationery exercise bicycles and weight training equipment
658542	SPINNING	18 April 1995	Class 41: Exercise training in the use of exercise equipment
673426	SPINNING	25 September 1995	Class 9: Video cassettes, audio cassettes and compact discs
673427	SPINNING	25 September 1995	Class 25: Clothing
721070	SPINNING	6 November 1996	Class 28: Exercise equipment

12.Since 1995, the Opponent has licensed its various trade marks including SPIN, SPINNING, SPINNER, SPIN FITNESS and SPINPOWER for use in Australia in relation to stationery exercise bikes, exercise classes and instructor certification courses.  It also uses these marks in Australia for its exercise apps and subscription services.  The Opponent claims to monitor the Australian market for unauthorized third party uses of SPIN formative marks and enforces its rights.

13.The JRB Declaration claims that the device element, acronym HIIT (meaning High Intensity Interval Training) and Live 30 (indicating a 30 minute live training program) are descriptive.

EIA

14.Mr Arnstein declares that the Applicant was established in 2013 offering at-home workouts and food ideas/plans under the mark The HIIT Mum.  Later that year, the Applicant opened a fitness centre under the mark The HIIT Factory and launched its fitness app named ‘PT in my Pocket’.

15.The Applicant offers various workouts under different trade marks including Tabata21 Live, Booty Burn, Ab Lab and HIIT Skip Live.  Details of its Australian trade mark registrations are included in the Arnstein Declaration.

16.The Arnstein Declaration confirms that the acronym HIIT is generic and that the Applicant does not claim exclusive rights to this term but claims the Trade Mark as a whole is distinctive.  The Applicant also notes the number of ‘SPIN’ marks on the Register.

Section 44

17.Section 44 of the Act relevantly provides:

(2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)  it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of   similar services or closely related goods; or

(ii) a trade mark whose registration in respect of similar services   or closely related goods 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 services is not earlier than the priority   date for the registration of the other trade mark in respect of the   similar services or closely related goods.

18.To succeed the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods.

19.In the SGP, the Opponent nominated the Opponent’s Marks as the basis for this ground of opposition.

20.The Opponent’s Marks are held in a name other than the Applicant and have a priority date which is earlier than the Relevant Date.

21.The Trade Mark is not substantially identical to any of the Opponent’s Marks.  The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (‘Shell’) as follows:

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.[4]

[4] [1963] HCA 66; (1963) 109 CLR 407, 415 (‘Shell’).

22.It is apparent from a side-by-side comparison of the Trade Mark and each of the Opponent’s Marks that there are obvious visual and phonetic differences between the marks.  The only common element is the word ‘spin’ but each of the Opponent’s Marks contains this element as a different noun or verb to the Trade Mark.  The additional words and device in the Trade Mark create a distinguishable total impression and I am satisfied that the Trade Mark is not substantially identical to any of the Opponent’s Marks.

23.I now turn to the question of whether the Trade Mark is deceptively similar to the Opponent’s Marks.  Section 10 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”.

24.In determining if any of the Opponent’s Marks and the Trade Mark are deceptively similar, I am guided by the longstanding principles relevant to the assessment of deceptive similarity summarised by Justice Jacobson in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd: 

First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths⁶ at [49]; Australian Woollen Mills⁷ at 658. 

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s⁸ at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658. 

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating⁹ at 594 – 595. 

Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595. 

Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[5]

[5] [2012] FCA 1022 (Jacobson J), [37]-[46].

25.With the exception of the Opponent’s mark SPINNER, each of the Opponent’s Marks is the word SPINNING which is a common English word defined as “a form of cardiovascular exercise performed by pedalling on a stationery exercise bike”.[6]  I am aware that for some years, the term ‘spin’ has been commonly used to describe exercise classes performed by pedalling on a stationery exercise bike.  In my view, the fact that the Trade Mark and each of the Opponent’s Marks contains some form of the word ‘spin’ is not sufficient to give rise to a real and tangible danger of confusion.  In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[7]

[6] Macquarie Dictionary Online, 2022, Macmillan Publishers Australia, def. 3.

[7] [2021] FCA 328, [245].

26.The stopwatch device and other word elements of the Trade Mark are memorable features of the Trade Mark.  In my opinion, even ordinary consumers with an imperfect recollection are unlikely to be confused between the Trade Mark and the Opponent’s Marks.  Assessing the marks in their entirety, I am not satisfied that the Trade Mark is deceptively similar to any of the Opponent’s Marks. 

27.The s 44 ground of opposition is not established.

Section 60

28.Section 60 of the Act provides:

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.

29.To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date.  The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

30.The Opponent relies on the reputation in the Opponent’s Trade Marks as the basis for this ground of opposition.

31.For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[8] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[9] number of people or potential consumers but this is tempered by the nature of the relevant market. In the current matter, the services are fitness and exercise services. The relevant market for such services would be a wide cross section of the population.

[8] McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (Kenny J).

[9] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ).

32.Reputation cannot be assumed. The Opponent must establish as a matter of fact that its reputation existed at the Relevant Date.[10]

[10] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

33.In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[11]

[11] [2019] FCA 923, [83] (O’Bryan J).

34.The reputation of a trade mark may be demonstrated in various ways including by demonstrating a significant number of people are exposed to a trade mark.[12]    In practice, it is commonplace to infer reputation from a high volume of sales,[13] together with substantial advertising expenditures and other promotions.[14]

[12] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [118] (Lockhart J).

[13] McCormick (n 11), [86].

[14] Ibid.

35.The Opponent has used the Opponent’s Marks in Australia for many years in the fitness and exercise fields.  Whilst the Opponent’s use has been longstanding, it does not appear to have been extensive in Australia.  Since 1995, it seems that only about 20 fitness centres have been licensed to use the Opponent’s Marks with the most recent licensee appointed in 2012.  At the time, the EIS was filed, there appears to be only 3 or 4 clubs using the Opponent’s Marks.  The Opponent has provided sales numbers and revenue for its stationary bicycles in Australia between 2014 and 2020 but these numbers are modest.  There is no indication of the total revenue generated by use of the Opponent’s Marks in Australia or advertising expenditure spent on promoting the Opponent’s goods and services.  On my assessment of the Opponent’s evidence, the Opponent has generated a limited reputation in the Opponent’s Marks in Australia but I am not satisfied that this reputation extends to a significant or substantial number of consumers at the Relevant Date.

36.Further, even if I were to proceed on the basis that the Opponent had demonstrated the existence of a reputation in Australia, given the differences between the Trade Mark and the Opponent’s Marks and the common usage of the term SPIN in relation to fitness using stationary bicycles, I would not be satisfied that use of the Trade Mark would be likely to deceive or cause confusion

Section 42(b)

37.Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law.

38.In the SGP, the Opponent asserts that use of the Trade Mark is likely to deceive or cause confusion as a result of the Opponent’s reputation in the Opponent’s Marks and would falsely suggest an association or connection with the Opponent. Hence, the Opponent is claiming that the Applicant’s use of the Trade Mark will contravene the Australian Consumer Law.

39.Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60.[15]

[15] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

40.As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Services is likely to deceive or cause confusion. It follows that, on the stricter tests posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

41.Accordingly, the s 42 ground of opposition is unsuccessful.

Decision

42.Section 55 of the Act relevantly provides:

(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.

43.The Opponent has not established a ground of opposition. Accordingly, trade mark number 2087549 may proceed to registration one month from the date of this decision.

44.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 that the disposition of the applications should otherwise be in accordance with the Court’s order or direction.

Costs

45.The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. Accordingly, I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

25 January 2023