Natural Supplementary Association, Incorporated v Body for Life International Pty Ltd

[2004] ATMO 13

TRADE MARKS ACT 1995

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

Re:Opposition by Natural Supplementary Association, Incorporated to registration of trade mark application 885323(41, 42) - BODY FOR LIFE PERSONAL TRAINING - filed in the name of Body for Life International Pty Ltd.

Date of Decision:	27 February 2004
Delegate:	Jock McDonagh
Representation:	Opponent: Khajaque Kortian of Spruson & Ferguson Attorneys Applicant: No appearance
Decision:	Section 52 opposition. Grounds of opposition under ss 44 and 60. Section 60 ground made out - opposition successful - application refused - costs awarded against applicant

Background

1. The Applicant, Body for Life International Pty Limited filed trade mark application No. 885323 (“Application”) for the mark body for life personal training (“Trade Mark”). on 9 August 2001 (“Priority Date”). The Application was in respect of the following services:

   Class 41: Sporting and recreation services including the provision of a health and fitness personal training centre

   Class 42: Restaurant services in Class 42

2. Acceptance of the application was advertised in the Official Journal of Trade Marks on 13 December 2001. 

3. The opponent, Natural Supplement Association, Incorporated, filed notice of opposition on 13 March 2002 pursuant to the Trade Marks Act, 1995 (“the Act”).  The notice pleaded the following grounds:

   (1)       The use of the opposed trade mark would be contrary to law [Section 42(b)].

   (2)       The use of the opposed trade mark would be likely to deceive or cause confusion [Section 43].

   (3)       The Applicant is not the owner of the opposed trade mark [Section 58].

   (4)The opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks registered by the Opponent in respect of similar goods or closely related goods or services and for which the priority date is earlier than that of the opposed trade mark [Section 44].

   (5)The opposed trade mark is substantially identical with, or deceptively similar to, another trade mark that, before the priority date of the opposed trade mark had acquired a reputation in Australia for services for which registration is sought, and because of the reputation of that other trade mark the use of the opposed trade mark would be likely to deceive or cause confusion [Section 60].

   (6)Because of some connotation that the opposed trade mark or a sign contained in the opposed trade mark has, the use of the opposed trade mark in relation to the services would be likely to deceive or cause confusion.

   (7)       The Registrar should refuse the application on the above or other grounds in the exercise of his or her discretion.

   Evidence

4. The following declarations were filed in support of the Opposition:

   ·     Earle D Bellamy II made on 10 December 2002 (“Bellamy Declaration”);

   ·     Peter Reid made on 10 December 2002 (“Reid Declaration”).

5. No evidence has been filed in answer by the Applicant.

   Summary of Opponent’s Evidence

6. The evidence in support of the grounds of opposition largely relates to the reputation in the opponent’s body for life trade mark, which is relevant primarily to the grounds under s60 of the Act.

7. The opponent submitted that the evidence of use of its body for life Trade Mark internationally and in Australia is extensive and significant.  The following evidence was advanced in the Bellamy Declaration:

   ·     In June 1999 Bill Phillips published the international best seller Body for Life.  This publication has sold more than 3 million copies internationally [paragraph 4].

   ·     The best seller Body for Life was first sold in Australia in June 1999 [more than 2 years before the priority date] and since then has been the best selling health and fitness publication in Australia by the publishers Harper Collins [paragraph 5].  The book provides a special programme of exercise and nutrition [paragraph 6]

   ·     The opponent is the proprietor of trade mark registration No. 799080 body for life  in respect of “Magazines, books and information brochures relating to body building, sports, fitness, exercise, nutritional supplements and health issues” in Class 16 with the priority date of 1 July 1999 [paragraph 7, Exhibit “EDB-1”].

   ·     In 1997, Mr Bill Phillips (the author of Body for Life) introduced a physique transformation challenge contest in the United States which subsequently was promoted around the world, including Australia.  This challenge was a 12 week challenge in which entrants were encouraged to follow a program similar to that outlined in the book Body for Life [paragraph 8].

   ·     The opponent’s body for life trade mark has since 1997 also been incorporated into the packaging of the opponent’s health products and nutritional supplements.  The body for life trade mark is also used extensively on merchandise such as clothing, fitness guides, fitness journals and videos [paragraph 12 – Exhibit “EDB-2”].

8. The following evidence was advanced in the Reid Declaration:

   ·     Mr Reid is the Managing Director of Fitness Design Pty Limited which is the Australian distributor for products and services of the opponent including those provided under the trade mark body for life  [paragraph 1];

   ·     In 1999 Fitness Design Pty Limited began promoting the Body for Life book [paragraph 5, “Exhibit PR-2” examples of advertisements] through publications directed to the fitness/personal training market such as “Men’s Health”, and “Inside Sport”.

   ·     In 2000 the “physique transformation challenge” promoted under or by reference to the trade mark body for life was promoted in Australia [paragraph 6, Exhibit “PR-3”] in major newspapers such as “The Sydney Morning Herald”, “The Age”, as well as specific types of publications such as “Iron Man” and “Muscle”.

   ·     The opponent’s body for life trade mark has been extensively promoted through print and television and radio media [paragraphs 9 and 10].

   ·     Significant sales of products provided under or by reference to the body for life trade mark in Australia have been made by Fitness Design Pty limited prior to the priority date [paragraph 14].

   ·     Significant and extensive advertising expenditure made by Fitness Design Pty Limited for products and services under or by reference to the body for life trade mark [paragraph 15].

   Summary of Grounds of Opposition

9. Without derogating from the grounds of opposition set out in paragraph 3, above, the Opponent primarily relied on the ss44 and 60 grounds.

   Ground 1 - Section 44(2)

10. To establish the s44 ground, the opponent must establish all of the following:

    ·     At the priority date

    ·     there was a substantially identical or deceptively similar trade mark application or registration

    ·     in respect of similar goods or closely related services

    ·     in the name of a person other than the applicant.

11. The Opponent relied upon its trade mark registration No. 799080 referred to in paragraph 7.3 [paragraph 7 to Bellamy Declaration and Exhibit “EDB-1”] above having a priority date well prior to the Priority Date (ie. 9 August 2001).

12. The accepted test for finding whether a trade mark is “substantially identical” was clearly stated by Windeyer J. in Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1963) 109 CLR407 at 415) as follows:

    “In considering whether the marks were 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”.

13. It was submitted that it is not just a question of adding up and comparing the points of resemblance and dissimilarities, nor portions of a word – it is the general affect of the “respective wholes” (Clark v. Sharp [1898] 15 RPC 141 at 146).

14. It was submitted that the only distinguishing words from the opponent’s trade mark body for life and the applicant’s trade mark body for life personal training are the descriptive words “personal training”.  The essential elements of the two trade marks are the words body for life.  It was therefore submitted that the Trade Mark is substantially identical to the Opponent’s Trade Mark body for life. 

15. The requirement of substantial identity recognises that the identity is not absolute but, as is clear from the Shell Case the question involves consideration of the essential elements of the mark, the matters that are “exactly similar in everything that matters for all relevant purposes” (Exparte O’Sullivan; re Craig (1944) 44 SR (NSW) 291 at 298).

16. The Opponent further submitted that even if the Trade Mark is not substantially identical with its body for life  trade mark, the Trade Mark is nonetheless deceptively similar to the Opponent’s Trade Mark pursuant to Section 10 of the Act, which states:

    “For the purposes of this Act, 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”.

17. The accepted test of “deceptive similarity” is identified in The Shell Company of Australia Ltd v. Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (at 415 and 416) and Australian Woollen Mills Ltd v. F.S. Walton & Co Ltd (1937) 58 CLR 641 (at 658).

18. Briefly summarised, the above cases refer to the correct test to concern not abstract similarity side-by-side but concerning “the impression based on recollection of the [Applicant’s] mark that persons of ordinary intelligence and memory would have” (Windeyer J in Shell Co at 415) and “the effect of [the degree of] similarity in all the circumstances” (Windeyer J in Shell Co at 416). 

19. A summary of the relevant criteria to be considered in terms of “deceptive similarity” is provided by French J in Registrar of Trade Marks v. Woolworths 45 IPR 411, at 428 as follows (and more recently in the Torpedoes Sportswear v Thorpedo Enterprises Pty Limited [2003] FCA 901 (27 August 2003) at para 78):

    ·     To show that a trade mark is deceptively similar to another, it is necessary to show a real tangible danger of deception or confusion occurring, ie. the probability of deception or confusion must be finite and non-trivial.  A mere possibility is not sufficient.

    ·     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 it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.

    ·     It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and/or services in question come from the same source.

    ·     In considering whether there is a likelihood of deception or confusion, all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods and services will be bought and sold and the character of the probable acquirers of the goods and services.

    ·     The rights of the parties are to be determined as at the date of the application.

20. The comparison has to be made between body for life and body for life personal training.

21. Having considered the relevant criteria, I find that that the descriptive words “personal training” in the Trade Mark do not serve to distinguish the Trade Mark from the Opponent’s Trade Mark body for life.  Accordingly, the Trade Mark is clearly deceptively similar (if not substantially identical with) the Opponent’s trade mark body for life .

22. In adopting the relevant authorities, namely Jellinek’s Application (1946) 63 RPC 59, cited with approval in Southern Cross Refrigerating Co. v. Tool Toowoomba Foundry Ltd (1954) 91 CLR 592 at 606), there are three principal factors to be considered in determining whether goods are of the same description as services:

    ·the nature of the goods, including their origin and characteristics;

    ·the uses made of them including their purpose; and

    ·the trade channels through which the goods are bought and sold.

23. No one of the factors referred to above, in itself, is likely to be determinative.  The question must be looked at a whole from a realistic business and commercial point of view.  The objective is to determine whether members of the public are likely to perceive the respective goods and services as coming from a single business or from economically-linked undertakings.

24. In this case, some of the relevant considerations submitted by the opponent include:

    ·The fact that the relevant consumers for the opponent’s “magazines, books and informational brochures relating to body building, sports, fitness, exercise, nutritional supplements and health issues” are clearly the same as those for the applicant’s “sporting and recreational services including the provision of a health and fitness personal training centre”.

    ·The applicant’s description of services in class 42 for “restaurant services” should be considered in light of the qualifying terms inherent in the Trade Mark, body for life personal training”, which indicates the specific nature of any “restaurant services” for which this Trade Mark is proposed to be used.

    ·The opponent’s Registered Goods and the applicant’s services are of the same nature, namely, directed to health, fitness and nutrition;

    ·The purpose of the registered goods of the opponent’s trade mark and the services of the Trade Mark are the same, namely, health, fitness and proper nutrition for the purposes of promoting health and fitness.

    ·The target market and trade channels through which the registered goods of the opponent and the services under the Trade Mark are the same. Publications relating to health, fitness, exercise, nutritional supplements and health issues are promoted through the same type of “sports/fitness/body building” magazines and journals and other media as are services promoting “sporting and recreational services including the provisional of health and fitness personal training centre as well as any other related restaurant services”, ie. related to the promotion of health and fitness.

25. Having regard to the evidence and submissions, and applying the relevant criteria, I am not satisfied that the applicant’s services are closely related to the opponent’s goods.  I do not think that the applicant’s sporting, recreation and restaurant services would be regarded by the ordinary person as generally made or performed by the same source as the opponent’s publications, even though they are thematically linked.

26. I dismiss this ground of opposition.

    Section 60

27. To satisfy section 60, the opponent has the burden of establishing the following elements:

    ·     a pre-existing trade mark;

    ·     substantial identity or deceptive similarity between the applied for trade mark and the pre-existing trade mark;

    ·     the acquisition of a reputation in Australia by the pre-existing trade mark; and

    ·     a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.

28. It was submitted on the basis of the evidence summarised earlier that the opponent has established that it possesses an extensive and significant reputation in its body for life trade mark in Australia before the priority date of the Application.  In summary, this reputation includes:

    ·     a best selling publication under or by reference to the title “Body For Life”, which is also a best seller in Australia;

    ·     awareness of the body for life special exercise/fitness and nutrition program through the body for life challenge undertaken by many thousands of people in Australia before the priority date;

    ·     multi-million dollar sales of goods and services in relation to fitness, exercise and nutrition;

    ·     extensive advertising to direct advertising in all media (print, radio and television) as well as through the body for life challenge.

29. I have already found that the opposing marks are deceptively similar.

30. It is necessary to compare the reputation of the Opponent with the possible use by the Applicant within the scope of the Applicant’s proposed reputation – Woolworths at 382. Southern Cross Refrigerating Company v. Toowoomba Foundry Pty Limited (1953) 91 CLR 592 at 608; Renaud Cointreau and CRE v. Cordon Bleu [2000] FCA 720 at paragraph 84 (per Heerey J).

31. As noted above, the relevant test is whether, as a result of the use by the applicant, a number of persons will be caused to wonder whether it might not be the case that the applicant’s services under or by reference to the Trade Mark came from the same source as the proprietor of the opponent’s body for life trade.  In making this comparison, regard may be had for the habits of consumers and the trade journals through which the goods or services may be supplied or promoted.  This includes electronic advertising such as radio and television, which incorporates communication by sound, and in the case of television, usually sound accompanied by images appearing on the screen for very short periods of time.

32. I am satisfied that the opponent has clearly established this ground of opposition.

    Decision

33. The opponent has established grounds of opposition on which it relied so that the opposition as a whole has been successful.  Pursuant to section 55, I refuse to register Application No. 885323 body for life personal training.

    Costs

34. The opponent has sought its costs in this matter. As the opponent has been successful in its opposition, I award costs against the applicant and direct that the applicant pay the costs of the opponent in accordance with the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    27 February 2004