Opposition by Fit Revolution Pty Ltd to registration of trade mark application number 1962481 (classes 5 and 32) – AMFIT NUTRITION (Plain Word) - in the name of Amazon Europe Core S.a.r.l.

[2021] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by Fit Revolution Pty Ltd to registration of trade mark application number 1962481 (classes 5 and 32) – AMFIT NUTRITION (Plain Word) - in the name of Amazon Europe Core S.a.r.l.

Delegate:	Kate Doherty
Representation:	Opponent: Meyer West IP Applicant: D Larish of Counsel i/b King & Wood Mallesons
Decision:	2021 ATMO 35 Trade Marks Act 1995 (Cth) – opposition pursuant to section 52 – Grounds of opposition pursued ss 42(b) (Competition and Consumer Act 2010 (Cth), Sch 2, ss 18 and 29), 44, and 60; None established; trade mark will proceed to registration.

Background

1. This decision follows an online opposition hearing conducted 22 October 2020.  I decided the matter as a delegate of the Registrar of Trade Marks in relation to the following trade mark pursuant to the Trade Marks Act 1995 (Commonwealth) (‘the Act’):

   Trade Mark Number:     1962481

   Trade Mark:                     AMFIT NUTRITION (‘Trade Mark’)

   Filing date:   17 October 2018

   Applicant:  Amazon Europe Core S.a.r.l.

   Priority date:                    19 April 2018

   Specification of Goods: Classes 5 and 32 (‘Applicant’s Goods’)

   Class 5: Nutritional supplements; dietary supplements; dietary and nutritional supplements containing branched-chain amino acids; dietary and nutritional supplements containing protein supplements; dietary and nutritional supplements for endurance sports; dietary and nutritional supplements for body building mass, enhancing muscle growth, strength, energy, endurance, and exercise capacity, and for healthy weight management; dietary and nutritional supplements for post-workout use, pre-workout use, and intra-workout use; recovery and performance drinks, namely, nutritionally fortified beverages with added vitamins, minerals, nutrients, antioxidants, protein, or branched chain amino acids; powdered nutritional supplement drink mix; meal replacement bars; nutritional supplement protein bars; nutritional supplement energy bars; meal replacement drinks; meal replacement powders; nutritional drink mix for use as a meal replacement; ready to drink protein supplement shakes; amino acid powdered dietary supplement drink; pre workout powdered dietary supplement drink; powdered nutritional supplement drink mix

   Class 32: Energy drinks; sports drinks; sports drinks, namely, performance drinks; sports drinks, namely, recovery drinks

2. The Trade Mark was advertised as accepted on 18 March 2019.  A Notice of Intention to Oppose was filed on 17 May 2019 by Fit Revolution Pty Ltd (‘The Opponent’). The Statement of Grounds and Particulars (‘SGP’) was filed on 16 June 2019, completing the Notice of Opposition.  On 23 July 2019, the Applicant filed a Notice of Intention to Defend the Opposition. The SGP nominates grounds of opposition ss 42(b) (Competition and Consumer Law Act 2010 (Commonwealth), Sch 2, ss 18 and 29), 44, 60, 58, and 58A. Grounds ss 58, and 58A were abandoned in the written submissions. The s 42(b) ground of opposition was abandoned in oral submissions.

3. Evidence in Support (‘EIS’) and Evidence in Answer (‘EIA’) were filed.  There was no Evidence in Reply filed.  Both parties requested an oral hearing and filed written submissions.  The Opponent was represented by Meyer West IP, and the Applicant was represented by David Larish of Counsel instructed by of King Wood Mallesons.

   Evidence 

4. Summary of evidence received from the Parties:

Declarant	Party	Evidence Stage	Date	Annexures	Decision Reference
M Cameron	Opponent	EIS	25 October 2019	1 to 42	Cameron Declaration
C Nagy	Applicant	EIA	28 January 2020	1 to 11	Nagy Declaration

The Opponent’s Evidence 

1. The Opponent asserts that they run a company to source, import, market and distribute dietary and nutritional supplements, and sports and performance drinks (with and without protein supplements) for endurance sports, body building mass and weight management as well as and health and wellness products.  The business has an online store and utilitses bespoke e-commerce software.[1] The Opponent declares that they operate two physical premises which utilise their bespoke software and contain fresh juicing bars in the Eastern suburbs of Sydney, as well as Sydney CBD.  The Opponent also nominates three further physical locations for distribution within FitnessFirst® gymnasiums in NSW, as well as an unknown number and location of F45® fitness studios.[2]  The evidence provided by the Opponent shows use of their trade marks on social media.[3]

   [1] Cameron Declaration, [13].

   [2] Cameron Declaration, [70]; Cameron Declaration – Annexure 25.

   [3] Cameron Declaration, [48]; See Opponent’s Trade Marks below at [7].

2. Evidence of paid advertising and promotional expenses are before me, social media collateral, newspaper articles and records of prizes at some major award ceremonies in 2017. 

3. The Opponent is the owner of the following two Registered trade marks (Opponent’s Trade Marks’):

   Trade mark:                       (‘Opponent’s Stylised Mark’)

   Trade mark Number:     1756712

   Filing date:   3 March 2016

   Specification of Services: Classes 35 and 43

   Class 35: Wholesale, retail and online retail services in relation to: food supplements; dietary supplements; vitamin supplements; protein powders; dietetic preparations including dietetic preparations for muscle-building; fibre supplements; health food supplements; vitamins; sports nutrition; nutritional supplements and protein products for human consumption; weight loss products; gym gear; supplement shakers

   Class 43: Takeaway foods and restaurant services in relation to: health, special dietary and sports nutritional drinks; beverages prepared from protein powder; beverages comprising dietary or vitamin supplements; dietetic preparations including dietetic preparations for muscle-building; beverages including nutraceuticals; Provision of information relating to the preparation of food and drink being health, special dietary and sports nutritional food and drink

   Trade mark:                      FIT NUTRITION (‘Opponent’s Word Mark’)

   Trade mark number:      1923794

   Filing date:   3 May 2018

   Specification of Services: Classes 35 and 43

   Class 35: Wholesale, retail and online retail services in relation to: food supplements; dietary supplements; vitamin supplements; protein powders; dietetic preparations including dietetic preparations for muscle-building; fibre supplements; health food supplements; vitamins; sports nutrition; nutritional supplements and protein products for human consumption; weight loss products; gym gear; supplement shakers
   Class 43: Takeaway foods and restaurant services in relation to: health, special dietary and sports nutritional drinks; beverages prepared from protein powder; beverages comprising dietary or vitamin supplements; dietetic preparations including dietetic preparations for muscle-building; beverages including nutraceuticals; Provision of information relating to the preparation of food and drink being health, special dietary and sports nutritional food and drink

   The Applicant’s Evidence 

4. The Applicant does not describe the nature of their business or products beyond nominating the relevant classes in the application.  The Applicant filed a number of trade mark search results and records but has not filed any evidence of use of the Trade Mark.

   Onus and Standard of Proof

5. The relevant standard of proof is the civil standard, or ‘on the balance of probabilities’.[4]  The Opponent bears the onus of proof in an Opposition proceeding.[5] The application will succeed if one or more of the nominated grounds are established. The rights of the parties are determined at the date of the application, which is generally, but not always, the filing date. For the purposes of ss 44 and 60 which speak of the priority date, the relevant date is 19 April 2018, here this is the same as the convention date of the application.

   Grounds of Opposition

   [4] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J).

   [5] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   Section 44 – Identical etc. trade marks

6. Section 44 of the Act relevantly provides:

   44 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) the applicant’s trade mark 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 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 successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1) which are that at least one of the trade marks upon which it relies:

   a)    Has a priority date which is earlier than that of the Trade Mark (‘the first requirement’), and;

   b)   Is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’), and;

   c)    Is in respect of goods/services which are similar or closely related to the Applicant’s goods (‘the third requirement’)

7. The priority date of the Opponent’s Stylised Mark is substantiated by the Register and has a filing date approximately two years earlier than the priority date of the Trade Mark, this fulfills the first requirement.[6] The Opponent’s Word Mark has a filing date which postdates the priority date for the Trade Mark, therefore the requirements of s 44(1)(b) are not met in relation to the Opponent’s Word Mark and that mark will not be considered further in relation to s 44.

   [6] Above at [1] and [8].

Trade Mark	Opponent’s Stylised Mark
AMFIT NUTRITION

1. In relation to the second requirement, the marks are not substantially identical.  The test for this is to compare the marks side by side.33F7F7F[7]  The Opponent’s Stylised Mark contains three words and the Trade Mark contains two words.  Only one word, NUTRITION, is shared between the marks.  I find these differences cause a total impression of dissimilarity and the trade marks are not substantially identical.8F8F[8]

   [7] Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66, [12] (‘Shell’).

   [8] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 [52] (‘Pham Global’).

2. Deceptive similarity is an additional consideration pursuant to s 44, the Act relevantly provides:

   Section 10 – Definition of deceptively similar

   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.

3. Resemblance pursuant to s 10 relates to the overall impression of the mark. The accepted test for determining deceptive similarity is described in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, where Windeyer J observed: 9F9F[9]

   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 [trade mark].

   [9] Shell (n 7) [29].

4. I must consider the impression that a person of ordinary intelligence and memory would have of the Trade Mark and of the Opponent’s Stylised Mark. I must consider the look, sound and idea of the trade marks, allowing for imperfect recollection, and I:

   must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.10F10F[10]

   [10] Clark v Sharp (1898) 15 RPC 141, 146.

5. The word ‘NUTRITION’ is common to both marks.  I find that word is descriptive in relation to the relevant goods and services.  Where common elements are shared between marks that are being compared, the marks must still each be considered as a whole without disregarding the parts which are common.[11]  I must also be cognisant that the application is seeking a plain word mark and for the use the mark can be properly put to if the Trade Mark gains registration.[12]

   [11]  Broadhead’s Application (1950) 67 RPC 209, 215.

   [12] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43.

6. The Applicant submitted that AMFIT is an abstract term with high inherent capacity to distinguish.15F15F[13]  The Opponent submitted that the term is a mere contraction of the phrase I AM FIT.16F16F[14] The prefix AM may also commonly stand for, amongst other definitions: ante meridiem meaning ‘before noon’, the abbreviation for the chemical symbol Americium, or ‘am’ as the first-person singular present of be.  I AM FIT NUTRITION, and MORNING FIT NUTRITION appear to be predictable and desirable selections of words for the types of goods in the application but there is no assertion that there is no capacity to distinguish or invalidity relating to those terms being wholly descriptive.[15]

   [13] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [14] Submissions at 5.1.

   [15] Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662, [3]; see s 41.

7. In general when comparing trade marks greater emphasis is placed on the first word or syllable of a mark.14F14F[16] But this is a not a definitive prescription, and I find that the stylisation of the Opponent’s Stylised Mark is de minimus and the potential usage and plain secondary meanings somewhat displace that proposition in relation to the Trade Mark.  I find the central idea of the Trade Mark is a contraction of the term I AM FIT although I accept there may be ambiguous meanings and I accept that AMFIT may be considered an invented term by some consumers.

   [16] London Lubricants (1920) Ltd’s Application (1925) 42 RPC, [279].

8. The Opponent’s Stylised Mark contains the words FIT NUTRITION FIX with the word FIT stylised and somewhat distorted.  For fitness and nutrition type products, FIT and NUTRITION are not particularly memorable, the word FIX is the most distinctive element of the mark. I find the inclusions for each respective trademark of the prefix AM and word FIX are significant differences when each trade mark is considered as a whole. 

9. There is no information before me in relation to whether the Goods in the Trade Mark Application are the type of goods for which there is ordinarily a reasonable examination prior to purchase and repurchase which would eliminate or reduce confusion.  When allowing for the low level of similarity between the marks and the concept of imperfect recollection, when accessed by the same types of consumers: I find there is a possibility the trademarks might be confused but the evidence does not establish that these marks are likely to be confused. 

10. I find that the overall impression of the trade marks are significantly different.18F18F[17] I find the marks are not deceptively similar and therefore find the ground of opposition pursuant to s 44 is not established.

    [17] Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495 at [62].

    Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia

11. Section 60 of the Act provides:

    60 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.

12. To establish a ground of opposition pursuant to s 60, the Opponent must demonstrate that at the priority date of 19 April 2018:

    a)there was another trade mark;

    b)which had acquired a reputation in Australia;

    c)amongst a significant section of the public;

    d)such that use of the opposed trade mark would be likely to deceive or cause confusion.

13. For this ground to be established it must be shown that at least one of the Opponent’s Trade Marks had a reputation amongst the Australian public generally before 19 April 2018, and that the Trade Mark would be likely to cause public confusion due to that established reputation.  Reputation cannot be assumed it must be established as a question of fact.6F[18]

    [18] ConAgra Inc v McCain Food (Aust) Pty Ltd (1992) 33 FCR 302.

14. Reputation in relation to s 60 is discussed in McCormick & Company Inc v McCormick (‘McCormick’) per Kenny J:4F[19]

    Reputation is ‘the recognition of the [trade] marks by the public generally.’

    Reputation is often proven by a high volume of sales, as well as substantial advertising and promotional expenditures.  Direct evidence for consumer appreciation of a mark is often not required.5F[20]

    [19] (2000) 51 IPR 102 [81].

    [20] Ibid, [86].

15. The Opponent asserts they have a significant reputation in the Opponent’s Stylised Mark because the Opponent operates two physical premises that utilise their software and contain fresh juice bars in the Eastern suburbs of Sydney, as well as Sydney CBD.  The Opponent also nominates three further physical locations for distribution within NSW based FitnessFirst® gymnasiums, as well as an unknown number of F45® studios.2F2F[21]  Newspaper articles state that the Opponent’s Bondi Junction store opened in 2016, however no information about dates relating to the gymnasiums or studios is before me. 

    [21] Cameron Declaration, [70]; Cameron Declaration – Annexure 25.

16. The Opponent has won a number of awards, these appear to be major awards but also appear to be industry awards.[22]  There is no evidence before me for how the relevant population would be exposed to or aware of the awards. There is also no evidence showing use of the Opponent’s Trade Marks in association with the award ceremonies outside the records of social media and articles discussed below.  Evidence relating to clothing does not display the Opponent’s Trade Marks and is therefore not a relevant consideration.[23]  Evidence relating to overseas trade shows are not for the location of the relevant market since the reputation must have existed in Australia.[24]  There is no evidence that various ‘documentation, stationery and branded items’ were provided to, or memorable to, the relevant consumers.[25]

    [22] Cameron Declaration, Annexures One – Two.

    [23] Cameron Declaration, Annexure 18.

    [24] Cameron Declaration, Annexure 39.

    [25] Cameron Declaration, Annexure 34.

17. The evidence provided by the Opponent includes printouts from social media showing the Opponent’s Stylised Mark.[26]  This evidence includes an Instagram® Post from March 2017 with engagement recorded as ‘73 likes’ which does not show the Opponent’s Stylised Mark, three Instagram Posts from 18 April 2018 are after the relevant time and an Instagram Post from May 2016 which does not show the mark and has a record of ‘131 likes’.  A series of Instagram posts from February 2017 indicate ‘700 views’, these purport to show a news segment, but only the words of the Opponent’s Stylised Mark are visible.[27] There is no information before me as to whether the favicon displayed in the pictures is changed when it is updated or in real time. Further posts from March 2017 do not show the Opponent’s Trade Marks. I find these social media posts are not determinative for the assessment of s 60 because of the deficiencies described.

    [26] Cameron Declaration, Annexure 20.

    [27] Cameron Declaration, Annexure 16.

1. Several newspaper articles and records of some prizes at some major award ceremonies in 2017 have been filed.  A Huffpost® online article from April 2016, provides no information about the readership or views.[28]  Another online article from May 2016 is published in Inside FMCG®, there is no information about that publication, but it appears to be a trade publication and not marketed to consumers because of the tabs shown which list various industries.[29]  An April 2016 article from News.Com shows a picture where the Opponent’s Trade Mark is visible.  An April 2016 article in Daily Mail Australia online, refers to the term FIT NUTRITION FIX, I accept at face value that this a significant publication and a compelling piece of evidence.[30]  A further article from June 2016 on ‘trainingforchocolate.com’ however has minimal persuasive value because I have no information before me regarding the readership or nature of that publication.[31]  Articles from September 2016 and March 2017 are published in ‘Inside Retail’ which is a publication aimed at retailers and therefore has limited probative value as it is not evidence relating to the relevant consumers.[32]

   [28] Cameron Declaration, Annexure Eight.

   [29] Cameron Declaration, Annexure Nine.

   [30] Cameron Declaration, Annexure 11.

   [31] Cameron Declaration, Annexure 13.

   [32] Cameron Declaration, Annexures 14 and 15.

2. The Opponent states that they have 38,000 repeat customers.3F3F[33] Evidence of sales figures as well as paid advertising and promotional expenses are before me. The figures at the relevant time are modest but I find they reach the threshold required to establish the requisite reputation pursuant to s 60.[34]

   [33] Cameron Declaration, [48].

   [34] Cameron Declaration, Confidential Annexures One and Two.

3. Where the Opponent’s Stylised Mark is found to possess the requisite reputation at the relevant date, the Opponent still needs to satisfy the second limb of s 60 that there is a likelihood of deception or confusion resulting from that reputation. There are no assertions of any instances of actual confusion but this is not determinative. The finding of low similarity between the marks in the application pursuant to s 44, as well as the extensive record of trade marks containing the same terms on the Trade Mark Register for goods showing similar terms such as FIT and NUTRITION mean I am unable to imply that confusion will be likely.

4. Evidence of awards, articles and media prior to the filing date contain the words FIT NUTRITION FIX which do not prove a reputation for the term FIT NUTRITION without the additional word FIX.  The evidence before me does not establish a relevant reputation for the Opponent’s Word Mark at the relevant date.

5. The stylisation and inclusion of the distinct term FIX distinguish the Trade Mark as a whole from the Opponent’s Stylised Mark. I am not satisfied that use of the Trade Mark would be likely to deceive or cause confusion. I find that the Opponent has failed to establish the s 60 ground of opposition.

   Decision

6. The Opponent has not established a ground of opposition.  Pursuant to section 55(1), Trade Mark number 1962481 will proceed to registration.

7. The parties may appeal this decision to a court of competent jurisdiction in accordance with s 56 of the Act.  If the Registrar has been served with notice of appeal, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

   Costs

8. Costs ordinarily follow the event for an Opposition Hearing.  No reason has been advanced to displace this proposition, and therefore costs are awarded against the Opponent pursuant to s 221 of the Act in the relevant amounts prescribed by Schedule 8 of the Trade Mark Regulations 1995 (Cth).

   Kate Doherty
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   30 April 2021