Opposition by Icon Health & Fitness Inc to registration of trade mark application 1923795 (9, 35, 43) – FIT NUTRITION (fancy) – in the name of Fit Revolution Pty Ltd

[2020] ATMO 188

TRADE MARKS ACT 1995

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

ReOpposition by Icon Health & Fitness Inc to registration of trade mark application 1923795 (9, 35, 43) – FIT NUTRITION (fancy) – in the name of Fit Revolution Pty Ltd

Delegate:                 Robert Wilson

Representation:       Opponent: Kate McHaffie of AJ Park

Applicant: Madeleen Rousseau of Meyer West IP

Decision:                   2020 ATMO 188       

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – none established – trade mark to proceed to registration

Background

1. Fit Revolution Pty Ltd (‘the Applicant’) applied to register a trade mark. Details of the application are as follows:

Application Number:

1923795

Filing Date:

3 May 2018

Specification:

Class 9: Application software; computer software

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 Goods and Services’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

2. Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

3. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, Icon Health & Fitness Inc (‘the Opponent’) filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘the SGP’). The SGP nominated grounds of opposition under ss 42(b), 44 and 60. The Applicant subsequently filed a Notice of Intention to Defend.

Evidence

4. The Opponent filed Evidence in Support of its opposition, being:

·Declaration made on 4 June 2019 by Richard Kin Cheong Chang II, Associate General Counsel of the Opponent, with Exhibits RC-1 to RC-22 (‘the Chang declaration’).

5. The Applicant filed Evidence in Answer, being:

·Declaration made on 6 September 2019 by Matthew Cameron, the founder and Chief Executive Officer of the Applicant, with Confidential Annexures A and B, and Annexures MC-1 to MC-42 (‘the Cameron declaration’) .

6. The Opponent filed Evidence in Reply, being:

·Declaration made on 11 November 2019 by Clayton Robert Scott, the General Manager Australasia of the Opponent, with Exhibit CS-1.

7. Following the filing of the evidence the parties requested an oral hearing. I heard the matter on 7 October 2020 as a delegate of the Registrar of Trade Marks. Kate McHaffie of AJ Park appeared for the Opponent. Madeleen Rousseau of Meyer West IP appeared on behalf of the Applicant. The representatives’ oral submissions were supplemented by written submissions which were filed prior to the hearing.

The Opponent

8. According to the Chang Declaration:

Founded in Utah in 1977, today [the Opponent] is the world’s largest manufacturer of exercise equipment, marketing treadmills, elliptical trainers, stationary bicycles, weight machines and benches, and yoga and Pilates equipment under the premier equipment brands NordicTrack, ProForm, Weider, and FreeMotion Fitness, amongst others. …

[The Opponent] also owns the fitness technology brand iFit.

iFit is an activity tracking technology that allows users to track and measure daily activities like sleep, calories consumed, steps taken, and distance travelled.

The iFit technology can be used on a mobile device (phone or tablet) or iFit fitness wearable device. [The Opponent’s] NordicTrak, ProForm, FreeMotion and Weslo stationary bicycles, ellipticals, and treadmills are enabled to work with the iFit technology, allowing users of the equipment to measure and track workouts at home or the gym.

9. The Opponent is the owner of the registered trade marks detailed below (‘the Opponent’s Trade Marks’) :

Trade Mark Number:

983540

Priority Date:

31 December 2003

Goods and services:

Class 3: (including) Beauty products

Class 5: (including) Medicated muscle creams

Class 28: Fitness and exercise machines and equipment

Class 29: Beverages, namely dairy-based beverages

Class 30: (including) Beverages in this class

Class 41: (including) Educational services

The full specification appears in the Annexure to this decision.

 (‘the 540 goods and services’)

Trade Mark:

iFit  (‘the 540 Trade Mark’)

Trade Mark Number:

1632444

Priority Date:

4 July 2014

Goods and services:

Class 9: (including) Pedometers, computer software for managing information regarding tracking, compliance and motivation with a health and fitness program

Class 42: (including) Application Service Provider (ASP)

Class 44: Health information regarding nutrition, dieting, and wellness provided via a website

The full specification appears in the Annexure to this decision.

 (‘the 444 goods and services’)

Trade Mark:

IFIT  (‘the 444 Trade Mark’)

Endorsement:

Provisions of paragraph s 44(3)(a) and/or Reg 4.15A(3)(a) applied.

Trade Mark Number:

1795052

Priority Date:

21 March 2016

Goods and services:

Class 9: (including) Software for tracking, monitoring and planning fitness and athletic programs and workouts

Class 28: Fitness and exercise machines

Class 41: (including) Personal fitness training services and consultancy

Class 42: (including) An application service provider (ASP) featuring software or use with mobile devices, tablet, and computers for tracking, storing, and displaying personal performance data for various fitness activities

The full specification appears in the Annexure to this decision.

 (‘the 052 goods and services’)

Trade Mark:

IFIT  (‘the 052 Trade Mark’)

Endorsement:

Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

The Applicant

10.     According to the Cameron declaration:

[Personal circumstances] made me realise that each person has their own requirements and goals for nutritional products and with the overwhelming number of products available, I wanted to start a business that would make it possible for people to find what they needed quickly and easily while removing the stress from the process.

[The Applicant] was registered as a company in December 2015. It was established to source, import, market and distribute nutritional products and to create and build technology to support its business and customers across Australia. Over the past 4 years, my company has grown into a thriving business and has two stores located in Bondi Junction and The Galeries, each with a juice bar, as well as various kiosks located in Fitness First gyms and F45 studios. …

In 2015, [the Applicant] conducted extensive research into technology aimed at nutrition services and nutrition products. …

[The Applicant’s software] allows orders for nutritional products to be personalised and ordered online from [the Applicant’s] website or directly from consoles incorporating the software from my Company’s stores and kiosks. …

[The Applicant’s software] was launched early in 2016 and later that year, following the enormous success of [the software], it was awarded two national awards.

11.     The Applicant is the also the owner of the following registered trade marks (‘the Applicant’s Registered Trade Marks’):

Trade Mark Number:

1756712

Priority Date:

3 March 2016

Goods and services:

Class 35: (including) Wholesale, retail and online retail services in relation to: food supplements

Class 43: (including) Takeaway foods and restaurant services in relation to: health, special dietary and sports nutritional drinks

(‘the 712 services’)

The full specification appears in the annexure to this decision.

Trade Mark:

Trade Mark Number:	1923794
Priority Date:	3 May 2018
Goods and services:	Same as the Applicant’s Goods and Services
Trade Mark:	FIT NUTRITION

Grounds of Opposition, Onus and Standard of Proof

12.     As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60. Those grounds were pressed at the hearing.

13.     The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 3 May 2020, being the filing date of the application (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60.

Discussion

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

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Section 44

14.     Relevant provisions are reproduced below:

Section 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) must be rejected if:

(a)the applicant's trade mark 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.

Note 1: For deceptively similar see section 10.

Note 2: For similar goods see subsection 14(1).

Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

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.

15.     In the SGP the Opponent nominated the Opponent’s Trade Marks in respect of s 44. To successfully oppose the application the Opponent must establish the requirements of s 44(1) and/or s 44(2). To do so, the Opponent must establish that at least one of the Opponent’s Trade Marks:

·     has a priority date which is earlier than the Relevant Date (‘the first requirement’);

·     is in respect of at least some goods or services which are similar or closely related to at least some of the Applicant’s Goods and Services (‘the second requirement’); and

·     is substantially identical with or deceptively similar to one or both of the Applicant’s Trade Marks (‘the third requirement’).

The first requirement

16.     The Opponent’s Trade Marks each have a priority date which is earlier than the Relevant Date, thus satisfying the first requirement for each of them.

The second requirement

17.     There are clear conflicts between certain of the Opponent’s goods and services and the Applicant’s Goods and Services; for example, the Opponent’s 444 Goods and Services and the 052 Goods and Services include various specific software goods in Class 9 such as:

computer software for wireless data communication for receiving, processing, transmitting and displaying information relating to fitness, body fat, body mass index; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program

Those goods are clearly encompassed by the Applicant’s broad claim in Class 9 for application software. The Opponent’s software goods are, therefore, goods which are similar to at least some of the Applicant’s Goods and Services.

18.     Other conflicts are less clear cut. For example, the Opponent has submitted that the Applicant’s claim in Class 35 for wholesale, retail and online retail services in relation to food supplements (etc) is closely related to the beverages, namely dairy-based beverages in Class 29 of the 540 Trade Mark. As will be seen, it is not necessary to consider further this or other potential conflicts as I have found, below, that the Applicant’s Trade Mark is neither substantially identical nor deceptively similar to any of the Opponent’s Trade Marks regardless of the conflict of goods/services considered.

The third requirement

Substantially identical?

19.     I will consider firstly whether the Applicant’s Trade Mark is substantially identical to any of the Opponent’s Trade Marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd  Windeyer J said:

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, [12].

20.     On a side by side comparison there are differences which mean that a total impression of dissimilarity emerges from a comparison of each of the Opponent’s Trade Marks and the Applicant’s Trade Mark. The stylisation of the ‘fit’ element in the Applicant’s Trade Mark along with the addition of the initial ‘i' to the ‘fit’ element of the Opponent’s Trade Marks are sufficient to reach the conclusion of no substantial identity.

Deceptively Similar?

21.     Guidance for determining whether trade marks are deceptively similar is also found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. 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].[5]

[5] Ibid [13].

22.     Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

First, the judgement 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.[6]

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.[7]

Third, allowance must be made for imperfect recollection.[8]

Fourth, the effect of the spoken description must be considered.[9]

Fifth, it is necessary to show a real tangible danger of deception or confusion.[10]

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.[11] …

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.[12]

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.[13]

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.[14] 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.[15] [16]

[6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

[7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).

[8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].

[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.

[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

[13] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).

[14] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].

[15] Ibid [100].

[16] [2012] FCA 1022, [37]–[46].

23.     As indicated above, all surrounding circumstances must be taken into account. The Applicant has submitted that one of those circumstances is what is commonly referred to as ‘the state of the Register’. The Applicant submitted that, ‘[t]he state of the trade mark register reflects the fact that the word FIT is contained in numerous trade marks’. Specifically, the Applicant noted, at the time of its submissions, that 222 registered trade marks in Class 9 and a similar number in Class 35 contained the word ‘fit’. 51 trade marks in Class 43 contained the word ‘fit’. There were a significant number of pending applications in each of those classes which also contain the word ‘fit’. The Applicant provided some 14 illustrative examples in its submissions. It is reasonable to infer from the state of the Register in this matter that the use of ‘fit’ is common in the marketplace in connection with the goods and services we are concerned with in this matter. As a consequence consumers are likely to be more cognisant of differences between trade marks which contain ‘fit’ as an element.

24.     The Applicant further noted that the Opponent’s Trade Marks co-exist on the Register with the Applicant’s Registered Trade Marks. The Applicant’s Registered Trade Marks were registered without any endorsements—this indicates that the Applicant’s Registered Trade Marks proceeded to registration, in the view of the examiner(s) of the applications, without the impediment of the existence of substantially identical or deceptively similar trade marks already on the Register. Registration of 1756712 was not opposed. An opposition to registration of 1923794 was withdrawn before the matter was heard.

25.     In respect of deceptive similarity, the Opponent submitted:

The word NUTRITION is descriptive in relation to goods and services related to supplements, dietetic preparations, health food products etc, such as those included in the Applicant’s Goods and Services. The distinctive element of [the Applicant’s Trade Mark] is the word FIT.

The essential, distinctive visual and aural element of [the Applicant’s Trade Mark], the word FIT, is substantially identical to the Opponent’s registered trade mark IFIT.

The overall visual, aural, and conceptual impression conveyed by [the Applicant’s Trade Mark] is the same as that conveyed by [the Opponent’s Trade Marks], namely the idea of fitness, or of the state of being ‘fit’. The word NUTRITION has an obvious and natural relationship with fitness, and so does not act to distinguish [the Applicant’s Trade Mark] from the Opponent’s registered trade mark IFIT. …

Regarding the Opponent’s registered mark iFIT, the use of a lowercase ‘i’ is echoed in [the Applicant’s Trade Mark], providing a further visual link between the two marks, and increasing the likelihood of confusion.

26.     The Applicant’s response to the Opponent’s submissions was:

The Opponent is attempting to argue that it has a monopoly in the word FIT where in reality its rights are in the word IFIT which is a coined word and which has no meaning. …

[T]here are distinct visual and conceptual differences between [the Applicant’s Trade Mark] and the Opponent’s trade marks. …

The Opponent’s trade marks are the coined word IFIT. Clearly [the Applicant’s Trade Mark] is not wholly incorporated in the Opponent’s Trade Marks …

The differences between the marks include:

·[The significant stylisation of the ‘fit’ element of the Applicant’s Trade Mark.]

·The Opponent’s trade mark on the other hand consists only of the coined word IFIT. The effect is a much shorter trade mark. …

·Conceptually, the marks are very different, the Opponent’s IFIT trade marks are coined and have no meaning. The fact that the word ‘fit’ is incorporated in the coined word does not give the trade mark a meaning.

The Applicant submits that the net impression created by the combined effect of these various differences is more than sufficient to distinguish the marks visually, phonetically and conceptually and to dispel any likelihood of confusion between the marks.

27.     I am, on the whole, inclined to the Applicant’s view. There are significant differences between the trade marks which, in the surrounding circumstances of this matter, mean the Opponent’s Trade Marks do not so nearly resemble the Applicant’s Trade Mark that deception or confusion are likely: specifically, the significant stylisation of the ‘fit’ element of the Applicant’s Trade Mark and the presence of the leading ‘i' in the Opponent’s Trade Mark. For the sake of clarity, this finding holds in respect of all of the Applicant’s Goods and Services for which a conflict has been asserted, not just those which clearly conflict with the Opponent’s goods and services. Consequently, the third requirement has not been satisfied.

28.     It follows, from the discussion above, that the Opponent has failed to establish this ground of opposition.

Section 60

29.     The ground based on s 60 was particularised in the SGP as follows:

The opponent develops, makes, and markets fitness equipment, including treadmills, elliptical cross-trainers, exercise bikes, strength training equipment, stationary bikes, home gyms, weight benches, yoga and pilates equipment, hand-held exercise, and performance apparel. It sells its products through retailers in the United States, Asia, Australia, Europe, and Latin America, as well as selling them online.

In 2005 the opponent released a wearable fitness tracking device under the brand IFIT. The IFIT fitness tracker is compatible with various fitness equipment, and can be synced with phones and tablets, and can access location services such as GoogleMaps. The IFIT technology also connects to Google Maps, personal fitness training programs, and weekly motivational competitions with other users of the IFIT device. The IFIT technology connects users and their exercise machine to powerful online interactive training tools, and gives them access to a fitness community.

The IFIT brand is used in relation to a range of products and services worldwide and in Australia, including fitness wearables, workout equipment, WiFi-enabled fitness equipment, nutritional products, software applications, and coaching and personal training services.

The opponent has collaborated with celebrity fitness trainers such as Jillian Michaels to provide personal training services under the IFIT brand.

The opponent uses IFIT NUTRITION on its website at and in its apps.

The opponent’s IFIT trade mark had, before the priority date of the opposed application, acquired a reputation in Australia in respect of the goods and services in the opposed application, or similar or related goods and services.

Because of the reputation of the opponent’s IFIT mark, including when used together with NUTRITION, the use of the applicant’s mark in respect of the goods in the opposed application is likely to deceive or cause confusion.

30.     Section 60 is reproduced below:

Section 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.

31.     To establish the ground of opposition under s 60 the Opponent must demonstrate that at the Relevant Date its IFIT trade mark had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion.

32.     In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[17] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[18]

[17] [2000] FCA 1335, [81].

[18] [1992] FCA 159, [118].

33.     On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[19]

[19] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).

Assessment of acquired reputation

34.     The Chang declaration indicates that the Opponent has ‘worked on developing technologies to personalise a user’s exercise experience’ since the late 1980s. It is further declared:

The iFit technology has been available to users in Australia since at least 2007, when [the Opponent] began selling iFit-enabled fitness equipment into Australia.

[The Opponent] maintains an Australian iFit website at Screenshots from the website explaining the features of the iFit technology are attached as exhibits RC-5 to RC-9. These webpages have been in substantially this form since before the relevant date.

Consumers from Australia also use the main iFit website at During the period 1 November 2018 to 21 May 2019 there were 161,236 unique views of this website from Australia.

[The Opponent] maintains an Australian iFit online shop at selling iFit branded fitness wearables and accessories, and memberships to iFit Coach. Screenshots of webpages from this website are attached as exhibit RC-11. These webpages have been in substantially this form since before the relevant date. …

The iFit apps are available from the iFit website … and from Apple iTunes … and Google Play …

35.     Figures for ‘The sales of iFit memberships or membership renewals to Australian consumers over the years 2008/2009 to 2017/2018’ are provided in the Chang declaration. Those figures are best described as modest. The numbers of units of ‘iFit fitness wearable devices’ sold in Australia during the period 23 November 2015 to 29 November 2018 are provided. Those numbers are, again, modest. Unit sales of iFit enabled exercise equipment over the years 2007 to 2018 are also provided. Those figures are noticeably more substantial.

36.     The particulars in the SGP for s 60 refer to ‘the brand IFIT’ and state that ‘The opponent’s IFIT trade mark had … acquired a reputation’. The Opponent’s submissions refer to ‘a reputation in Australia in relation to the marks IFIT, iFit, and [the trade mark shown below]’ which are referred to in submissions as ‘the IFIT marks’.

(‘the iFit device’)

However, the exhibits the Opponent has referred to in support of the acquisition of reputation show use of a number of variations of trade marks which might be referred to by the general term iFit trade marks. Examples are provided below.

37.     The appearance of this plethora of trade marks in the evidence makes it extremely problematic to determine whether any of the IFIT marks (referred to in submissions) had acquired a reputation before the Relevant Date. Questions arise as to which of the above trade marks, if any, were used in connection with, for example, the ‘sales of iFit memberships or membership renewals’ or which trade marks appeared on the ‘iFit enabled exercise equipment’ for which sales figures were provided. The examples of ‘iFit fitness wearable devices’ largely bear the iFit device.

38.     The uncertainties raised by the appearance of so many trade marks in the Opponent’s evidence makes the decision regarding reputation a borderline one. Nevertheless, I am prepared to accept that the plain word ‘iFit’ and the iFit device had acquired at least a  modicum of repute in respect of fitness software applications, fitness services, and wearable smart devices for fitness purposes.

Assessment of deception or confusion

39.     It is not sufficient that the Opponent merely establish that its trade marks acquired a reputation, I must also be satisfied that because of that reputation use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[20]

[20] (1937) 58 CLR 641, 658.

40.     The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[21]

[21] [1979] RPC 410, 423 (citations omitted).

41.     It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:

A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[22]

[22] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act.

42.     In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

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 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 or services will be bought and sold and the character of the probable acquirers of the goods and services.[23]

[23] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

43.     In the discussion concerning s 44, above, I decided that ‘iFit’ does not so nearly resemble the Applicant’s Trade Mark that it is likely to give rise to deception or confusion. The reputation acquired by ‘iFit’ does not increase the likelihood of deception or confusion. Because of the reputation acquired by ‘iFit’, use of the Applicant’s Trade Mark is not likely to deceive or cause confusion.

44.     The iFit device has stylisation of the word ‘iFit’ which serves only to further differentiate it from the Applicant’s Trade Mark. Because of the reputation acquired by the iFit device, use of the Applicant’s Trade Mark is unlikely to deceive or cause confusion. Consequently, the Opponent has failed to establish this ground of opposition.

Section 42(b)

45.     Section 42 is reproduced below:

42 Trade mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

(a) …

(b) its use would be contrary to law.

46.     The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[24] The relevant time for assessing whether the use of the Applicant’s Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[25]

[24] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

[25] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).

47. In the SGP the Opponent asserted that use of the Applicant’s Trade Mark ‘would contravene, and would therefore be contrary to, sections 18 and 29 of the Australian Consumer Law being schedule 2 to the Competition and Consumer Act 2010 (Cth)’.

48. In the present matter the Opponent has failed to establish a ground of opposition under s 60. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[26] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

[26] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

49. Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘the TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[27] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL.

[27] [2003] FCA 104, [107].

50.     For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.

Decision

51.     Section 55 relevantly provides:

55Decision

(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.

Note:For limitations see section 6.

52.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, application 1923795 may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

53.     The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
10 December 2020

Annexure

The 540 Goods and Services

Class 3: Beauty products, facial cleansers, toothpaste, shampoo, thigh and body therapy cream, aromatherapy bath and massage body oils, Aloe Vera gel, body moisturizers, body balms, body lotions, breast firming lotions, anti-wrinkle creams, foot creams, scented essential body oils, mineral bath preparations, scented bath salts, varicose vein lotions; vitamin complex creams and lotions, scentball diffusers and car scent diffusers

Class 5: Therapeutic bath salts, Aloe Vera gels, medicated foot creams, antibacterial sanitizing hand gels and medicated muscle creams and rubs

Class 28: Fitness and exercise machines and equipment

Class 29: Beverages, namely dairy-based beverages

Class 30: Beverages in this class, including herbal food beverages, and chocolate food beverages not being dairy-based or vegetable-based

Class 41: Educational services; conducting personal training in the field of health and fitness

The 444 Goods and Services

Class 9: Pedometers; altimeters; scales and personal weighing scales; multifunctional electronic devices for displaying, measuring, and uploading to the Internet and computer networks information including time, date, heart rate, global positioning, direction, distance, altitude, speed, steps taken, calories burned, navigational information, weather information, temperature, wind speed, changes in heart rate, activity level, hours slept, and quality of sleep; computer software for wireless data communication for receiving, processing, transmitting and displaying information relating to fitness, body fat, body mass index; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program; Electronic monitoring devices incorporating microprocessors, digital display, and accelerometers, for detecting, storing, reporting, monitoring, uploading and downloading sport, fitness training, and activity data to the Internet, and communication with personal computers, regarding time, steps taken, calories burned, distance; computer software for fitness; Computer software and computer application software for mobile phones and personal digital devices for monitoring, uploading, and downloading data regarding sport activity, fitness training, and fitness level to the internet and other computer and electronic communication networks; computer software and computer application software for mobile phones and personal digital devices that monitor, track, and compare sport activity and fitness level; computer software and computer application software for mobile phones and personal digital devices that provides tips, coaching, and personalized workouts, to improve the user's fitness level; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program; downloadable software for the collection, storage and display of personal performance data from various fitness activities, display of nutritional information and fitness and athletic programs and workouts, software for tracking, monitoring and planning fitness training activities

Class 42: Application Service Provider (ASP) services including providing software for use with mobile devices, tablet, and computers for tracking, storing, and displaying personal performance data for various fitness activities; Application Service Provider (ASP) services including providing application programming interface (API) software for connecting and interacting with software applications on mobile devices, tablets, and computers to track, store, and display personal performance data for various fitness activities

Class 44: Health information regarding nutrition, dieting, and wellness provided via a website

The 052 Goods and Services

Class 9: Web-based, downloadable software for the collection, storage and display of personal performance data from various fitness activities, display of nutritional information and fitness and athletic programs and workouts, software for tracking, monitoring and planning fitness training activities; pedometers; altimeters; multifunctional electronic devices for displaying, measuring, and uploading to the Internet and computer networks information including time, date, heart rate, global positioning, direction, distance, altitude, speed, steps taken, calories burned, navigational information, weather information, temperature, wind speed, changes in heart rate, activity level, hours slept, and quality of sleep; computer software for wireless data communication for receiving, processing, transmitting and displaying information relating to fitness and heart rate; electronic monitoring devices incorporating microprocessors, digital display, and accelerometers, for detecting, storing, reporting, monitoring, uploading and downloading sport, fitness training, and activity data to the Internet, and communication with personal computers, regarding time, steps taken, calories burned, distance; computer software and computer application software for mobile phones and personal digital devices that provides tips, coaching, and personalized workouts, to improve the user's fitness level

Class 28: Fitness and exercise machines

Class 41: Personal fitness training services and consultancy; physical fitness instruction; physical fitness training services; providing exercise and fitness information through an on-line computer database; providing information in the field of exercise training; educational services, namely, conducting personal training in the field of health and fitness

Class 42: An application service provider (ASP) featuring software for use with mobile devices, tablet, and computers for tracking, storing, and displaying personal performance data for various fitness activities; ASP featuring application programming interface (API) software for connecting and interacting with software applications on mobile devices, tablets, and computers to track, store, and display personal performance data for various fitness activities

The 712 Services

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