Planet Fitness Pty Ltd Atf Planet Fitness Trust and Galactic Fitness Pty Ltd Atf the Rosekelly Family Trust v PFIP LLC

[2018] ATMO 11

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Planet Fitness Pty Ltd atf Planet Fitness Trust and Galactic Fitness Pty Ltd atf the Rosekelly Family Trust to extension of protection to International Registrations Designating Australia 1049245, 1121736, and 1123045 (Australian trade mark applications 1537346 (25), 1538533 (25), and 1539588 (25)) - PLANET FITNESS (words and logos) - in the name of PFIP LLC.

Delegate:	Decisions on the Written Record Iain Campbell Thompson
Representation:	Opponents: Hall & Wilcox Applicant: IP Gateway Patent & Trade Mark Attorneys Pty Ltd
Decision:	2018 ATMO 11 Trade Marks Act 1995 Regulation 17A.33 Opposition to extensions of protection: sections 44, 58, 59, 60 and 62A: ground under section 60 established – grounds other than section 60 not considered. Extensions of protection to the IRDAs refused.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) and the Trade Marks Regulations 1995 (‘the Regulations’) PFIP LLC (‘the Holder’) has sought extension of protection in Australia to the International Registrations Designating Australia (‘the IRDAs’) which appear below:

Application No:         1537346

IRDA No:                  1049245
Priority Date:             11 October 2012

Goods:Class 25: Clothing, namely T-shirts, shorts, sweat shirts, sweat pants, jackets and hats

(‘the Goods’)

Trade Mark:               PLANET FITNESS

(‘the Word Trade Mark’)

Application No:         1538533

IRDA No:                  1121736
Priority Date:             11 Oct 2012

Goods:Class 25: Clothing, namely T-shirts, shorts, sweat shirts, sweat pants, jackets and hats

Trade Mark:               
  (‘the Conjoined Trade Mark’)

Endorsement:             Colour Claimed: The colour YELLOW appears in the hand design with BLACK highlighting; the letters "PF" are in WHITE; a PURPLE circle surrounds the hand design and letters "PF"; the interior of the PURPLE circle and larger cog circle is BLACK; the outer edge of the cog circle is WHITE with BLACK outline; the words "PLANET FITNESS" are in PURPLE.; Parts Colour Claimed: The colour(s) YELLOW, PURPLE, BLACK and WHITE is/are claimed as a feature of the mark; Mark Description: The colour YELLOW appears in the hand design with BLACK highlighting; the letters "PF" are in WHITE; a PURPLE circle surrounds the hand design and letters "PF"; the interior of the PURPLE circle and larger cog circle is BLACK; the outer edge of the cog circle is WHITE with BLACK outline; the words "PLANET FITNESS" are in PURPLE.

Application No:         1539588

IRDA No:                  1123045
Priority Date:             01 Nov 2012

Goods:Class 25: Clothing, namely, T-shirts, shorts, sweatshirts, sweat pants, jackets and hats

Trade Mark:               
  (‘the Composite Trade Mark’)

Endorsement:             Colour Claimed: The colour(s) BLACK, YELLOW, PURPLE, and WHITE is/are claimed as a feature of the mark; Parts Colour Claimed: The mark consists of a design of a cogwheel with a ring inside the cogwheel and with the stylized design of a human arm and hand protruding from the center of the ring with the wording, "planet fitness" below the arm; the colour BLACK appears in the outer edge of the cogwheel, in the background of the cogwheel and in the arm and hand; the colour PURPLE appears in the ring; the colour YELLOW appears in the arm and hand; and the colour WHITE appears on the inner edge of the cogwheel and in the wording, "planet fitness"; Mark Description: The mark consists of a design of a cogwheel with a ring inside the cogwheel and with the stylized design of a human arm and hand protruding from the center of the ring with the wording, "planet fitness" below the arm; the colour BLACK appears in the outer edge of the cogwheel, in the background of the cogwheel and in the arm and hand; the colour PURPLE appears in the ring; the colour YELLOW appears in the arm and hand; and the colour WHITE appears on the inner edge of the cogwheel and in the wording, "planet fitness".

1. In regard to the endorsements on the two preceding IRDAs, I note that section 70 of the Act provides:

   70Colours in registered trade marks

   (1)A trade mark may be registered with limitations as to colour.

   (2)The limitations may be in respect of the whole, or a part, of the trade mark.

   (3)To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.

   Note:For limitations see section 6.

2. The endorsements are not expressed as being limitations as to colour and accordingly, if the IRDAs on which they appear were to be protected, the protection would extend to all colours.

3. I add that when referring to the above trade marks collectively I will term them ‘the IRDAs’.

4. Opposition to the extension of protection to the IRDAs has been filed by Planet Fitness Pty Ltd atf Planet Fitness Trust and Galactic Fitness Pty Ltd atf the Rosekelly Family Trust (‘the Opponents’).  For the sake of simplicity, the history of these oppositions is summarised in tabular form below:

Dates	Trade Mark Nos	Event
4 Aug 2014	1537346 1538533	Notices of Intention to Oppose.
2 Sep 2014	1539588	Notice of Intention to Oppose.

3 Sep 2014	1537346 1538533	Statements of Grounds and Particulars. Grounds under sections 44, 58, 60, 59 and 62A of the Act.
9 Sep 2014	1539588	Statement of Grounds and Particulars. Grounds under sections 44, 58, 60, 59 and 62A of the Act
7 Oct 2014	1537346 1538533 1539588	Notices of Intention to Defend.
16 Jan 2015	1537346 1538533 1539588	Evidence in Support Statutory declaration of Mr Dallas Rosekelly[1] made on 16 January 2015 with annexures DR-1- DR-31.
4 May 2015	1537346 1538533 1539588	Evidence in Answer Statutory declaration of Mr Matthew Sgro, Legal Director, Contracts & Dispute Resolution of the Holder, made on 1 May 2015, with exhibits 1 and 2.
3 Aug 2015	1537346 1538533 1539588	Supporting submissions filed by the Opponents then legal representatives, Harris Wheeler.

[1] Mr Rosekelly’s relationships with the Opponents will be discussed under the heading ‘Evidence’, below.

1. Neither party has requested a hearing and now, in order that the Registrar may discharge her obligation under reg 17A.34N of the Regulations to decide these matters, they have been passed to me, one of her delegates, for my decisions on the written record which comprises those materials mentioned above and the written submissions of the Opponents provided by their then legal representatives Harris Wheeler Lawyers.

Onus & Relevant Date

1. The Opponents bear the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

2. The relevant dates at which the grounds under section 52 of the Act must be considered are the filing dates of the opposed IRDAs (or, in relation to the ground under section 60, the ‘priority dates’ which are here the same as the filing dates of the IRDAs).

Evidence

The Opponents - Background

1. In his evidence in support Mr Rosekelly states that he is:

   … the sole director, company secretary, and sole shareholder of the following companies:

   a. Planet Fitness Pty Ltd ACN 073 563 489

   b. Galactic Fitness Pty Ltd ACN 108 484 197

   c. Gantrot Pty Ltd ACN 002 968 925

   d. Planet Fitness Casula Pty Ltd ACN 143 024 195

   e. Planet Fitness Belmont Pty Ltd ACN 143 037 985

   f. Planet Fitness Charlestown Pty Ltd ACN 160 666 679

and that he is director of, and the majority shareholder in, the following company:

h. Planet Fitness Gosford Pty Ltd ACN 129 151 426 ("PF Gosford")

1. Mr Rosekelly details the relationships between him and the above companies and I consider that Mr Rosekelly’s evidence is sufficient to satisfy the Registrar that the entities (collectively ‘the Entities’) listed above are controlled by him and use of the trade marks discussed hereunder is under the authorization of him and the Opponents.

2. One of the Entities mentioned above, Planet Fitness Pty Ltd, (the first opponent) is the owner of the Australian trade mark registration which appears below:

Registration No:         1129280

Priority Date:             17 August 2006
Services:  Class 41: Operation of physical fitness centres
Trade Mark:               Planet Fitness

(‘the Registered Trade Mark’)

1. Another of the Entities listed above, Galactic Fitness Pty Ltd, (the second opponent) is the owner of the Australian trade mark application which appears below:

Application No:         1553370[3]

Status:  Deferred
Priority Date:             24 April 2013

Goods/Services:         Class 25: Gym wear; Apparel (clothing, footwear, headgear); Clothing for sports

Class 35: Retail services; Retailing of goods (by any means)

Class 41: Conducting fitness classes; Health club services (health and fitness training); Instruction in physical fitness; Personal trainer services (fitness training); Physical fitness instruction; Physical fitness training services; Physical health education; Conducting exercise classes; Health club services (exercise); Gymnasium club services; Gymnasium services; Provision of gymnasium facilities; Yoga instruction

Trade Mark:               Planet Fitness

[3] This application is mis-identified as being 11553370 in Mr Rosekelly’s declaration but I am satisfied that this is the application to which he intended to refer.

1. The Entities have continuously operated gymnasia in various locations in New South Wales: these being, Lambton (since 1994); Gosford (since 2008); Belmont (since 2009); Casula (since 2010); Charlestown (since 2012); and, a further gymnasium operated at Coffs Harbour in the period 2006 to 2009.  Each of these gymnasia (subject to my comments below) has used trade marks which consist of, or contain, the words ‘Planet Fitness’.

2. Mr Rosekelly states:

   As set out above, the Planet Fitness Mark has been used by the [Opponents] continuously in Australia as a trade mark since 1996.

   The Planet Fitness Mark has also been incorporated into a number of logos over the period of the business' operation. Annexed and marked DR-12 is a table showing the different versions of the logos and the periods of use for each logo.

   The [Entities] Companies primarily use the Planet Fitness Mark in connection with operation of physical fitness centres, including:

   a. Personal Training services;

   b. Group fitness.

   Together the [Entities] operate 5 fitness centres that use the Planet Fitness Mark. The Planet Fitness business is a significant participant in the fitness industry, as evidenced by the number of members, employees and contractors and revenue. Annexed and marked Confidential Annexure DR-13 is a table showing the current number of members, and the number of employees and instructors for the last 3 years for the current fitness centre premises.

3. I note here that at the priority dates of the IRDAs there were about 3,588 fitness centres and gymnasia in Australia[4] with 21,514 fitness instructors[5], and that in 2015 gym membership in Australia approached one million people[6].

   [4] >

   There is a difficulty arising from Mr Rosekelly’s declaration and it happens in this way: in his declaration he identifies Planet Fitness Pty Ltd as being the owner of the Registered Trade Mark (the plain words ‘Planet Fitness’).  Mr Rosekelly goes on to state:

   The [Entities] primarily use the [Registered Trade Mark] in connection with operation of physical fitness centres, including:

   a. Personal Training services;

   b. Group fitness.

4. Mr Rosekelly also states:

   As set out above, the [Registered Trade Mark] has been used by the [Entities] under licence from PF continuously in Australia as a trade mark since 1996.

   The [Registered Trade Mark] has also been incorporated into a number of logos over the period of the business' operation. Annexed and marked DR-12 is a table showing the different versions of the logos and the periods of use for each logo.

5. Examples of the logos referred to above appear below:

1. However, subsection 7(1) of the Act provides:

   7Use of trade mark

   (1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.

   Note:For prescribed court see section 190.

2. The expression ‘additions or alterations that do not substantially affect the identity of the trade mark’ was considered by Yates J in Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[7] where he said:

   Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself. I therefore find that, by using the modified ‘707 mark, the applicant used the ‘707 mark with additions or alterations not substantially affecting its identity.

   [7] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457 at [256].

3. Discussing the expression ‘substantially identical’, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[8] 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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

   [8] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

4. While the Registered Trade Mark has been incorporated into the logo trade marks, and may form an essential feature of those trade marks, there are other essential features which appear in those trade marks.  The total impression of resemblance or dissimilarity which emerges from the comparison is that they are different to the Registered Trade Mark and therefore are not substantially identical to the Registered Trade Mark.  Further, the features other than the words PLANET FITNESS which appear in those trade marks are not solely of the same genus as the image of the imprint of a foot referred to by the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd[9] where the image was solely a graphical representation of a word within the word trade mark BAREFOOT RADLER.  The representations of a planet appearing within the trade marks at paragraph [16], above, (if they be such) are not literal representations of a planet.

   [9] [2008] FCA 934; (2008) 77 IPR 69; [2008] AIPC 92-293.

5. I conclude that the evidence before the Registrar is not sufficient to satisfy her that the uses of the logo trade marks which appear at paragraph [16], above, are uses of the Registered Trade Mark.

6. It follows that the Opponents’ claims as to the first use of the Registered Trade Mark and the extent of the use of that trade mark, in particular in relation to sports clothing, must be assessed with a degree of caution.

The Opponents – Trade Mark Usage

1. The following annexures to Mr Rosekelly’s declaration are asserted to show use of the Registered Trade Mark:

   Annexure DR-12

   Contains depictions of the logo trade marks used by Opponents during the period 1994 until the priority date in relation to gymnasium services and on exercise clothing sold by the Opponents or supplied as an adjunct to the gymnasium services.[10]

   [10] A selection of these representations appears at paragraph [16] of this decision.

   Annexure DR-15

   Contains photographs of the exteriors and signage on the gymnasia run by the Entities.  I note that:

   the photographs of the Belmont gymnasium bears the logo adopted in 2010 on a sign which also bears the Registered Trade Mark in lettering which is slightly more than one metre high;

   The gymnasium at Casula bears similar signage to that of the Belmont gymnasium;

   The gymnasium at Charlestown bears the 2012 iteration of the logo trade marks and elsewhere a very prominent sign bearing the Registered Trade Mark;

   The gymnasium at Lambton bears the 2012 iteration of the logo trade marks and elsewhere a very prominent sign bearing the Registered Trade Mark;

   The signage at the Gosford gymnasium bears the 2008 iteration of the logo trade marks and elsewhere that logo alongside the Registered Trade Mark in prominent lettering;

   Annexure DR-16

   This annexure is comprised of an extract from the Opponents’ website.  While this material does bear both the current version of the Opponents’ logo trade marks and also the Registered Trade Mark, it does not show the use of either trade mark in relation to the sale or provision of exercise clothing;

   Annexure DR-17

   This annexure shows a selection of the Opponents’ logo trade marks on exercise clothing, being sweatshirts, tee-shirts, and singlets, during the period 1996 up until the priority date.  There are appearances of the Registered Trade Mark on a singlet at the Lake Macquarie Running Festival in 2011, on a marquee Lake Macquarie Running Festival in 2012, on a Charity Challenge singlet in 2012, and again in 2013.  I note that the marquee appears in a photograph at a Bike Fest community event but that whilst sports clothing is sold within the marquee it is for bicycle riders and apparently under the trade mark So Active;

   Annexure DR-18

   This annexure is of exercise clothing, being singlets and tee-shirts, offered for sale by the Opponents (or under their aegis) each of which bears a version of the logo trade mark and from the years 2012 up to the priority date;

   Annexure DR-19

   This annexure contains photographs of accessories offered for sale by the Opponents (or under their aegis) during the period 2012 up until the priority date; these are a backpack and a towel bearing the Registered Trade Mark;

   Annexure DR-20

   This annexure is comprised of current staff uniforms bearing the logo trade marks;

   Annexure DR-21

   This annexure shows the historical use of the Opponents’ website since January 2010 and use of various of the logo trade marks and the Registered Trade Mark;

   Annexure DR-22

   This annexure shows use of the latest version of the Opponents’ logo trade mark and the Registered Trade Mark on Facebook^®; however, as these uses are from after the priority dates, they are not relevant to these proceedings.

Annexure DR-23

This annexure showing a Twitter^® page is also from a date after the priority dates of the IRDAs and is not relevant to these proceedings;

Annexure DR-24

This annexure is an Instagram^® page which advertises a midyear sale on 19 July 2015, after the priority dates, and is thus not relevant to these proceedings;

Annexure DR-25

This annexure is a screenshot of a YouTube^® screen (to which it is not possible to ascribe a date)^.and shows that the service has been provided under the Registered Trade Mark by the Opponents, or under their aegis, since 2012;

Annexure DR-26

This is a schedule of radio advertisements on KOFM and 2NEW (both of these radio stations are in Newcastle) during the period 2011 to the end of 2014. I note that subsection 7(2) of the Act provides that ‘any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark’;

Annexure DR-27

This is the Opponents’ “current flyer”.  As it postdates the priority dates of the IRDAs it is not relevant to these proceedings;

Annexure DR-28

This shows one of the Opponents’ logo trade marks on the side of a municipal bus; as this use postdates the priority dates of the IRDAs it is not relevant to these proceedings; and

Annexure DR-29

This photograph shows the most recent iteration of the logo trade mark on the side of a surf boat; it is not possible to attribute a date to this and I regard it as being of little weight in these proceedings.

The Holder

1. The Holder is a major operator of gymnasia and/or fitness centres in the United States of America and, according to the evidence of the Opponents, operates in excess of 900 such centres across that country.

2. Mr Sgro states that the Holder started use in the United States of America of the trade mark PLANET FITNESS (word) in 1993 and logo versions of the trade mark in 2002.

3. If my understanding of a Google^® Analytics chart at exhibit 01 of Mr Sgro’s declaration is correct, the Holder first sold goods ordered from Australia in March 2002 (the entry for March 2012 bears the notation “This is the first month we started t [sic]”.

4. Mr Sgro states:

   The Applicant achieves substantial sales for the provision of the Goods under the Trade Marks in the United States of America. There are in excess of 950 Planet Fitness locations in the United States and Canada, with more than 6,000,000 active members.[11] The proliferation of Planet Fitness t-shirts along [sic] evidence that the Trade Marks are world famous.

   [11] I note that these figures suggest that each fitness centre run by the Holder has an active membership of over 6,300.

5. Mr Sgro quotes sale of tee-shirts which I infer bear one or more of the IRDAs of 2.9 million items in 2012 and states:

   It is evident that the approximate overall figures have substantially increased over time making the Trade Marks world famous.

6. In my view, however, all that these figures might show is that in 2012 around a half of the ‘active members’ in the United States or Canada bought a tee-shirt bearing one of the IRDAs from the Holder and that, if such be the case, it does not support the claim for those trade marks as being world famous.

Other

1. Before discussing the ground under section 60 of the Act (under which, in my view, the Opponents must succeed) I will mention a curious feature of the parties’ evidence. It is this: the evidence shows that the Opponents use the tag line “The Judgement Free Health Club” whereas the Holder uses the tag line ‘Home of the Judgement Free Zone”.

2. Whilst noting that the similarities in both the parties’ trade marks and their tag lines can hardly be coincidental, I observe that the Courts[12] have said:

   In the second place, it would appear that an applicant may be the "author" of a trade mark, although he has deliberately copied or adopted a mark registered in a foreign country in respect of the same description of goods. In Re The Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd. [1951] HCA 28; (1951) 82 CLR 199, Williams J. said: "To try and register in Australia a word which the applicant to the knowledge of the respondent is using elsewhere on its cigarettes is sharp business practice. But it is not in itself fraudulent or a breach of the law." (1951) 82 CLR, at p 202 (I would think myself that it may or may not, according to circumstances, constitute "sharp business practice ".)

   [12] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391; [1960] ALR 605; 34 ALJR 242 at [20].

Section 60

1. Section 60 of the Act provides:

   60Trade 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.

   Note:For priority date see section 12.

2. On the subject of reputation, Kenny J said in McCormick & Co Inc v McCormick:[13]

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   [13] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81].

3. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[14] Heerey J said that the reputation required to be demonstrated (in relation to section 28(a) of the repealed Trade Marks Act 1955)[15] was to be:

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[16]

   [14] [2000] FCA 1587; (2000) 50 IPR 1.

   [15] The word “reputation” was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438

   [16] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

4. Further, as the Registrar’s delegate observed in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi:[17] 

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponents’ trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [17] [2012] ATMO 124 at [40].

5. The evidence before the Registrar does not, in my view, establish that the Opponents have used their word trade mark Planet Fitness on sports clothing but that they have used it as the signage of various of its gymnasia/fitness centres.  Whilst the unadorned words ‘Planet Fitness’ appear on some sweatshirts provided to competitors at sporting carnivals, it is not immediately apparent that these are being used as a trade mark for sweatshirts any more than it could be claimed that a local painter and decorator sponsoring a sportsperson at the same events would be using (for example) the sign ‘Rainbow Painters’ as a trade mark for the sweatshirts on which it appears.  Prima facie, such sweatshirts are, in my view, functioning as sandwich boards advertising the services and goodwill of the sponsor rather than pointing to an origin in trade for the tee-shirt itself.

6. That said, it is apparent that the Opponents have used many of their logo trade marks on tee-shirts as trade marks and the words ‘Planet Fitness’ appear within each of these logos.

7. It is also apparent from the evidence that the Opponents’ logo trade marks in which the words ‘Planet Fitness’ appear have a moderate reputation within New South Wales.  In my consideration it is not necessary that the Opponents establish that the reputation of its trade mark extends to the whole of the Australian market.  As observed by the Full Bench of the Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd:[18]

   Conagra was decided 25 years ago. In 1992 the World Wide Web was in its infancy. There were no publicly available internet browsers. There was no Google, no Seek, no web browsing or the like. With the internet and travel both overseas and within Australia now ubiquitous in the lives of Australian people, the essential conceptual underpinning of IR’s case is unsound. IR accepted that, before IR conceived of the IR composite mark, ICI had acquired a substantial reputation in its marks in Western Australia. IR’s case depended on the proposition that ICI’s reputation in its marks did not extend outside Western Australia and IR would accept any condition or limitation not to use its marks in Western Australia. We accept that the Act permits a condition or limitation to this effect to be imposed (discussed below). But the reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes, necessarily impacts on both the acquisition of a reputation in a mark and the likelihood of the use of another mark being likely to deceive or confuse because of that reputation. Given current modes of communication and discourse and free and unfettered rights of travel within Australia, a substantial reputation in Western Australia in this national industry constituted a sufficient reputation in and across Australia for s 60(b) to be engaged. IR’s attempts to subdivide the nation into its component States and Territories, in the present context at least, could not succeed. Its approach resonates with sentimental notions of pre or early Federation train track gauge differences.

   [18] [2017] FCAFC 83 at [81].

8. I observe also that the services involved are such that they are frequently franchised throughout Australia.

9. As regards the nexus between gymnasium/fitness centre services and sports clothing, Mr Rosekelly states in his declaration:

   It is common in the fitness industry for gyms to promote their brand by providing ancillary items like clothing and accessories. Sometimes such clothing is provided for free, as a membership benefit or to promote the brand in the wider community, and other times it is retailed direct to clients for profit.

10. This comment accords with my observations of the world: sports clothing, in particular tee-shirts are more often than not provided by gymnasia and fitness centres as an adjunct to their business whether it be by sales to their members or provision as a part of their membership.  Such sports clothing prominently displays the trade mark of the gymnasium/fitness centre concerned.  Indeed, it might be observed that this is implicit in the IRDAs as originally filed which also sought protection in relation to:

    Providing indoor recreation facilities in the nature of workout fitness centers; providing courses or seminars in nutritional education and nutritional counselling; providing courses or seminars in physical and aerobic fitness, weight training and physical therapy.

11. The assessment of the likelihood of deception or confusion is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths.[19]  Absent the requirement that the trade marks under consideration be deceptively similar, these factors are:

    [19] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

    (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) 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.

    (iii) 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.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

12. After balancing the factors involved here, I am satisfied that because of the reputation acquired by Opponents’ logo trade marks in which words ‘Planet Fitness’ appear in relation to gymnasium/fitness services, and their use on sports clothing sold by the Opponents, and the fact that such sales are a commonplace adjunct within the industry, the use of the IRDAs on the Goods would be likely deceive or cause confusion because of the occurrence of the words ‘Planet Fitness’ within those trade marks.

13. The Opponents have established its ground under section 60 of the Act and there is no requirement that I consider the other grounds.

Decision

1. Regulation 17A.34N provides:

   17A.34NDecision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2)The Registrar must notify the International Bureau of the Registrar’s decision.

2. I refuse protection to IRDAs 1049245, 1121736, and 1123045in respect of all of the goods listed in the IRDAs.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
30 January 2018