Survival of the Fittest in Trade Marks Dispute

We all know someone who is addicted to Crossfit. Not surprisingly, with its rise in popularity those behind Crossfit have taken steps to protect the brand. This includes the registration of ‘CROSSFIT’ as a trade mark all over the world. In Australia, the word ‘CROSSFIT’ has three separate registrations in a number of different classes.

In 2012, well after people began dead lifting and air squatting in Crossfit Boxes across Australia, a fitness enthusiast in Brisbane created the brand ‘Bossfit’. In December 2014, he applied to register ‘BOSSFIT’ as a trade mark in health and physical training services. While the application was accepted by IP Australia, Crossfit opposed the mark on a number of grounds.

First, Crossfit argued (under section 44 of the Trade Marks Act 1995) that ‘BOSSFIT’ was too similar to ‘CROSSFIT’ and that both marks were in respect of the same services. While the hearing officer accepted that ‘CROSSFIT’ was registered first and both marks are in respect of similar services, they determined that ‘BOSSFIT’ was not substantially identical or deceptively similar to ‘CROSSFIT’. This is because the words ‘boss’ and ‘cross’, which are the main distinguishing features of each mark, convey very different meanings. In particular, the hearing officer noted that the ‘cross’ in ‘CROSSFIT’ was inspired by training across multiple sports and leaves a different overall impression to ‘BOSSFIT’.

Next, Crossfit argued (under section 60 of the Trade Marks Act 1995) that they had acquired a reputation in the trade mark ‘CROSSFIT’ and because of this reputation, the use of ‘BOSSFIT’ would likely cause confusion. In particular, because of the similarities between the words, people would wonder whether the services provided under ‘BOSSFIT’ and ‘CROSSFIT’ came from the same source.

The hearing officer noted that Crossfit does have a significant reputation in respect of fitness services. However, after citing a number of prominent cases, the hearing officer found that this reputation does not override the significant differences between the marks and their meaning. The hearing officer was therefore satisfied that there was unlikely to be any confusion between the two marks. Crossfit’s related argument that the use of ‘BOSSFIT’ constitutes misleading or deceptive conduct in breach of the Australian Consumer Law was also rejected.

Lastly, Crossfit argued (under section 62A of the Trade Marks Act 1995) that the owners of ‘BOSSFIT’ acted in bad faith, as they were aware of Crossfit’s reputation at the time they filed the application for ‘BOSSFIT’ and, because of the similarity between the two trade marks, were obtaining an unfair commercial advantage. The hearing officer rejected this argument. While it can be assumed the ‘BOSSFIT’ owner was aware of Crossfit at the time of the application, that is not enough to show bad faith. The hearing officer noted that due to the differences between the marks, the ‘BOSSFIT’ application was not unscrupulous or underhanded and therefore not made in bad faith.

The case is a good lesson on the limitations of a trade mark registration. Given the popularity of Crossfit, the relatively slight differences in the words themselves and the similarity in services, Crossfit would have hoped for a different result. This is especially given the outcome of some section 44 decisions in recent years, including that ‘VIVO’ is deceptively similar to ‘TIVO’ and ‘NOIX DE COCO’ is deceptively similar to ‘COCO NOIR’.

On the other hand, the case is also a lesson on the importance of registering trade marks. If Crossfit had not registered their marks, instead of challenging similarly named competitors they would likely be dealing with a number of opportunistic businesses staking a claim to their exact name.

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