Bossfit applied to register the trade mark BOSSFIT in connection with health club and physical fitness services, but its application was opposed by Crossfit.
The opponent is the owner of several prior Australian trade mark registrations for CROSSFIT that cover the same services as the BOSSFIT trade mark and sought to rely on those prior registrations under section 44.
The Hearing Officer noted that both trade marks, CROSSFIT and BOSSFIT are concatenations of two words, the second of which is ‘FIT’. The Hearing Officer also noted that ‘FIT’ in connection with the services at issue, is a non-distinctive element. In addition, the first words ‘CROSS’ and ‘BOSS’ are both known English words with commonly understood meanings that are conceptually distinct. Accordingly, the overall trade marks CROSSFIT and BOSSFIT were found to not be deceptively similar.
On section 60, the Hearing Officer agreed that CROSSFIT has acquired a ‘significant reputation’ in Australia for the services at issue. However, having found the trade marks to not be deceptively similar under section 44, the same reasoning was applied to find that there was not likely to be confusion or deception between the trade marks.
As the Hearing Officer did not consider the trade marks deceptively similar, it also followed that the sections 42, 58, and 62A grounds failed.
The opposition failed on all grounds and the BOSSFIT trade mark is to proceed to registration.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.
Trade Marks Team