In this matter, a registration for was insufficient to prevent the registration of AMFIT NUTRITION.
Amazon Europe Core S.a.r.l. applied to register the AMFIT NUTRITION trade mark in classes 5 and 32. The goods of interest were mainly nutritional and dietary supplements, energy bars, ready to drink protein supplement shakes, energy drinks and sports drinks.
The application was opposed by Fit Revolution Pty Ltd on a number of grounds, but ultimately it only relied on the following two grounds:
- Section 44 – the AMFIT NUTRITION trade mark is deceptively similar to the trade mark covering inter alia “retailing of food and nutritional supplements; food and restaurant services including in relation to health, special dietary and sports nutritional drinks and goods” in classes 35 and 43 and the FIT NUTRITION trade mark covering “software” goods in class 9 and the same services in classes 35 and 43 as the logo mark; and
- Section 60 – due to a reputation in the and FIT NUTRITION trade marks in Australia, the use of AMFIT NUTRITION would deceive or confuse.
To succeed under this ground of opposition, the Opponent must establish that:
- the trade marks relied on have an earlier priority date than the applied for trade mark; and
- those marks cover goods or services which are the same as or closely related to the applied for goods or services; and
- the applied for trade mark is substantially identical with or deceptively similar to the identified marks.
Of the two registrations relied upon, only the trade mark had a priority date earlier than that of the AMFIT NUTRITION trade mark. The FIT NUTRITION word mark application was filed after the applied for mark and therefore could not be taken into consideration for this ground of opposition.
The Hearing Officer found that the AMFIT NUTRITION trade mark was not substantially identical with or deceptively similar to the trade mark. This was due to:
- the stylisation of the Opponent’s mark is de minimus;
- the word AMFIT in the Applicant’s mark may be considered an invented term by some consumers; and
- FIX is the most distinctive element of the Opponent’s mark as FIT and NUTRITION are not particularly memorable for fitness and nutrition type products.
Overall, the Hearing Officer found that the inclusion of the prefix AM and the word FIX are significantly different when each trade mark is considered as a whole.
In all these circumstances, the ground of opposition was not established.
Under this ground, the registration of a trade mark may be opposed on the basis that another trade mark had, before the priority date of the opposed application, acquired a reputation in Australia and as a result of that reputation, the use of the opposed trade mark would be likely to deceive or cause confusion.
Fit Nutrition filed evidence in support of its reputation in the logo mark, including details of awards won, social media posts, customer numbers, sales figures and promotional expenses. In reviewing the evidence, the Hearing Officer found that the sale figures were modest but sufficient to establish the requisite reputation. However, the Hearing Office ultimately held that confusion was not likely as:
- there was no assertion of any instances of actual confusion;
- there was a low similarity between the marks as found under the ground of opposition under section 44; and
- the applicant filed details of other marks on the Register containing similar terms such as FIT and NUTRITION for similar goods.
Therefore, this ground of opposition was also not established.