Thin evidence for fitness brand
Clare Liang offers an insight into proof of use evidence. O/598/19, Fit Bitch Club (Opposition), UK IPO, 7th October 2019
This case concerns an opposition filed by Rachael Woolston (the Opponent) against UK trade mark application No 3246259 for Fit Bitch Club in classes 25 and 41 in the name of FIT B CLUB (the Applicant). The Opponent represented herself and the Applicant was represented by Ms Linda Cerminara (of the same address as the Applicant).
It offers an interesting insight into when proof of use evidence will be considered to be genuine use even where the mark used is not as registered, and the extent of use required to satisfy the proof of use requirements.
The opposition was based on ss5(2)(b) and 5(3) of the Trade Marks Act 1994 and relied upon UK trade mark registration No 2522513, registered for “fitness boot-camp classes” in class 41. The mark had originally also been registered in relation to clothing in class 25 but had been partially cancelled through a revocation action filed by Ms Cerminara. In those proceedings, Ms Cerminara did not seek to revoke the class 41 services but in the present opposition the Applicant did request proof of use of the mark in relation to fitness boot-camp classes.
Proof of use
Much of the Opponent’s evidence fell outside of the relevant period for proof of use or was undated. This included copies of press excerpts and of testimonials on the Opponent’s website. The Hearing Officer (HO) considered the Opponent’s evidence to be thin on both detail and dating.
The evidence that fell within the correct time period comprised an article in Sainsbury’s Magazine, an article in the Daily Express, an invoice showing sales of seven T-shirts, two invoices showing costs for merchandising and printing for 15 vests and 11 hoodies, and a spreadsheet showing bookkeeping for provision of regular fitness classes in three locations in Sussex.
None of the evidence provided showed use of the mark as registered but showed use of “Fitbitch Boot Camp” and “Fitbitch”. Interestingly, the HO found that the Opponent’s use of the plain word form constituted normal and fair use. The figurative elements of the registered mark, and the words “Building better bodies”, were found to be lacking in distinctive character. As a result, their omission – and the omission of stars emanating from the “i” in “bitch” – did not alter the distinctive character of the mark. Finally, the HO confirmed that because there was no colour claim for the earlier mark, the absence of colour did not alter the distinctive character of the mark.
The HO, finding genuine use in relation to fitness boot-camp classes, went on to find a likelihood of direct confusion in relation to the Applicant’s “fitness classes; sports club” as well as indirect confusion with “fitness clothing; activewear”. The Opposition failed in respect of “fan club organisation; fan club services; fan club services (entertainment); fan clubs; fan club purposes”.
With such light evidence, it is no surprise that the Opponent failed to show evidence of reputation in the earlier mark and therefore the s5(3) ground failed.
- The owner of the earlier mark provided no evidence of the mark as registered, but use of a mark that differed only in elements that lacked distinctive character, or which did not alter the distinctive character of the mark, was accepted and considered to be fair and normal use
- Ensure evidence is properly dated and that the date is within the correct time period for proving use
More case comments:
Emmy and Edwina find there are still significant issues facing all existing and future brand owners. Sky v SkyKick, C-371/18, 29th January 2020
David Birchall considers contrasting rights. C-766/18 P, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, Advocate General, 17th October 2019
Adam Kellett finds this decision a useful guide to shape mark obstacles. O/589/19, 3D Marks (Oppositions), UK IPO, 3rd October 2019
Claire Sugden explains that evidence should be of public use in order to support a registration under attack. O/563/19, THE LONSDALE BELT (Revocation), UK IPO, 24th September 2019
Trade Mark Attorney, HGF Limited (Leeds)